Generic Top Level Domain Name (gTLD) Decisions

Complainant is Adrienne Lilly KnightRidder.com/Knight Publishing Company, San Jose, CA, USA ("Complainant") represented by Andrew Klungness, of Manatt, Phelps & Phillips, LLP. Respondent is Baltic Consultants Limited, Road Town, Tortola, BVI. ("Respondent").

The domain name at issue is "wwwthatsracin.com" registered with Tucows.com Inc.

On April 26, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 26, 2001; the Forum received a hard copy of the Complaint on March 29, 2001.

On April 3, 2001, Tucows.com Inc. confirmed by e-mail to the Forum that the domain name "wwwthatsracin.com" is registered with Tucows.com Inc. and that Respondent is the current registrant of the name. Tucows.com Inc. has verified that Respondent is bound by the Tucows.com Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 3, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwthatsracin.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant makes the following contentions, excerpted directly from the Complaint:

"This case involves a blatant attempt by a known ‘typosquatter’ to wrongfully divert Internet traffic from a popular location on the World Wide Web to its own site, in order to generate a profit. Specifically, Respondent has registered and used the "wwwthatsracin.com" domain name (with no dot between ‘www’ and ‘thatsracin.com’) to attract visitors to its website, which features pornography available on a subscription basis. The domain name is virtually identical to Complainants’ "www.thatsracin.com" website and THAT’S RACIN’mark.

"Respondent’s course of conduct is hardly novel. Indeed, Respondent has previously had to forfeit another domain name pursuant to an ICANN Proceeding based on its ‘typosquatting.’ In Bloomberg L.P. v. Baltic Consultants Ltd., FA 95834 (Nat. Arb. Forum Nov. 20, 2000), the domain name ‘bloombergl.com’ was stripped from Respondent based on Respondent’s use of this domain name to direct Internet users to the same pornographic site currently attached to wwwthatsracin.com."

"Based on Respondent’s blatant bad faith use and registration of the "wwwthatsracin.com" domain name, which is virtually identical to Complainants’ trademark, the domain name should be transferred to KnightRidder.com."

B. Respondent

This dispute is based upon the trademark registration THAT’S RACIN’ U.S. Reg. No. 2,327,836. Complainant’s federal registration for the mark THAT’S RACIN’ is used in connection with news and information in the field of automobile racing via a global communication network, such as the Internet (International Class 41) and for a syndicated newspaper column featuring news and information relating to automobile racing (International Class 16).

Complainant publishes a syndicated weekly newspaper section under the trademark THAT’S RACIN’. Complainant also owns and operates a website located at the domain name, "www.thatsracin.com". Much like the THAT’S RACIN’ syndicated newspaper section, the "www.thatsracin.com" website provides news and information regarding motor sports.

The marks THAT’S RACIN’ and "www.thatsracin.com" are inherently distinctive. In addition, Complainants have expended substantial amounts of money and effort in promoting their marks. Both THAT’S RACIN’ and "www.thatsracin.com" have become associated exclusively in the minds of the consuming public with the goods and services offered by Complainants.

Respondent is a company of unknown origin, located at Vanterpool Plaza, Wickhams Cay 1, Road Town, Tortola, in the British Virgin Islands. Respondent appears to own various websites, on which pornography and gambling services are offered.

On or about August 23, 2000, Respondent registered its infringing domain name with Tucows.com, Inc. Respondent, at that time, operated a sports and gambling site accessible through "wwwthatsracin.com."

After being sent a cease and desist letter by Complainant on December 13, 2000, Respondent then directed traffic from "wwwthatsracin.com" to a site featuring pornography. Today, when Internet users mistakenly enter the URL "wwwthatsracin.com" into their browsers, they are immediately shown Respondent’s pornography site, "massivePink.com".

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name "wwwthatsracin.com" is virtually identical in sound, appearance, and meaning to the Complainant’s THAT’S RACIN’ and mark. The only differences between Complainant’s mark and the domain name are the addition of "www" and the ".com." These differences are, for purposes of the Policy are insignificant and irrelevant. "The addition of a ‘www’ in front of a registered marks to form a second level domain name does not alter the fact that the domain name so contracted is confusingly similar to the mark." Pig Improvement Co., Inc. v. Platinum Net, Inc., D2000-1594 (WIPO Jan. 19, 2001).

Therefore, the elements of Policy ¶ 4(a)(i) have been satisfied.

In this case it appears that Respondent has intentionally sought to create confusion with Complainant’s mark and used deception to exacerbate this confusion. Moreover, in response to Complainant’s demands that it cease and desist from its infringing activities, Respondent intentionally aggravated the harm it was causing Complainant by turning "wwwthatsracin.com" into a porno site.

Respondent has no rights or legitimate interests in the domain name. First, Respondent is not named THATS’ RACIN or "wwwthatsracin.com". Policy ¶ 4(c)(ii). Second, Respondent has not established any trademark or service mark rights in the domain name. Third, Respondent has not made any bona fide offering of goods or services under this mark. Policy ¶ 4(c)(i). Fourth, Respondent is it making any legitimate noncommercial use of the domain name.

Respondent has only registered and used the domain name for a single purpose - to divert traffic to its site by creating confusion between Complainant’s mark and its own site, which features pornography. The use of a domain name in such a manner is not legitimate. See, e.g., MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (holding that no rights or legitimate interests in the domain name were established by using domain name to create confusion and drawing Internet users to Respondent’s pornography site).

Therefore, the elements of Policy ¶ 4(a)(ii) have been satisfied.

Respondent is a type of cybersquatter known as a "typosquatter." A typosquatter intentionally uses a typographical variation of a popular URL for the purpose of diverting Internet traffic to the typosquatter’s website. In this case, Respondent registered and uses "wwwthatsracin.com" in bad faith to profit by diverting Internet traffic intended for Complainant’s "www.thatsracin.com" website to its own location. Policy ¶ 4(b)(iv).

This practice of "typosquatting" has been recognized as a bad faith use of a domain name under the UDRP. See, e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding "wwwalavista.com", among other misspellings of altavista.com, to Complainant); Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)(awarding domain names "wwwdowjones.com", "wwwwsj.com", "wwwbarrons.com" and "wwwbarronsmag.com" to Complainants).

Indeed, Respondent has engaged in the practice of typosquatting in the past. See Bloomberg L.P. v. Baltic Consultants Ltd., FA 95834 (Nat. Arb. Forum Nov. 20, 2000). Respondent registered the domain name "bloomburgl.com", and, just as is the case in this dispute, attached it to the "MassivePink.com" porno site. This Panel found that Respondent’s conduct constituted bad faith, and awarded the domain name to the Complainant in that case.

The facts of in that case are virtually identical to the dispute at hand. There, as here, Respondent has registered a domain name that consists of a misspelling of a well-known trademark, and attached it to its for-profit pornographic site.

Therefore, the elements of Policy ¶ 4(a)(iii) have been satisfied.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "wwwthatsracin.com" be transferred from the Respondent to the Complainant.