DECISION

Wayne Harris v. Velocity Technologies

Claim Number: FA0202000104560

PARTIES

Complainant is Wayne Harris, Post Falls, ID (“Complainant”).  Respondent is Velocity Technologies, St. Joseph, MO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME  

The domain names at issue are <dbdrag.com>, <dbdrags.com>, and <dbdragfinals.com>, registered with Network Solutions, Inc.

PANEL

The undersigned Daniel B. Banks, Jr. certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 7, 2002; the Forum received a hard copy of the Complaint on February 7, 2002.

On February 8, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <dbdrag.com>, <dbdrags.com>, and <dbdragfinals.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 28, 2002 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@dbdrag.com, postmaster@dbdrags.com, and postmaster@dbdragfinals.com by e-mail.

A timely Response was received and determined to be complete on February 28, 2002.

On March 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant:

Complainant is the registered trademark holder of dB Drag Racing which is a sport where competitors compete against one another to see who has the loudest car stereo system.  The dB Drag Racing Association (Complainant's company) sanctions more than 1,000 events per year.  The dB Drag Racing website (<dbdragracing.com>) lists upcoming events, event results, rules, competitor stats, competitor standings and other additional information related to the sport of dB Drag Racing. 

      Each year, thousands of auto sound enthusiasts from all over the world compete in an effort to qualify for the dB Drag Racing World Finals.  This is the culmination of the competition season and is promoted by the dB Drag Racing Association.  The Association sells memberships to auto sound competitors, retailers and manufacturers.  The Association also sells booth space at the World Finals and test equipment to judge dBDrag Racing events.  Auto sound competitors, retailers, manufacturers and consumer publications frequently refer to dB Drag Racing as "dB Drag" or "dB Drags". 

      When Complainant first discovered the Respondent's website, he was using Complainant's logos and other proprietary graphics on his site in direct violation of copyright law.  Complainant's attorney sent a cease and desist letter to the Respondent at that time. 

      The Respondent does not have any rights or legitimate interest in the disputed domain names because he does not have a vested interest in dB Drag Racing, he does not offer any goods or services related to dB Drag Racing, does not own the dB Drag Racing trademark and is not a material employee of the dB Drag Racing Association.

      Respondent offered to sell the disputed domain names on several occasions (see Exhibits A & B) for amounts far in excess of the Respondent's documented out-of-pocket costs.  Respondent has registered the domain names in order to prevent Complainant from reflecting the mark in a corresponding domain name and has demonstrated a pattern of such conduct by registering the domain names of several of Complainant's business rivals.  The Respondent is attempting to disrupt Complainant's business and hurt our organization as reflected on Exhibit B.  The Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the dB Drag Racing mark.  Respondent admits that he is getting traffic from their use.

     

B. Respondent:

The Complainant's trademark is not on Db Drag but on Db Drag Racing.  Db Drag is a generic term used by many people to describe the sport of SPL competition.  It is not used solely by Db Drag Racing.  In 1999, Complainant made Respondent an "Official Turn Key Event Promoter".  Respondent purchased a Termlab computer measurement system from Complainant, valued at $3,200.  Complainant and Respondent also entered into an agreement that Respondent would take requests from store owners who did not wish to do their own Db Drag Racing shows or purchase the equipment needed.  Respondent would do the entire program for them.  In that connection, Respondent was given specific rights to use the Db Drag Racing logos, name and image. 

During the term of the agreement, Respondent's name and logo were displayed on the Db Drag Racing website advertising Respondent as an official turnkey event promoter.  Respondent was allowed to use all logos and the name for advertising purposes.  Respondent purchased a "Retail Membership" from Complainant so it could have its shows under its name without the need of a retailer.  Ron Trout, a co-owner of the name Db Drag Racing gave Respondent verbal permission to use the name.

Our domain website is <CarAudioPlanet.com>.  The disputed domains all forward to this website.  The site looks nothing like <DbDragRacing.com> and therefore eliminates most confusion.  We did not register the domains in bad faith.  They were registered to promote Db Drag Racing and Respondent company as a whole. 

Complainant contacted Respondent about purchasing the domains and, as stated in our emails, they were not for sale.  After a phone conversation, we were asked to just send a price and we would start from there.  I did not want to give up the domain names so I stated a ridiculous price

ADDITIONAL SUBMISSIONS:

            The Complainant and Respondent submitted additional submissions after the deadline for submissions.  They were not considered by the Panel.

FINDINGS

1 - The disputed domain names are confusingly similar to Complainant's registered mark.

2 - The Respondent has no right or legitimate interest in the disputed domain names.

3 - The disputed domain names were registered in bad faith. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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.

Identical and/or Confusingly Similar

            The Respondent’s domain names <dbdrag.com>, <dbdrags.com>, and <dbdragfinals.com> are confusingly similar to Complainant’s dB DRAG RACING mark.  See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

When Complainant first discovered Respondent’s website, Respondent was actually using Complainant’s logos and other proprietary graphics on his site.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Additionally, the domain name <dbdragfinals.com> merely exchanges the word “racing” with “finals” – a term that is used in competive activities.  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Rights or Legitimate Interests

            Respondent does not offer any goods or services related to dB Drag Racing.  Respondent links the domain names to a competing car audio website, and such use is not a bona fide offering of goods under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also North Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

                  Respondent does not have rights or legitimate interests in the domain names because Respondent does not own the dB Drag Racing trademark or a vested interest in dB Drag Racing.  Respondent is also not a material employee of Complainant. Therefore, Respondent is not commonly known by the domain names, which are confusingly similar to Complainant’s mark.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Registration and Use in Bad Faith

            Respondent has offered to sell it the domain names on several occasions for amounts far in excess of the Respondent’s documented out-of-pocket costs.  This is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Respondent is attempting to disrupt Complainant's business.  This is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

Finally, Respondent is using the domain names listed above to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the dB Drag Racing mark. In addition, Respondent has admitted that he does not want to sell the domain names because he is “getting traffic” from their use.  This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain).

DECISION:   

            The disputed domain names, <dbdrag.com>, <dbdrags.com> and <dbdragfinals.com> are transferred to the Complainant. 

Daniel B. Banks, Jr., Panelist
Dated: March 18, 2002

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