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C & W Motors, Inc. dba Arizona Motorsports, Tucson Motorsports, Inc. v. Carlos Alvarez [2005] GENDND 424 (2 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C & W Motors, Inc. dba Arizona Motorsports, Tucson Motorsports, Inc. v. Carlos Alvarez

Case No. D2005-0270

1. The Parties

The Complainant is C & W Motors, Inc. dba Arizona Motorsports, Tucson Motorsports, Inc., Phoenix, Arizona, United States of America; represented by Jennings, Haug & Cunningham, LLP, United States of America.

The Respondent is Carlos Alvarez, Tucson, Arizona, United States of America.

2. The Domain Names and Registrar

The disputed domain names <arizonamotorsports.com> and <tucsonmotorsports.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2005. On March 16, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On March 17, 2005, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <arizonamotorsports.com> and providing the contact details for the administrative, billing, and technical contact. On March 21, 2005, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <tucsonmotorsports.com> and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on March 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2005. The Response was filed with the Center on April 11, 2005.

The Center appointed Sandra Franklin as the sole panelist in this matter on April 21, 2005. 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. The Center received a Supplemental filing from the Complainant on April 29, 2005, which was forwarded to the Panel on May 2, 2005. The Panel declined to consider the Supplemental filing.

4. Factual Background

Complainant purchased the rights to the trade name ARIZONA MOTORSPORTS on December 8, 1998. Prior to that time, the trade name ARIZONA MOTORSPORTS had been used since June 1, 1984. Complainant has a trademark registration for TUCSON MOTORSPORTS with the State of Arizona dated May 13, 1994. Both marks are used commercially.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

1. Respondent’s <arizonamotorsports.com> and <tucsonmotorsports.com> domain names are confusingly similar to Complainant’s ARIZONA MOTORSPORTS and TUCSON MOTORSPORTS marks.

2. Respondent does not have any rights or legitimate interests in the <arizonamotorsports.com> and <tucsonmotorsports.com> domain names.

3. Respondent registered and used the <arizonamotorsports.com> and <tucsonmotorsports.com> domain names in bad faith.

B. Respondent

The Respondent states that he has a legitimate right to use the domain names <arizonamotorsports.com> and <tucsonmotorsports.com> because he is using them to post criticism of Complainant and he is not using them for commercial gain.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established rights in ARIZONA MOTORSPORTS and TUCSON MOTORSPORTS through trademark registration and commercial use. The Panel finds that the domain names <arizonamotorsports.com> and <tucsonmotorsports.com> are virtually identical to Complainant’s trademarks ARIZONA MOTORSPORTS and TUCSON MOTORSPORTS, but for the addition of “.com”. Many previous cases have held that the addition of “.com” in no way distinguishes a domain name which otherwise wholly incorporates another’s trademark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name “Pomellato” is not relevant; see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) was satisfied.

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel notes that there is a split in opinion as to whether or not posting criticism of a trademark owner is a fair and legitimate use of a domain name which incorporates the trademark. This Panel agrees with the line of cases which denies that a domain name holder can establish legitimate use of a domain name which is virtually identical to a trademark by posting criticism of the trademark holder. It is true that Respondent has every right to criticize Complainant, to post criticism on the Internet, and to refer to the Complainant by name, which necessarily involves using Complainant’s trademarks in discussion. However, it does not follow that Respondent may hi-jack Complainant’s exact trade name and surreptitiously redirect Internet surfers, primarily seeking Complainant for normal commercial purposes, and subject them to commentary they were not looking for. Respondent will not be deprived of his right to speak out against Complainant by being denied the right to use the domain names <arizonamotorsports.com> and <tucsonmotorsports.com>; he can post commentary under another name, which will allow Complainant the use of its own trade names in Internet commerce and will not mislead Internet users.

Respondent argues that it is obvious that the site is not sponsored by Complainant and therefore cannot confuse Internet users. However, this Panel agrees with previous Panels that it is too late at that point; the user has already been “tricked”. See Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, where the Panel found that, though Respondent may have a genuine grievance, he is not entitled to represent that he is the Complainant. See also Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, which states: “The disclaimers come too late. Although disclaimers at the “www.myeronline.com” website are located both at the start and end of the page, they are not effective in displacing assumptions likely to be made by Internet users. Internet users accessing the “www.myeronline.com” website would have every reason to believe that, until they actually arrived there, they were on their way to visiting a website sponsored or authorized by the Complainant.” See also E & J Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.

The Panel finds that Complainant satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Respondent admits that he registered and is using the domain name to criticize Complainant. Respondent also provides links to websites of Complainant’s competitors. See Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 finding bad faith and defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from Complainant’s marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant’s business. Though the Respondent here is not in direct competition with Complainant, he is clearly steering visitors to the website to Complainant’s competition.

Furthermore, while each of the four circumstances listed under Policy paragraph 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”.

There can be no doubt that Respondent intends to cause harm to Complainant’s business, a certain indication of bad faith. The Panel again notes the decision in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, which states: “In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website”. This Panel agrees that such intentional misappropriation of a trademark is a clear demonstration of bad faith”.

The Panel finds that Complainant satisfied Policy paragraph 4(a)(iii).

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 <arizonamotorsports.com> and <tucsonmotorsports.com> be transferred to the Complainant.

Sandra Franklin
Sole Panelist

Dated: May 2, 2005