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Generic Top Level Domain Name (gTLD) Decisions |
Brickyard Trademarks, Inc. and
Indianapolis Motor Speedway, LLC v. robdaddy.com a/k/a Robert Thomas
Claim Number: FA0304000155132
PARTIES
Complainant
is Brickyard Trademarks, Inc., Henderson, NV and Indianapolis Motor
Speedway, LLC, Indianapolis, IN (“Complainant”) represented by Rachel L.
St. Peter of Ice Miller.
Respondent is Robert Thomas a/k/a
robdaddy.com, Evansville, IN (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <indianapolismotorspeedway.com> registered
with Go Daddy Software, 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 April 18, 2003; the Forum received
a hard copy of the
Complaint on April 21, 2003.
On
May 1, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <indianapolismotorspeedway.com> is registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
name. Go Daddy Software, Inc.
has verified that Respondent is bound by the Go
Daddy Software, 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
May 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 22,
2003 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@indianapolismotorspeedway.com by e-mail.
A
timely Response was received and determined to be complete on May 22, 2003.
On June 2, 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
BRICKYARD TRADEMARKS, INC. (BTI) is an affiliate of the INDIANAPOLIS MOTOR SPEEDWAY, LLC (IMS), and
is the owner and licensing body for the nationally and internationally renowned
INDIANAPOLIS
MOTOR SPEEDWAY (IMS) marks, which are registered with the U.S
Patent & Trademark Office. Those
marks are among the most recognized, valued and famous marks in the entire
automobile racing industry. The IMS
marks have been used by Complainant and its' predecessors since 1909. Complainant is a licensee of the marks and
actively uses the marks in the United States and throughout the world. In addition, Complainant sublicenses the
marks to third parties.
The
Indianapolis Motor Speedway track was built in 1909 and is listed on the
National Register of Historic Places.
Since 1911, Complainants and its predecessors have held an annual 500
mile automobile race. This race is
known as the INDIANAPOLIS 500 Mile Race and has become recognized as the INDY
500 Race to race fans throughout the world.
The
Indianapolis Motor Speedway holds other well known races such as the BRICKYARD
400 Mile Race and the U.S. Grand Prix Race and
is commonly referred to as the
"World's Greatest Race Track."
In addition to the trademark registrations, Complainants own substantial
common law rights to this famous mark.
They are synonymous with the highest quality automobile racing
experience. IMS marks are famous to
those who do not follow automobile racing and were famous long before
Respondent registered the subject domain
name.
The
subject domain name <indianapolismotorspeedway.com> is identical
to the famous Indianapolis Motor Speedway Race Track mark except for the
addition of the domain name designation, ".com".
The
Respondent should be considered as having no rights or legitimate interests in
respect of the subject domain name for the following
reasons:
First,
before any notice to the Respondent of the dispute regarding the domain name
and continuing to date, the Respondent has not
used or made any demonstrable
preparations to use the domain name in connection with a bona fide offering of
goods or services. The name was
registered on December 1, 2001. As of
July 2, 2002, Respondent was offering the subject name for sale to any
party. On that date, Complainants sent
a cease and desist letter to Respondent via electronic mail and certified
mail. Respondent received the
electronic mail but refused delivery of the certified mail and has never
responded in writing to Complainants'
cease and desist letter. Attempts to contact Respondent by telephone
were to no avail. It appears that the
telephone number listed by Respondent is incorrect. Sometime after the cease and desist letters, Respondent ceased
offering the domain name for sale and has modified the home page for
this
domain name to state "Coming Soon."
Second,
the Respondent is not commonly known by the subject domain name and, to
Complainants' knowledge and belief, has no intellectual
property rights in the
name. Respondent is not using the IMS
marks with the permission of Complainants and is in no way affiliated with
Complainants.
Third,
Respondent registered a domain name that would misleadingly divert customers to
its website in order to sell the domain name
to a third party for commercial
gain. Since Respondent resides in
Indiana, it seems inconceivable that Respondent did not have actual knowledge
of Complainants' rights
in the mark.
The
subject domain name was registered and is being used in bad faith. Respondent registered the name in order to
capitalize financially on the fame and goodwill associated with the IMS marks
and has used
the domain in bad faith by offering to sell the domain name for a
profit. In addition, Respondent
intentionally registered a domain that creates a likelihood of confusion as to
the source, sponsorship, affiliation
and endorsement of the domain name in
order to transfer the domain name to a third party for a profit. Respondent's registrations of the IMS domain
name causes Internet users to believe that the domain name is owned or somehow
affiliated
or endorsed by Complainants.
B. Respondent
He
purchased the domain name <indianapolismotorspeedway.com> as a
valuable and treasured keepsake of the Indianapolis 500. He ran across the name by chance. If the Indianapolis 500 wanted to own the
name, they would have purchased it and set up a website years ago. He owns at least 50 other domain names. Some were purchased for resale after he
intended to set up websites. He is
trying to learn how to set up websites on his own but has not gotten any set up
at this time. The for sale sign was put
on the subject domain name website when it was purchased. He planned to set up websites and offer them
for sale on eBay or run them himself.
He still has not figured out how to download or what to do to get the
sites up and running.
He
received several emails concerning the subject domain name site. Some wanted to buy the site and others were
requesting information about the Indianapolis 500 Race or how to purchase tickets
for
the Brickyard 400. He responded to
the ones wanting information by telling them what he knew or suggested to them
how they might be able to find out
what they wanted to know.
FINDINGS
1 - The domain name is identical to a
trademark in which the Complainants have rights.
2 - The Respondent has no rights or
legitimate interests in respect of the domain name.
3 - The domain name was registered and is
being used 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)
(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;
(1)
(2)
the Respondent has no rights
or legitimate interests in respect of the domain name; and
(2)
(3)
the domain name has been
registered and is being used in bad faith.
The
subject domain name is identical to Complainants' registered trademark. Complainant provides evidence of several
trademark registrations with the United States Patent and Trademark Office
(USPTO) for the
INDIANAPOLIS MOTOR SPEEDWAY mark (Reg. No. 815,638 registered
on September 20, 1966) related to an annual automobile race. Complainant has established its rights in
the mark through registration with the USPTO. See The Men’s Wearhouse, Inc.
v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Complainant argues that Respondent’s <indianapolismotorspeedway.com>
domain name is identical to
Complainant’s mark because the disputed domain name incorporates Complainant’s
entire mark and simply
omits the spaces between the words and adds the generic
top-level domain (gTLD) “.com” to the end of the mark. The undersigned finds
that neither the omission of the spaces between the words nor the addition of a
gTLD sufficiently differentiate the disputed domain
name from the mark with
regard to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
Respondent
has no rights to or legitimate interests in the <indianapolismotorspeedway.com>
domain name because Respondent had
not used the domain name except to offer it for sale. This use is neither a
bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb.
Forum July 31, 2000) (finding no rights or legitimate interests where
Respondent registered the domain name
with the intention of selling its
rights); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug.
11, 2000) (finding Respondent’s conduct purporting to sell the domain name
suggests it has no legitimate use).
Respondent
is not commonly known by either INDIANAPOLIS MOTOR SPEEDWAY or <indianapolismotorspeedway.com>. The
Respondent has no rights to or legitimate interests in the disputed
domain name with regard to Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark).
Complainant
has produced evidence that the website <indianapolismotorspeedway.com>
domain name resolved to indicate
the domain name was for sale. The undersigned concludes that Respondent
registered the disputed domain
name primarily for the purpose of selling the
domain name registration to Complainant for valuable consideration in excess of
Respondent’s
out-of-pocket costs directly related to the domain name, which is
evidence of bad faith registration and use pursuant to Policy ¶
4(b)(i). See
Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the Respondent offered the domain names for sale); see
also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded,
are evidence of bad faith”).
Moreover, due to the international fame of Complainant’s
mark and the proximity to the Indianapolis 500 of Respondent’s address in
Indiana, Respondent had actual or constructive knowledge of Complainant’s
rights in its mark. Indeed, Respondent
indicates in his response that he knew of the Indianapolis Motor Speedway, the
Indianapolis 500 race and its fame. The
undersigned finds that Respondent registered and used the <indianapolismotorspeedway.com>
domain name despite having notice of Complainant’s
rights, which evidences registration and use in bad faith with regard to Policy
¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly
known mark at the time of
registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9,
2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain
name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it).
DECISION
Having
established all three elements required under ICANN Policy, the undersigned
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indianapolismotorspeedway.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B.
Banks, Jr., Panelist
Dated: June 11, 2003
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