DECISION

National Association For Stock Car Auto Racing, Inc. v. Western

Claim Number:  FA0403000244923

PARTIES

Complainant is National Association For Stock Car Auto Racing, Inc. (“Complainant”), represented by Julia C. Archer, of Enns & Archer LLP 939 Burke Street, Winston-Salem, NC 27101.  Respondent is Western (“Respondent”), 555 8^th Avenue #1001, New York, NY 10018.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nascardnf.com>, registered with Direct Information Pvt. Ltd, d/b/a Directi.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 11, 2004; the Forum received a hard copy of the Complaint on March 15, 2004.

On March 15, 2004, Direct Information Pvt. Ltd, d/b/a Directi.com confirmed by e-mail to the Forum that the domain name <nascardnf.com> is registered with Direct Information Pvt. Ltd, d/b/a Directi.com and that Respondent is the current registrant of the name. Direct Information Pvt. Ltd, d/b/a Directi.com has verified that Respondent is bound by the Direct Information Pvt. Ltd, d/b/a Directi.com 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 March 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2004 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@nascardnf.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 April 13, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 <nascardnf.com> domain name is confusingly similar to Complainant’s NASCAR mark.

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

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

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

FINDINGS

Complainant is the world’s premier regulating, governing and sanctioning body for stock car automobile racing.  Complainant has used its NASCAR mark in connection with stock car racing since about 1948.  Complainant has over 50 registered trademarks with the U.S. Patent and Trademark Office (USPTO) incorporating the NASCAR mark, partially or wholly (e.g. Reg. Nos. 990,987, 1,850,527, 1,887,528, 2,082,197, 2,291,346, 2,482,634, 2,493,759, 2,422,002, 2,348,513, and 2,556,756, registered on August, 13, 1974, August 23, 1994, April 4, 1995, July 22, 1997, November 9, 1999, August 28, 2001, October 2, 2001, January 16, 2001, May 9, 2000, and April 2, 2002, respectively).

Respondent registered the <nascardnf.com> domain name on July 2, 2003.  The domain name resolves to <scbgallerries>—a pornographic website.

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 rights in the NASCAR mark as a result of its registration with the USPTO and its continuous use of the mark in commerce.  See Men’s Wearhouse, Inc. v. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <nascardnf.com> domain name is confusingly similar to the NASCAR mark.  The only difference is the addition of the letters “dnf” in the domain name, which does not significantly distinguish the domain name from the mark.  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

The Panel finds that Complainant has establish Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel may construe Respondent’s lack of a Response as an admission of all reasonable facts and assertions.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names); see also Am. Online, Inc. v. AOL Int'l., D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the disputed domain name to refer Internet users to a pornographic site.  Using someone else’s mark to lead Internet users to a website featuring pornography is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).   See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to “define the location of Respondent’s website on the Internet” and to host a pornographic website was not a legitimate noncommercial or fair use of the domain name).

There is nothing in the Record, including the WHOIS registration information, which indicates that Respondent is commonly known by the domain name, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using Complainant’s mark to refer Internet traffic to a pornographic website.  This is evidence of bad faith registration and use, pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also 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”).

In addition, because Respondent is redirecting traffic to another website, the Panel infers that it is getting paid for each referral.  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).  Respondent’s use of a confusingly similar mark to create a likelihood of confusion for commercial gain is bad faith registration pursuant to Policy 4(b)(iv).  See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Judge Harold Kalina (Ret.), Panelist

Dated:  April 23, 2004

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