Dale Earnhardt, Inc. v. Noramar Enterprises
Claim Number: FA0207000117040
Complainant is Dale Earnhardt, Inc., Mooresville, NC (“Complainant”) represented by Henry B. Ward, of Alston & Bird, LLP. Respondent is Noramar Enterprises, Binghamton, NY (“Respondent”) represented by Robert C. Kilmer.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daleearnhardtincorporated.com>, registered with Verisign, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 26, 2002; the Forum received a hard copy of the Complaint on July 29, 2002.
On July 30, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain name <daleearnhardtincorporated.com> is registered with Verisign, Inc. and that the Respondent is the current registrant of the name. Verisign, Inc. has verified that Respondent is bound by the Verisign, 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 July 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on September 6, 2002.
Complainant’s Additional Submission was timely filed on September 11, 2002.
On September 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Dale Earnhardt (now deceased) was a famous NASCAR Winston Cup stock car driver. Complainant, Dale Earnhardt, Inc. (hereinafter “DEI”) is the exclusive agent of Earnhardt’s estate relating to the use of the marks associated with Earnhardt, including the mark, DALE EARNHARDT.
For many years, Complainant, either directly or through sub-licensees, has exclusively used the mark in conjunction with a wide variety of goods and services.
Respondent, Noramar Enterprises, acting in bad faith, has registered and is using the domain name daleearnhardtincorporated.com for commercial purposes to direct Internet users to its website.
Respondent’s domain name that is the subject of this proceeding is confusingly similar to Complainant’s DALE EARNHARDT mark, and Respondent has no preexisting rights or legitimate interests in respect of said domain name.
Complainant, DEI, is a corporation duly organized under the laws of the State of North Carolina. At least as early as January 1995, Earnhardt and DEI entered into an exclusive license arrangement relating to trademarks, service marks and other indicia relating to Earnhardt. This arrangement includes provisions that allow DEI to sub-license third parties to offer goods and services under these marks and provisions that require DEI to protect and enforce these marks.
Complainant, either directly or through sub-licensees, has offered goods and services bearing the DALE EARNHARDT mark since at least as early as 1975.
The DALE EARNHARDT mark is the subject of two federal trademark and service mark registrations, U.S. Trademark and Service Mark Registration No. 1,644,237 for the DALE EARNHARDT mark and U.S. Trademark and Service Mark Registration No. 2,035,107 for the DALE EARNHARDT (stylized mark). U.S. Trademark and Service Mark Registration No. 1,644,237 has been accorded incontestable status by the U.S. Patent and Trademark Office. In addition, the DALE EARNHARDT mark also is the subject of state trademark and/or service mark registrations in Alabama, California, Florida, Georgia, Indiana, Michigan, North Carolina, South Carolina, Tennessee, Texas and Virginia.
By reason of the adoption and longstanding continuous use of the DALE EARNHARDT mark, this designation has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying Dale Earnhardt and Complainant’s goods and services.
Respondent has identified itself to the registrar as “Noramar Enterprises” and has provided a mailing address in Binghamton, New York. Respondent registered the domain name to market and promote Noramar Enterprises.
By letter dated September 10, 2001, Complainant’s counsel contacted Respondent and requested transfer of the domain name. Respondent’s counsel responded by letter dated November 19, 2001, stating that Respondent’s counsel would contact Complainant’s counsel to discuss the issue. Not receiving a response, Complainant’s counsel contacted Respondent’s counsel by telephone. Respondent’s counsel indicated that Respondent would not voluntarily transfer the domain name to DEI.
Upon being contacted by Complainant’s counsel, Respondent modified its website to indicate, among other things, that <daleearnhardtincorporated.com> is a not-for-profit web site, that <daleearnhardtincorporated.com> isn’t affiliated with the estate of Dale Earnhardt, Dale Earnhardt Incorporated, GM, RCR or Nascar, and that “[t]his site is currently under development as a future home to a Dale Earnhardt Fanclub.”
Respondent is also owner of other domain names that bear upon this proceeding, including <broomecountyfamilycourt.com>, <senatorthomaswlibous.com>, <thomaswlibous.com>, the <worldtradecenter911.com>, <the-worldtradecenter.com>, and <theworldtradecentermovie.com>. One of the domain names is used to promote the “Law Offices of Mark Kachadourian.” Norimar Enterprises is owned by one “Mark Kach.” The domain name at issue is strikingly similar to Complainant’s DALE EARNHARDT mark.
Respondent is not affiliated with Dale Earnhardt or DEI. Respondent did not register or begin using the subject domain name until June 5, 2000—long after Complainant’s DALE EARNHARDT mark had acquired its fame. Respondent has no preexisting rights in “daleearnhardtincorporated” or “dale earnhardt,” as a trademark, service mark or trade name.
Respondent did not declare its interest in establishing a “Dale Earnhardt Fanclub” until after being contacted by Complainant’s counsel, at which time Respondent modified its website in an effort to seek shelter under Policy ¶ 4(c)(iii) for non-commercial or fair use.
Respondent’s bad faith in registering the domain name is evident from the circumstances surrounding the formation and ownership of Respondent, as well as Respondent’s registration and passive holding of other domain names having potential commercial value. It appears that Mark Kachadourian formed Respondent, Noramar Enterprises, using the alias “Mark Kach’ in order to create a “front” or straw party to register potentially commercially valuable domain names.
Complainant has alleged that it is a licensee corporation authorized to market products associated with Dale Earnhardt. Absent from the Complaint is any documentation confirming this license agreement. Furthermore, there is no indication in the Complaint that the estate of Dale Earnhardt has licensed Complainant to act on its behalf.
Complainant has only selectively enforced whatever rights it claims to have. There are at least 29 domain names containing variations of the words “Dale” and “Earnhardt” currently for sale at Verisign Inc. This list was generated August 6, 2002. Complainant enjoys no entitlement to every version of the Dale Earnhardt name. It should be noted that Dale Earnhardt, Inc. through its legal paperwork refers to itself as Dale Earnhardt Inc, or DEI, not Dale Earnhardt Incorporated.
Complainant is successfully marketing goods and services related to Dale Earnhardt via use of the web site <daleearnhardtinc.com>.
Respondent registered the domain name on June 5, 2000, prior to Dale Earnhardt’s untimely death on February 18, 2001. It can hardly be argued that the domain was purchased in anticipation of the increased fame and notoriety resulting form the accidental crash. Noramar Entereprises’s ownership of the domain name was not challenged during the life of Dale Earnhardt.
Mark Kachadorian, President of Norimar Enterprises, LLC has been a lifelong fan of Dale Earnhardt. During the last 20 years, Respondent has acquired thousands of dollars worth of Earnhardt memorabilia.
Complainant states in its papers that Respondent’s intent to develop the disputed domain name as a fan club occurred after being contacted by Complainant’s counsel. This is true. Subsequent to receiving what can only be described as a threat from Complainant’s counsel, Respondent felt it necessary to state this on the web site. Prior to being contacted by Complainant’s counsel, Respondent communicated nothing to the public on the web site other than the name of his limited liability company. Respondent offered no goods or services for sale related to either Noramar Enterprises or Dale Earnhardt. The fact that he has never offered anything for sale to anyone on this site further underscores the fact that his acquisition of the domain name was, and is, for non-commercial purposes. As such, Respondent has a legitimate interest in the domain name.
Respondent denies that Mark Kachadourian has used any alias or created any “straw party.”
Respondent did not register the domain name to prevent Complainant from reflecting the mark in a corresponding domain name. In fact, Complainant already owns the domain name <daleearnhardtinc.com>.
Respondent is not a competitor of Complainant.
In his letter dated September 10, 2001, Complainant’s counsel acknowledged that Respondent, at least as of that date had not benefited commercially from the web site when the letter stated “should Noramar Enterprises begin commercially utilizing the Dale Earnhardt Inc. domain name such use may constitute a violation…” It is ludicrous to assert that Respondent’s passive ownership of domain names is motivated by a desire to ultimately transfer these domain names or utilize them for commercial gain, since Respondent has never done so.
Mark Kachadorian is a respected attorney in the Binghamton area.
C. Additional Submissions
Complainant’s Additional Response.
The existence of third-party domain names that may infringe upon Complainant’s mark does not legitimize Respondent’s bad faith registration and use of the domain name.
Respondent fails to provide any explanation regarding the nature of the business engaged in by Noramar Enterprises or to otherwise establish that this entity is something other than a depository for domain names having potential commercial value.
Respondent’s assertion that it intends to develop a “Dale Earnhardt Fan Club” at the domain name is suspect. Respondent did not register <daleearnhardtfanclub.com> or a variation thereof. Instead, Respondent registered a domain name, which is identical to Complainant’s mark. Respondent’s alleged intentions concerning the “fan club” or Respondent’s collection of Dale Earnhardt memorabilia are not supported in the Declaration of Mark Kachadourian attached to the Response as an Exhibit.
Complainant files an attachment including correspondence between Complainant and an employee of Dun and Bradstreet explaining that names of principal businesses are not shortened unless the names exceed 30 characters.
1. Complainant is Dale Earnhardt, Inc., a North Carolina corporation located in Mooresvillle, North Carolina.
2. Dale Earnhardt was a famous racecar driver on the NASCAR Winston Cup Series circuit who, from 1979 until his untimely death on February 18, 2001, won 70 times in 650 starts and accumulated in excess of thirty-six million dollars in total winnings.
3. At least as early as January 1995, Dale Earnhardt and Complainant entered into an exclusive license arrangement relating to trademarks, service marks and other indicia relating to Mr. Earnhardt, including, the mark DALE EARNHARDT. This arrangement included provisions that allow Complainant to sublicense others to offer goods and services under these marks, and that require Complainant to protect and enforce these marks.
4. The mark, DALE EARNHARDT, was registered on May 14, 1991, with the United States Patent and Trademark Office by Ralph Dale Earnhardt (United States Citizen) and was thereafter renewed. The registration was for key chains, pocketknives, clothing, paper goods, toys, and for entertainment services.
5. The Panel infers that whatever license arrangement that existed between Dale Earnhardt and Complainant while Dale Earnheadt was in life, was, after his death, continued by the party or parties who succeeded to ownership of such rights.
6. Respondent is Noramar Enterprises of Binghamton, New York. Respondent filed its answer under the name, Noramar Enterprises, LLC that suggests that the enterprise is a limited liability company. The place of corporate registration and the nature of the business conducted by Noramar Enterprises LLC are not provided.
7. Respondent registered the domain name, <daleearnhardtincorporated.com>, on June 5, 2000.
8. The only evidence presented to illustrate the use to which the domain name was put from June 5, 2000, until January 18, 2002, is a web page dated September 7, 2001, which shows an automobile superimposed upon a small map grid and with the words “Noramar Enterprises, LLC, 209 Court Street Binghamton New York 13901 USA 607-760-1859 http//www.daleearhardtincorporated.com.”
9. After notice of the dispute, Respondent changed the content of the web page to state that the site owned by Noramar Enterprises LLC, was not affiliated with Complainant, was a not-for-profit web site and that “This site is currently under development as a future home to a Dale Earnhardt Fanclub.”
10. Complainant operates a domain name at <daleearnhardtinc.com>, that was registered on December 21, 1999.
11. Respondent’s domain name, <daleearnhardtincorporated.com> is identical or confusingly similar to Complainant’s mark, DALE EARNHARDT.
12. Respondent has no rights or legitimate interests in the domain name, <daleearnhardtincorporated.com>.
13. Respondent registered and has used the domain name in bad faith.
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) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
The United States Patent and Trademark registration of the mark, DALE EARNHARDT, gives the present holder of the mark rights in the mark. Respondent points out that Complainant supplies no contract or other written assignment or other proof to show that Complainant, Dale Earnhardt, Inc. is the beneficiary of the rights in the registered mark. Complainant responds to this argument by contending that the statements of Joseph Hedrick in his Affidavit attached as Exhibit A to the Complaint to the effect that he is Executive Vice President-Licensing of Complainant and that Complainant does have the right to exercise the rights granted in the trademark registration is sufficient proof on this issue. A Complainant is required to prove its rights in marks on which it relies by concrete evidence. Concrete evidence consists of “documents or third party declarations.” See Do The Hustle, LLC. v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). The Panel accepts the Affidavit of Joseph Hedrick as concrete evidence of Complainant’s rights in the mark, DALE EARNHARDT.
The next question it to determine whether the domain name, <daleearnhardtincorporated.com> is identical or confusingly similar to Complainant’s mark, DALE EARNHARDT.
Respondent’s domain name entirely takes in Complainant’s mark. The only difference is the addition of the word, “incorporated,” to the domain name and the inclusion of the term “.com.” Panels have considered domain names that include the word, “corp.” or “corporation” in additional to the mark of the Complainant. One Panel stated: “Respondent does not by adding the common descriptive or generic terms “corp.” or “corporation”…following “PGE”, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant…The added terms ‘corp.’ and ‘corporation’ commonly refer to a business entity. They are terms that users of the Internet would expect to be used by Complainant in connections with its mark…‘PGEcorporation.com…PGE-corporation.com and PGE-2000.com’ are confusingly similar to Complainant’s mark” [PGE] “within the meaning of paragraph 4(a)(i) of the Policy.” See PG&E Corp. v. Samuel Anderson and PGE in the year 2000, D2000-1264 (WIPO Nov. 22, 2000); see also Brown Shoe Co., Inc. v. Guide Publications, D2001-0762 (WIPO Sept 4, 2001) comparing Brown Shoe Co. to <brown-shoes.com>. Another Panel decision held that “Similarly, it is well established in U.S. trademark law that the addition or deletion of the corporate designation ‘incorporated’ does not alter or eliminate the likelihood of confusion between two confusingly similar trade names or marks.” See MasterCard Int’l Inc. v. John Henry Enters., D2001-0632 (WIPO June 28, 2001). The addition by Respondent of the word “incorporated” to Complainant’s registered mark does nothing to alter the fact that the domain name and the mark are confusingly similar.
Neither 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. See Sony Kabushiki v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant contends that it has never authorized or licensed Respondent to use the mark, DALE EARNHARDT. Complainant contends that Respondent holds no trademark or service mark corresponding to the name DALE EARNHARDT. Complainant contends that Complainant and Respondent are not affiliated in any way. Complainant contends that Respondent has never been known as DALE EARNHARDT.
Complainant contends that Respondent has never used the domain name for a bona fide offering of goods and services. Complainant asserts that Respondent has no rights or legitimate interests in respect to the domain name at issue. When such a showing is made the following rules apply. “When a Complainant asserts that a Respondent has no rights or legitimate interests in respect of a domain name, it is incumbent upon the Respondent to produce evidence of such rights and interests.” See PRL USA Holdings, Inc. v. Search Hound, D2001-00010 (WIPO Feb. 13, 2002).
Respondent can demonstrate its rights and legitimate interests in the domain name in any of the ways set out in Policy paragraph 4(c).
Respondent makes no contention that it has rights or legitimate interests under the methods set out in Policy ¶ 4(c)(i) or ¶ 4(c)(ii).
Respondent’s sole position is that it has rights and interests under Policy ¶ 4(c)(iii).
Respondent contends that the President of Respondent, Mark Kachadorian, has been a lifelong fan of Dale Earnhardt. He does not own another site or domain name that in any way resembles any other driver. In fact, Respondent contends that it does not own a website pertaining to any other celebrity or famous individual. During the last 20 years, Respondent states that it has acquired thousands of dollars worth of Earnhardt memorabilia. Respondent contends that it is its intent to develop the disputed domain name as a fan club. It is not clear from Respondent’s pleadings whether Respondent registered the domain name with intent to use it as a fan club or whether Respondent decided to use the domain name as a fan club at some later time. Respondent admits that prior to Complainant’s letter demanding transfer of the domain name, that “Respondent communicated nothing to the public on the web site other than the name of his limited liability company.” Respondent says that it offered no goods or services for sale related to either Respondent or Dale Earnhardt. The fact that Respondent has never offered anything for sale to anyone on this site underscores the fact that Respondent’s acquisition of the domain name was, and is, for non-commercial purposes, Respondent contends.
Respondent admits that the inclusion on the website of Respondent’s intent to develop the disputed domain name as a fan club occurred after being contacted by Complainant’s counsel. Respondent contends that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” See Policy ¶ 4(c)(iii).
Both parties agree that only after notice of the dispute did Respondent first mention on the web page that the site was going to be developed into a fan club. In facing a somewhat similar situation, where Respondent changed the intended use to be made of a domain name containing the name of a famous personality, the Panel stated: “Respondents who have engaged in use of a domain name which does not amount to legitimate use must expect to bear a substantial burden when they seek to demonstrate that their changed activity has acquired this character.” See Julie Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001). To what use did Respondent put the domain name prior to its announcement that it was being developed into a fan club site? Respondent supplies no evidence on this point except to contend that no goods or services were offered. The only evidence is a copy of a web page dated September 7, 2001. The web page contains only the name, address and telephone number of Respondent. The inference is made that this was the condition of the web site from the date of registration until after notice of the dispute. Respondent does not enlighten the Panel as to what an Internet user would encounter or be told if the user telephoned Respondent or communicated with Respondent by mail. If no goods or services were offered to Internet users at the site, the only logical inference to be drawn is that the use of the domain name constituted a passive holding of the name. Such use is not a bona fide offering of goods and services under the Policy. Indeed, Respondent admits as much in the pleadings. Thus, Respondent must carry the substantial burden explained in the Julie Brown decision.
Even if Respondent had initially registered the domain name for use as a celebrity fan site, that in itself does not amount to a use. See Celine Dion and Sony Music Ent’t (Canada) Inc. v. Jeff Burgar operating or carrying on business as Celine Dion Club, D2000-1838 (WIPO Feb. 13, 2001).
Other Panels have addressed the question of web sites dedicated to famous personalities in the nature of a fan club. See Ricky Skaggs v. W. Ignacio Vincente, D2000-1134 (WIPO Dec. 18, 2000). In Helen Fielding v. Anthony Corbert a/k/a Anthony Corbett, D2000-1000 (WIPO Sept. 25, 2000) it was held that lack of use of the domain name for a period of two years prior to the dispute, no active use of the domain name to host a web-based fan club, no apparent use of the name nor any evidence of plans for such a fan club coupled with the mere allegation of the use for a fan club was insufficient as a basis for a finding of legitimate rights or interests. It was stated in another fan club case as follows: “Her status as a fan might perhaps justify a finding of legitimate interests if she provided evidence of offline fan activity of which the website was an extension or if the website had been operational for a sufficient period. However, under the circumstances, Respondent merely has an expectation of developing a legitimate interest in the domain name at issue. This is insufficient to defeat Complainant’s evidence that her use is unauthorized…”See Edward Van Halen v. Deborah Morgan, D2000-1313 (WIPO Dec. 20, 2000).
When, after notice of the dispute, Respondent announces for the first time that he is going to use the domain name as a celebrity fan club web site, Respondent bears a substantial burden of proof. “It is for him to show that the new use of the site is substantial and genuine…” See Julie Brown v. Julie Brown Club, supra. A mere expectation of developing a fan club site is insufficient evidence to carry the issue. See Edward Van Halen v. Deborah Morgan, supra.; see also Experience Hendrix, L.L.C. v. Denny Hannerton and The Jimi Hendrix Fan Club, D2000-0364 (WIPO Aug. 15, 2000).
It should be noted that if Respondent desires to operate a fan club for Dale Earnhardt then Respondent should be charged with showing that no other reasonable alternatives were then available to him but to use the name in order to fully exercise his rights of free speech to present a fan site. Here, Respondent made no such showing. See Universal City Studios, Inc. v. David Burns and Adam 12 Dot Com, D2001-0784 (WIPO Oct. 1, 2001).
Based upon the evidence presented, the proper inferences to be drawn from the evidence and the authority of prior Panel decisions, it is the finding of this Panel that Respondent has illustrated no rights or legitimate interests in the domain name, <daleearnhardtincorporated.com>.
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
It is the responsibility of Complainant to prove that Respondent both registered and is using the domain name in bad faith. Complainant may proceed to show bad faith under any of the methods set out in Policy ¶ 4(b) or by any other means which show, under the facts and circumstances of the case, use in bad faith. See McNeal Consumer Brands, Inc. v. Washington Surgical Services, D2000-1657 (WIPO Mar. 23, 2001).
Complainant contends that Respondent registered the domain name in bad faith based upon the activities of Mark Kachadourian. Kachadourian is accused of submitting incomplete and inaccurate registration information and registering other domain names relating to the World Trade Center subsequent to the events of September 11, 2001. Complainant contends that this is evidence of concealment and intent to profit. The Panel is not persuaded by the evidence that Mark Kachadourian filed incomplete and inaccurate registration information. Kachadourian’s activities do not rise to the level recognized by Panels to constitute an effort at concealment of Respondent’s identity. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
However, it is clear that Respondent registered the famous name of a celebrity with full knowledge that Dale Earnhardt had trademark rights in his name. “Registration of a well known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.” See ROHO, Inc. v. Mark Duane, D2000-1168 (WIPO Dec. 14, 2001); see also Victoria’ Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001). The Panel has no difficulty in finding that Respondent registered the domain name in bad faith.
Complainant must next prove that Respondent used or is using the domain name in bad faith. Complainant contends that Respondent has been and is using the domain name in bad faith since Respondent used the web site to promote Noramar Enterprises. Then, after notice of the dispute, Respondent changed the web site to one under construction as a fan site. This change in purpose, argues Complainant, is evidence of bad faith use. Complainant cites to the decision in Salomon Smith Barney Inc. v. Saloman Internet Servs., D2000-0668 (WIPO Sept. 4, 2000) that held that a respondent cannot claim noncommercial use of a domain name, within the meaning of Policy ¶ 4(c) when such use commences after notice of the dispute, since to hold otherwise would thwart the intent of the Rules. The Panel in that case seemed to consider this issue, which relates to legitimate rights and interests, along with other circumstances in its finding of bad faith.
Complainant further contends that the passive holding of the domain name at issue along with the other domain names listed earlier in this decision is evidence of bad faith.
Here, as opposed to other decisions where the domain name was not used in any way, the domain name resolved itself to a web page upon which was listed only the name of Noramar Enterprises, its address and telephone number. This condition apparently existed over a long period of time. According to Respondent, nothing was offered at the web site in the nature of goods and services. The Panel can see nothing to distinguish this from the passive holdings criticized in other domain name dispute decisions.
“Various panels have ordered transfer of a domain name after a extended period of non-use was coupled with a complainant having valid trademark rights commenced prior to the date on which the offending domain name was registered coupled with the registrant having actual or imputed knowledge of those rights.” See Jones Apparel Group, Inc. v. Robin Sousa, D2001-1308 (WIPO Dec. 21, 2001) and cases cited therein.
The issue was carefully considered in Kabushiki Kaisha Toshiba a/b/a Toshiba Corp. v. Distrib. Purchasing & Logistics Corp., D2000-0464 (WIPO July 27, 2000). In that case it was said, “…in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfied the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behavior. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amount to acting in bad faith.” The Panel then considered whether the Complainant owned and used the mark in question. It considered the fact that respondent had provided no evidence of any actual or contemplated good faith use of the domain name. It considered whether respondent had ever been commonly known by the domain name. It considered whether the respondent had registered other domain names with which respondent could show no association and finally that respondent was never licensed to use the domain name containing complainant’s mark. The Panel found that when each of these elements required an answer adverse to respondent, that the respondent’s passive holding of the domain name amounted to an instance of bad faith under Policy ¶ 4(a)(iii).
This Panel finds that based upon all of the evidence available in this case, that Respondent was and is using the domain name in bad faith.
Further, Respondent, by holding the domain name in issue corresponding to Complainant’s mark passively prevents Complainant from reflecting its mark in a corresponding domain name. See McNeil Consumer Brands, Inc. v. Washington Surgical Servs., D2000-1657 (WIPO Mar. 23, 2001); see also Julia Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001).
Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
It is the decision of the Panel that the domain name,<daleearnhardtincorporated.com>, now registered to Respondent, Noramar Enterprises, be TRANSFERRED to Complainant, Dale Earnhardt, Inc.
Tyrus R. Atkinson, Jr., Panelist
Dated: Oct. 1, 2002
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