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Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd. [2004] GENDND 1235 (3 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd.

Case No. D2004-0459

1. The Parties

Complainant is Autosales Incorporated, dba Summit Racing Equipment of Akron, Ohio, United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, of Akron, Ohio, United States of America.

Respondent is Domain Active Pty. Ltd. of Clayfield, Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <summitracin.com> and <wwwsummitracing.com> are registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2004. On June 25, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On June 28, 2004, Fabulous.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an Amended Complaint on July 7, 2004. The Center verified that the Complaint, together with the Amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2004.

The Center appointed Joan Clark, Q.C. as the sole panelist in this matter on August 20, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is Autosales Incorporated, dba Summit Racing Equipment, an Ohio corporation with a principal place of business in Akron, Ohio.

Respondent is Domain Active Pty. Ltd., with a mailing address in Queensland, Australia.

Complainant is the registered owner of numerous marks registered in respect of goods and services which include SUMMIT or SUMMIT RACING, in stylized form. One of these was registered in 1996, with a declared date of first use in 1968. It also owns the trade name Summit Racing Equipment and the domain name <summitracing.com.>

Respondent is the registrant of the domain names in dispute, <summitracin.com> and <wwwsummitracing.com>, both registered with the registrar Fabulous.com Pty. Ltd. on January 7, 2004 and August 25, 2002, respectively.

5. Parties’ Contentions

A. Complainant

Complainant has produced evidence of registration in the United States Patent and Trademark Office of seven trademarks or service marks, registered in respect of goods or services. The marks are the following

SUMMIT RACING EQUIPMENT registered June 11, 1996;

SUMMIT RACING EQUIPMENT registered January 15, 2002;

SUMMIT registered January 15, 2002;

SUMMIT RACING registered September 10, 2002;

SUMMIT RACING EQUIPMENT SPEED CARD registered December 22, 1992;

SUMMIT SPEEDCARD registered October 29, 2002;

SUMMITRACING.COM registered March 12, 2002.

The earliest of these, SUMMIT RACING EQUIPMENT, registered on June 11, 1996, was based upon use in commerce dating back to 1968. The mark SUMMIT RACING registered on September 10, 2002, was based upon use in commerce dating back to 1999. All of the above marks, with the exception of SUMMITRACING.COM, include the word “summit” in stylized form. The exception is for the word mark SUMMITRACING.COM as a typed drawing.

The above marks were registered variously in respect of goods related to automotive equipment including racing equipment, retail store and mail order services related to the foregoing goods and financial sponsorship of annual hot rod races.

The Complaint is also based on pending trademark applications in the United States and in numerous other countries for marks including the word SUMMIT.

Complainant refers to its use of “Summit Racing Equipment” as a trade name, dating back to January 1969, and has produced a copy of its trade name registration with the Ohio Secretary of State dated 1981, which refers to the use of the trade name since January 1969. Complainant avers that this registration is in effect and has been continuously renewed with the Ohio Secretary of State. Complainant declares that it is known as Summit Racing and also as Summit to its customers.

In addition, Complainant states that, under its trade name Summit Racing Equipment, it has used the following URL for its web address since December 27, 1995:

“http://www.summitracing.com”

Complainant submits that Respondent’s domain names <summitracin.com> and <wwwsummitracing.com> are respectively phonetically identical and confusingly similar to Complainant’s trademarks and domain name <summitracing.com>. Complainant points out the small differences in punctuation and spelling between its trademarks and trade name and the domain names in dispute, and cites numerous decisions holding that such differences, including the additional prefix “www” to a trademark, are not sufficient to avoid a charge of confusing similarity.

Complainant also states it is unaware of any evidence to establish that Respondent is commonly known by either of the domain names in dispute.

Complainant submits that Respondent has a propensity for registering many different domain names, each with a slight variation in spelling from a well-known trademark, and further submits that fair use does not apply where the domain names are misspellings of a complainant’s mark, or where a respondent has merely inserted the prefix “www.”

In addition, Complainant argues that the domain names in dispute have been registered and are being used in bad faith, the minor degree of variation from Complainant’s marks suggesting that Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business.

Complainant argues that, when a user mistypes Complainant’s legitimate domain name by omitting the “g” in “racing,” the user is redirected to a generic web site with links to various gambling and commercial web sites, and that once there, the user is further confused by the inclusion of the name “Summit Racing” in the upper left-hand corner of the web site, implying that Complainant endorses or approves of the content offered on Respondent’s web site.

With respect to the disputed domain name <wwwsummitracing.com>, Complainant points out that Respondent has merely inserted the prefix “www” in front of Complainant’s federally registered trademark and its domain name and omitted the period which would normally separate a domain name from the “www” field. Again, Complainant argues that this indicates an intentional effort to gain Internet traffic from the typing errors of users seeking Complainant’s web site.

Complainant submits that Respondent is intentionally frustrating Internet users in their attempts to find Complainant’s web site, and that Complainant’s potential loss of customers due to Internet users’ impatience disrupts Complainant’s business and constitutes bad faith. Furthermore, Complainant argues that the Internet user will be led to believe there is an affiliation between Respondent and Complainant, which there is not.

Complainant cites numerous decisions supporting its position and refers the Panel to cases in which Respondent has been found to have acted in bad faith in registering domain names that are minor misspellings of famous marks.

Complainant has requested that the Internet domain names in dispute be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

Complainant has established that it has rights in numerous trademarks and service marks including the words SUMMIT, SUMMIT RACING and SUMMIT RACING EQUIPMENT. It also has rights in the trade name Summit Racing Equipment. Several of these marks, as well as the trade name, were registered prior to the registrations of the domain names in dispute, and their use predates by many years the registration dates for the disputed domain names. Complainant also has rights in its domain name <summitracing.com>, which the Panel accepts as another trade name. In light of the evidence, the Panel considers these trade names function as service marks.

For the following reasons, the Panel finds that there is a confusing similarity between the domain names in dispute and each of Complainant’s marks which combines SUMMIT with RACING or RACING EQUIPMENT, as in SUMMIT RACING, SUMMIT RACING EQUIPMENT and SUMMIT RACING EQUIPMENT SPEED CARD. The combination of SUMMIT and RACING has been so prevalent in Complainant’s registered marks and trade names that there is clearly a probability of confusion between them and the domain names in dispute which have a combination of these words.

The disputed domain name <summitracin.com> is made up of the same combination of the words SUMMIT and RACING with the exception of the absence of the last letter “g” in RACING, the addition of the suffix “.com” and the fact that the two words are run together in the domain name. The absence of a space between letters in the domain name does not affect the issue of confusing similarity to a trademark or trade name as the public is accustomed to seeing domain names which do not have spaces between letters which are not filled by punctuation or other marks. It has been consistently held that suffixes indicating top level domains should not be taken into consideration in determining the issue of identity or confusing similarity. The removal of the last letter “g” is so minor as to indicate a deliberate attempt to avoid using a mark virtually identical to many of Complainant’s marks, and at the same time to be close enough to Complainant’s marks to cause Internet users seeking to reach Complainant’s web site to arrive instead at Respondent’s web site as the result of an error by dropping the “g” when typing RACING.

More striking still is the similarity of Respondent’s domain name <summitracin.com> to Complainant’s mark SUMMITRACING.COM and domain name <summitracing.com>, the single difference being the dropping of the letter “g,” which could inadvertently occur when a viewer attempts to type Complainant’s domain name.

As to Respondent’s other disputed domain name, <wwwsummitracing.com>, the prefix “www” is an acronym designating the world wide web and is a common prefix, when followed by a period, to a domain name in the URL. This prefix in the disputed domain name does nothing to avoid a probability of confusion with Complainant’s registered mark SUMMITRACING.COM and domain name <summitracing.com> which are identical to the remainder of the disputed domain name. The omission of the period after “www” and before “summitracing.com” was an obvious attempt to avoid 100% identity with Complainant’s mark SUMMITRACING.COM and domain name <summitracing.com> by making “www” a part of the domain name proper rather than an indication of the world wide web. It was also an attempt to attract to Respondent’s web site viewers seeking to access Complainant’s web site who type the field “www” and inadvertently omit the following period before typing Complainant’s domain name. (See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; and Deutsche Telekom AG v. Luis Javier Collazos, WIPO Case No. D2003-0371).

The disputed domain name <summitracin.com> is as close as could be devised without being identical to Complainant’s mark SUMMITRACING.COM and domain name <summitracing.com>, there being only the deletion of the letter “g.” The other disputed domain name <wwwsummitracing.com> includes Complainant’s full registered mark SUMMITRACING.COM and domain name <summitracing.com>, with the addition of the prefix “www.”

Many decisions have been cited by Complainant finding that such minor variations of a mark are insufficient to avoid a finding of a probability of confusion. In the present instance, the Panel deems it unnecessary to refer to such decisions other than those cited above as in this case the obvious intent, as well as the probable result, of confusion are clearly evident.

The Panel finds that the domain names in dispute are confusingly similar to trademarks and service marks, such as the marks SUMMIT RACING and SUMMITRACING.COM, in which Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that Respondent is commonly known by either of the domain names in dispute.

At the time Respondent registered the domain name <summitracin.com> in 2004, as well as two years earlier in 2002, when Respondent registered the domain name <wwwsummitracing.com>, Respondent must have been aware of at least some of the listed trademarks and service marks used by Complainant, many of which were registered and used before registration of either of the disputed domain names. According to Complainant, the mark SUMMITRACING.COM was first used in March 2001, the application for registration was published for opposition on April 20, 2001, and the mark was registered on March 12, 2002. The very fact that Respondent selected two domain names, each having a slight difference from Complainant’s mark SUMMITRACING.COM and its previously registered domain name <summitracing.com>, is an indication that it was well aware of Complainant’s marks and domain name.

This is consistent with Respondent’s behaviour in a number of other instances where it chose to register domain names with slight variations in spelling from known marks.

There is no evidence that Respondent had any license or permission from Complainant to register the disputed domain names.

Respondent does not appear to have used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. According to the page of the web site under the domain name <summitracin.com>, the viewer is referred to other web sites including those for gambling, and links to other sites for sports. When the viewer accesses the web site for the disputed domain name <wwwsummitracing.com>, again the viewer is requested to click as indicated to find related web sites. The referring of a viewer to other domain names and web pages does not constitute a bona fide offering of goods or services by the domain name holder, according to paragraph 4(a)(ii) of the Policy. (See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; also LIBRO AG v. NA Global Link Limited, WIPO Case No. D2000-0186; and also American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A, WIPO Case No. D2004-0473).

This may be contrasted with what the viewer sees when accessing Complainant’s web site. Complainant’s web page contains advertisements of specific items which the viewer may obtain by shopping online. On the other hand, Respondent’s web sites under the disputed domain names refer viewers to still other sites, but even if the latter offer goods or services, that does not constitute a use of the disputed domain names by Respondent for the bona fide offering of goods or services.

Respondent is not making a legitimate or fair use of the disputed domain names, in which the Panel finds that Respondent has no rights or legitimate interests.

The criterion of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Complainant’s marks SUMMIT RACING, SUMMIT RACING EQUIPMENT and SUMMITRACING.COM, as well as its domain name <summitracing.com>, were registered and used prior to the registrations of the domain names in dispute. From Respondent’s creation and registration of the disputed domain names, each containing the uncommon combination of words in Complainant’s marks and each differing in a slightly different way from Complainant’s mark SUMMITRACING.COM and domain name <summitracing.com>, one may infer Respondent’s prior knowledge of Complainant’s marks and domain name. This creates a presumption that the domain names were registered in bad faith, which presumption Respondent has chosen not to refute, not having filed a Response.

The Panel finds that, by registering and using the disputed domain names which are confusingly similar to Complainant’s marks, Respondent has intentionally attempted to attract to its web sites Internet viewers who intended to access Complainant’s web site. That this was done for commercial gain may be presumed, in view of the referral of the viewers to other web sites which presumably would benefit from being accessed by such viewers with a resultant financial reward to Respondent.

Respondent has engaged in a pattern, referred to as typo-squatting, of registering domain names that are minor misspellings of known marks. A few examples of such domain names registered by Respondent, which were found to be confusing with a complainant’s mark and ordered to be transferred, are:

1. <fifth-third-bank.com> found to be confusing with FIFTH THIRD BANK trademark owned by Fifth Third Bancorp., (WIPO Case No. D2003-0884).

2. <dupont-registry.com> found to be confusing with DUPONT REGISTRY trademark owned by duPont Publishing, Inc., (NAF Case No. 0212000137213).

3. <wwwmedline.com> found to be confusing with MEDLINE trademark owned by Medline, Inc., (NAF Case No. 0301000139718).

The Panel finds that the domain names in dispute were registered and have been used in bad faith. The criteria of paragraph 4(a)(iii) have been satisfied.'

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <summitracin.com> and <wwwsummitracing.com> be transferred to Complainant.

Joan Clark
Sole Panelist

Dated: September 3, 2004