DECISION

National Association for Stock Car Auto Racing Inc. v. Jason DeFillippo

Claim Number:  FA0306000165152

PARTIES

Complainant is National Association for Stock Car Auto Racing Inc., Daytona Beach, FL (“Complainant”) represented by Julia C. Archer, of Enns & Archer LLP.  Respondent is Jason DeFillippo, Naperville, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <winstoncupracing.com>, registered with Dotster.

PANEL

The undersigned 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 26, 2003; the Forum received a hard copy of the Complaint on June 30, 2003.

On July 2, 2003, Dotster confirmed by e-mail to the Forum that the domain name <winstoncupracing.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 July 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 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@winstoncupracing.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.

On August 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <winstoncupracing.com> domain name is confusingly similar to Complainant’s WINSTON CUP mark.

2. Respondent does not have any rights or legitimate interests in the <winstoncupracing.com> domain name.

3. Respondent registered and used the <winstoncupracing.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, National Association for Stock Car Auto Racing, Inc., is the exclusive licensee of the WINSTON CUP mark. This mark, used in connection with the WINSTON CUP racing series since 1971, is owned by R.J. Reynolds Tobacco Company (U.S. Reg. No. 1,099,001).

Television ratings for Complainant’s WINSTON CUP Series are second only to the National Football League for sporting events, and in 2002 seventeen of the twenty best attended sporting events in the U.S. were WINSTON CUP Series races. In the U.S., seventy-five million people identify themselves as fans of Complainant’s racing series.

Respondent, Jason DeFillippo, registered the <winstoncupracing.com> domain name on January 13, 2002, and is not sublicensed or authorized by Complainant to use the WINSTON CUP mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to adult-oriented websites, currently choosing to direct users to the <milfhunter.com> domain name.

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established rights in the WINSTON CUP mark via the submission of proof that it is licensed to use the mark, which is registered with the U.S. Patent and Trademark Office. Complainant has also established rights in the WINSTON CUP mark through widespread use of the mark in commerce.

Respondent’s <winstoncupracing.com> domain name is confusingly similar to Complainant’s WINSTON CUP mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Christie’s, Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense).

Accordingly, the Panel finds that the <winstoncupracing.com> domain name is confusingly similar to Complainant’s WINSTON CUP mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the <winstoncupracing.com> domain name to redirect Internet users to a pornographic website. Given the obvious relationship between the disputed domain name and Complainant’s WINSTON CUP mark, this use subjects Complainant’s mark to tarnishment and dilution, and cannot be considered a “bona fide” offering of goods or services or a “legitimate noncommercial” or “fair use” of the domain name. Thus, Policy ¶¶ 4(c)(i) and (iii) do not apply to Respondent. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night, Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

Given the fame of Complainant’s WINSTON CUP Series, the fact that Respondent is not licensed to use that mark, and the fact that the only available evidence indicates that Respondent is only known as Jason DeFillippo, the Panel finds that Respondent is not “commonly known by” the disputed domain name pursuant 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 Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <winstoncupracing.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <winstoncupracing.com> domain name in bad faith. By using Complainant’s mark at the time that it registered the disputed domain name in order to attract Internet users to adult-oriented content, presumably for profit, Respondent tarnishes the goodwill surrounding Complainant’s mark. This deliberate tarnishment of Complainant’s mark for commercial gain, creating an initial likelihood of confusion in the minds of Internet users as to the source or sponsorship of the disputed domain name, is evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also National Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

The Panel thus finds that Respondent registered and used the <winstoncupracing.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <winstoncupracing.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 14, 2003

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