National Arbitration Forum

 

DECISION

 

Raceway Media, LLC v. ParaComp Business Services

Claim Number: FA0907001273674

 

PARTIES

Complainant is Raceway Media, LLC (“Complainant”), represented by Jeffrey B. Sladkus, of JEFFREY B. SLADKUS, LLC, Georgia, USA.  Respondent is ParaComp Business Services (“Respondent”), represented by Paul Newman, North Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <racejunk.com> (“Respondent’s Domain”), registered with Network Solutions, Inc.

 

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.

 

Robert A Fashler as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2009.

 

On July 14, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that Respondent’s Domain is registered with Network Solutions, Inc. and that the Respondent is the current registrant of Respondent’s Domain.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 11, 2009 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@racejunk.com by e-mail.

 

A timely Response was received and determined to be complete on July 31, 2009.

 

An Additional Submission was received from the Complainant on August 5, 2009.  An Additional Submission was received from the Respondent on August 7, 2009. 

 

On August 6, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant asserts that:

 

(a)                Complainant is a multi-media publishing firm serving, among others, motorsport racing and performance enthusiasts.

(b)               Complainant registered the URL <racingjunk.com> (“Complainant’s Domain”) on November 2, 1999.

(c)                Complainant owns and operates a website accessed via Complainant’s Domain (“Complainant’s Website”)

(d)               Complainant has been using the trademarks RACINGJUNK and RACINGJUNK.COM (“Complainant’s Trademarks”) in association with Complainant’s Website and the services it provides through that website since at least as early as November 2, 1999.

(e)                Complainant’s Website has grown to become the largest online motorsports marketplace and performance classified website with over 270,000 registered users.

(f)                 Complainant has registered Complainant’s Trademarks in the United States Patent and Trademark Office (“USPTO”), as follows:

(i)                  Reg. No. 3,087,511 for RACINGJUNK.COM, which issued to registration on May 2, 2006; and

(ii)                Reg. No. 3,204,063 for RACINGJUNK, which issued to registration on January 30, 2007.

(g)                Respondent operates a website accessed via Respondent’s Domain that has a motorsports theme (“Respondent’s Website”).

(h)                Respondent registered Respondent’s Domain on August 23, 2007[1].

(i)                  From 2001 until 2008:

(i)                  Respondent’s Website was operated as an information-only website that did not compete directly with the services provided at Complainant’s Website;

(ii)                Respondent’s Website was operated in a manner that did not appear to trade on the goodwill associated with Complainant’s Website or Complainant’s Trademarks; and

(iii)               Respondent’s Website displayed the trademark RACINGEXCHANGE and the tag line “Providing links to all of racing”, and did not display RACEJUNK or RACEJUNK.COM.

(j)                 In 2008, Respondent significantly modified Respondent’s Website so that the website:

(i)                  offered services that are directly competitive with those offered at Complainant’s Website;

(ii)                traded on the goodwill associated with Complainant’s Website and Complainant’s Trademarks;

(iii)               causes or is likely to cause confusion between Respondent’s Domain and Complainant’s Trademarks, including initial interest confusion;

(iv)              deleted the trademark RACINGEXCHANGE and the tag line “Providing links to all of racing”; and

(v)                displays the word RACEJUNK.COM as a trademark.

(k)               On May 13, 2008, Complainant’s counsel sent a letter to Respondent that:

(i)                  informed Respondent of Complainant’s rights in Complainant’s Trademarks;

(ii)                advised Respondent that Respondent’s registration of Respondent’s Domain and Respondent’s use of a trademark virtually identical to Complainant’s Trademarks infringed Complainant’s intellectual property rights under the US trademark statute, the Lanham Act;

(iii)               demanding that Respondent cease and desist from any further use of “the RACEJUNK mark or the continued use or registration of the <racejunk.com> domain name” and that Respondent “immediately transfer the URL to” Complainant; and

(iv)              threatening “legal action to prevent your continued registration of the <racejunk.com> domain name and any unauthorized use of” Complainant’s RACINGJUNK trademark [2].

(l)                  Respondent’s Domain is confusingly similar to Complainant’s Trademarks.

(m)              Respondent makes no claim to a business operating under the trademark RACEJUNK.

(n)                Respondent’s only use of the trademark RACEJUNK is in relation to Respondent’s Domain, which is being used to divert Complainant’s customers to Respondent’s Website.

(o)               Expansion of Respondent’s business from providing an information-only website operated in association with the mark RACINGEXCHANGE to a competitive e-commerce website operated in association with the mark RACEJUNK constitutes use of the Respondent’s Domain in bad faith.

(p)               Respondent is intentionally and wrongfully attempting to attract internet users to Respondent’s Website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website.

B. Respondent

 

Respondent asserts that:

 

(a)                Paul Newman (a computer network engineer who is not related to the deceased actor) is the owner and sole proprietor of Respondent.

(b)               Respondent registered Respondent’s Domain on March 23, 2000, and Respondent has actively used the domain name from that date to the present time in connection with Respondent’s Website.

(c)                Respondent’s Website provides the following services: database of links, motorsports news feeds, a racer blog, and on-line motorsports trivia game, without charge to its users.

(d)               Respondent’s Website does not operate at a profit nor does it pursue significant commercial advertising, sell product(s), or directly and/or engage in other commerce[3].

(e)                Respondent registered Respondent’s Domain on March 23, 2000, without knowledge of the Complainant’s Trademarks or Complainant’s Domain, and Respondent has operated Respondent’s Website using Respondent’s Domain continuously since then.

(f)                 Respondent has never offered to sell Respondent’s Domain to Complainant.

(g)                Complainant did not apply to register Complainant’s Trademarks until 2006, which, at the earliest, is more than six years after Respondent registered Respondent’s Domain and began operating Respondent’s Website.

(h)                Respondent’s and Complainant’s websites have a different look, feel, experience, environment and set of features.

C. Additional Submissions

 

Complainant additionally asserts that:

 

(a)                The registrations for Complainant’s Trademarks establish that Complainant has been using Complainant’s Trademarks since as early as 1999.

(b)               Respondent’s Website currently uses the trademark RACEJUNK not only as a domain name but also as a common law trademark, and that common law trademark is confusingly similar to Complainant’s Trademarks.

(c)                Respondent’s business now competes with Complainant’s business and confusion is likely to occur.

(d)               Respondent’s use of Respondent’s Domain creates, at a minimum, initial interest confusion because it is likely that some individuals seeking Complainant’s Website will mistakenly type Respondent’s Domain, and upon reaching Respondent’s home page they will see the RACEJUNK mark and mistakenly believe that they are at Complainant’s Website.

(e)                Before 2008, Respondent’s Website, although accessed via Respondent’s Domain, principally provided information only and the home page displayed the trademark RACINGEXCHANGE.

(f)                 Complainant was aware of Respondent’s actions during this period but tolerated them because even if a person arrived at Respondent’s home page by accident, the trademark RACINGEXCHANGE would have made it clear that the website was not Complainant’s Website.

(g)                As a consequence of Respondent’s intentional change of Respondent’s Website to display the RACEJUNK banner, to delete the mark RACINGEXCHANGE, and to feature more prominently classified advertising (for which Respondent receives payment), Respondent’s Website evolved to one that clearly is a commercial undertaking operated in association with a trademark that Respondent has no legitimate right to use.

(h)                Respondent’s website is operated in bad faith because it trades off the goodwill associated with Complainant’s Trademarks.

Respondent additionally asserts that:

 

(a)                Respondent never intended to sell Respondent’s Domain to Complainant, or to disrupt Complainant’s business, or to prevent Complainant from registering its own marks [sic].

(b)               Respondent’s use of Respondent’s Domain was in good faith to provide services to members of the motorsports industry.

(c)                Complainant has not provided any evidence proving that Complainant had an active website accepting visitors at the time that Respondent registered Respondent’s Domain on March 23, 2000.

(d)               The earliest entry in the Internet archive known as the Wayback Machine (“Wayback Machine”) for any website accessed via the domain name <racingjunk.com> is for October 18, 2000, which is later than the date of registration of Respondent’s Domain (March 23, 2000).

(e)                Respondent’s Website has certain featured classified advertisements for which advertisers must pay between $0.50 - $1.50 (USD) per advertisement.

(f)                 Fewer  than 1% of those who visit Respondent’s Website place classified advertisements at the website.

(g)                Many of the changes that Respondent made to Respondent’s Website occurred prior to Complainant counsel’s letter to Respondent on May 13, 2008.

 

FINDINGS

The Panel finds that Complainant has failed to prove that (a) Respondent lacks rights and a legitimate interest in the domain name <racejunk.com>.  The Panel also finds that the evidence establishes that Respondent has rights to and legitimate interests in the domain name <racejunk.com> pursuant to Paragraph 4 (c) (i) of the Policy.  The Panel therefore orders that the Complaint be denied.

 

DISCUSSION

 

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

 

Complainant has provided uncontroverted proof that it owns registrations in the USPTO for Complainant’s Trademarks.  RACINGJUNK.COM issued to registration in 2006 and RACINGJUNK issued to registration in 2007, both well before this proceeding was initiated.

 

The test for confusing similarity is a comparison between the trademark(s) and the domain name(s) at issue.  The content of a website is irrelevant in the finding of confusing similarity.

 

The words “race” and “racing” both derive from the same root and are very similar in appearance, meaning, and sound.  As a matter of first impression and imperfect recollection, the average person would not be likely to distinguish one from the other.  When used in the context of motorsports, both words are descriptive of activities, products, and services connected with car and motorcycle racing.

 

The word “junk” is far more distinctive in the context of motorsports.  Any distinctiveness enjoyed by Complainant’s Trademarks and Respondent’s Domain is, for the most part, derived from the word “junk”.  As Complainant’s Trademarks and Respondent’s Domain both include the word “junk” in the same format, there is a high likelihood of confusion between Respondent’s Domain and Complainant’s Trademarks.  The Panel finds that Respondent’s Domain is confusingly similar to Complainant’s Trademarks.

 

Complainant has satisfied its burden in relation to Paragraph 4 (a) (i) of the Policy.

 

Rights or Legitimate Interests

 

The Complainant bears the burden of proof to make out a prima facie case that Respondent lacks rights or legitimate interests under paragraph 4 (a) (ii) of the Policy.  Additionally, Paragraph 4 (c) of the Policy provides a means to establish that Respondent has rights or legitimate interests in Respondent’s Domain.

 

Much of the evidence submitted to the Panel by both disputants has tended to be weak and inconclusive.  For the most part, both disputants rely on mere assertions of fact.  Moreover, the materials submitted by both Complainant and Respondent include assertions of fact that are inconsistent or equivocal.  As Complainant bears the initial burden of proving its case, these deficiencies tend to weigh more heavily on Complainant.

 

The Panel finds that Complainant has produced insufficient evidence to support a finding that Respondent lacks rights or legitimate interests in Respondent’s Domain.  Complainant's submissions on this issue are, for the most part, bare assertions of fact and legal argument.  Complainant’s position on this issue appears to be predicated on the following assumptions:

(i)                  before Respondent registered Respondent’s Domain, Complainant had well-established rights in Complainant’s Trademarks;

(ii)                Respondent must have known about Complainant’s Trademarks; and

(iii)               Respondent needed but did not procure authorization from Complainant to register and use Respondent’s Domain.

However, Complainant’s evidence falls considerably short of establishing any of those assumptions. Among other things, Complainant has not tendered any meaningful evidence supporting its own first use of Complainant’s Trademarks in commerce.  Complainant merely asserts that active use began on the same day that Complainant’s Domain was registered.

 

Complainant then points to the date of first use identified in the registrations for Complainant’s Trademarks (November 2, 1999) as somehow proving that such use actually first occurred on that date.  Complainant has not provided any U.S. legal authority supporting the proposition that a claimed date of first use noted in a U.S.-registered trademark is presumed to be correct.

 

The U.D.R.P. is not a U.S. procedure.  It is international in scope. Panelists may not be expert in U.S. law.  The Panelist in this case is a Canadian lawyer.  In any event, it is the responsibility of complainants and respondents to support all legal propositions on which they rely with proper authority.  In the absence of any legal authority supporting the principle asserted by Complainant, the Panel concludes that the appearance of a claimed date of first use that appears in a Federal U.S. trademark registration proves nothing more than the party who applied to register the mark represented to the USPTO that the mark was first used on that date.

 

It is not difficult to provide some evidence of use of a trademark.  It is not difficult to provide evidence showing how a trademark ought to have gained reputation and goodwill through use over time.  It would be unfair and prejudicial to Respondent if the Panel simply relied on bald assertions of first use of a trademark in commerce, let alone assertions that the trademark in question has acquired any reputation or goodwill.

 

In contrast, both disputants tendered some evidence showing that Respondent was using Respondent’s Domain at least as early as 2001.  The proof was in the form of print-outs from the Wayback Machine.  The following note appears on page 7 of the Complaint:

 

“Complainant accessed archived copies of Respondent’s website at <racejunk.com> from the website known as the WAYBACK MACHINE accessible at <web.archive.org> and submits copies of representative samples of those WebPages as Annex G to substantiate the use of Respondent’s website dating back to 2001, the earliest archived copies available.”

 

The Panel accepts that statement and the Annex to which it refers as evidence that Respondent was using Respondent’s Domain at least as early as 2001.

 

It is more than a little curious that Complainant did not tender evidence from the Wayback Machine establishing operation of its own website as of the date it claims to have first used Complainant’s Trademarks.  In this regard, it is worth noting the following statement made by Respondent at page 3 of its Response to Written Statement:

 

“Furthermore, Complainant has not offered any evidence to prove that they actually had an active website accepting visitors or what features existed on Complainant’s website at the time Respondent registered its own domain name.  The earliest entry in the wayback machine at http://web.archive.org/web/*/http://racingjunk.com is for October 18, 2000 which would be AFTER Respondent registered the domain name racejunk.com.”

 

Complainant has conspicuously failed to provide evidence of actual use of its domain name <racingjunk.com> or Complainant’s Trademarks in commerce either before registration of Respondent’s Domain on March 23, 2000 or before the date that Respondent claims to have first used Respondent’s Domain name, also in March of 2000.

 

Complainant has therefore failed to demonstrate that Complainant used Complainant’s Domain or Complainant’s Trademarks in commerce before Respondent registered and used Respondent’s Domain.  Accordingly, it follows that Complainant has failed to demonstrate that Complainant’s Trademarks acquired any reputation or goodwill before the Respondent registered and used Respondent’s Domain.  Complainant’s Trademarks were not registered until 2006 and 2007, well after Respondent registered and began using Respondent’s Domain in connection with Respondent’s Website.

 

Accordingly, Complainant has not provided any evidence from which the Panel can conclude, or even infer, that, at the time that Respondent registered or began using Respondent’s Domain, Respondent ought to have been aware of Complainant's Trademarks and that Respondent’s Domain could not be used without express authorization from Complainant.

 

On the other hand, there is satisfactory evidence before the Panel that Respondent did use Respondent’s Domain long before receiving any notice of the dispute that is the subject of these proceedings.  Accordingly, it appears that Respondent has satisfied two of the requisite elements of Paragraph 4 (c) (i) of the Policy, which, if fully applicable, would conclusively demonstrate that Respondent has rights or legitimate interests in Respondent’s Domain.  It is appropriate, therefore, to consider whether there is sufficient evidence to conclude that the other elements of Paragraph 4 (c) (i) of the Policy are present.

 

The balance of Paragraph 4 (c) (i) requires that Respondent’s use of  Respondent’s Domain must have been in connection with a “bona fide” (i.e. good faith) offering of goods or services.  For the reasons already discussed, the Panel sees no evidentiary basis for concluding that Respondent’s use of Respondent’s Domain for several years before it received the cease and desist letter from Complainant’s lawyer in May of 2008, was made in bad faith (i.e. not bona fide).

 

Complainant says that Respondent’s use transformed at some point in 2008 in a manner that reflects Respondent’s bad faith.  However, Complainant’s statements about when the change occurred are inconsistent and equivocal.  Complainant’s clearest and most complete statement on the issue appears on page 5 of the Complaint, as follows:

 

However, since Respondent’s receipt of Complainant’s May 13, 2008 letter, Respondent has substantially developed its Racejunk Website from an alleged “information only” website operating under the name RACING EXCHANGE to a website that offers identical products and services to those offered by Complainant on its Racingjunk Website, all under the mark RACEJUNK.

 

The Panel accepts that statement at face value.  Accordingly, even if one were to assume, for the purpose of analysis, that the transformation of Respondent’s Website did reflect bad faith on the part of Respondent, that would not deprive Respondent of the benefit of Paragraph 4 (c) (i) of the Policy.  That is because the specific changes that Complainant says reflect bad faith did not occur until after Respondent received Complainant’s cease and desist letter. The Panel expresses no view on whether or not the transformation of Respondent’s Website did or did not reflect bad faith.

 

Even if it was established that Respondent did begin using Respondent’s Website in a manner that was not bona fide a few months before Complainant’s cease and desist letter was received by Respondent, the Panel would still find that Respondent has satisfied the good faith requirement set out in Paragraph 4 (c) (i) of the Policy.

 

The Panel does not interpret Paragraph 4 (c) (i) of the Policy as requiring Respondent to establish anything more than the fact that it did use Respondent’s Domain in good faith before receiving notice of the dispute.  Complainant is absolutely clear that for several years it knew about Respondent’s Website and did not find it to be objectionable.  Hence, there is no dispute that Respondent’s Website was used in a bona fide manner for at least seven years.  In the view of this Panel, that fact is sufficient to satisfy the good faith requirements of Paragraph 4 (c) (i) of the Policy.  If, after many years of good faith operation, Respondent’s Website was altered in a manner that is likely to cause confusion between Respondent’s Website and Complainant’s Trademarks, it would appear that that Complainant’s concerns are more properly the subject of litigation asserting trademark infringement rather than a U.D.R.P. proceeding.

 

The last element of Paragraph 4 (c) (i) requires the determination of whether Respondent’s use of Respondent’s Domain was in connection with an “offering of goods or services”.

 

Complainant’s position on the relevant facts is, once again, inconsistent and equivocal.  In some of its submissions, Complainant says that Respondent’s Website became commercial, competing, and infringing only after the cease and desist letter was sent to Respondent by Complainant’s lawyer.  In contrast, the cease and desist letter itself accused Respondent of infringing Complainant’s Trademarks in connection with “very similar, if not identical, services to those offered on our client’s <racingjunk.com> site.”

 

Respondent submissions are also inconsistent on this issue, attempting to create the impression that Respondent does not engage in any commercial activity.

 

However, it is clear that Respondent did, at all material times, offer some services to the public through Respondent’s Website, and that while most of  those services were provided free of charge, some required payment.  Hence, the Panel is of the opinion that there was sufficient fee for services activity carried on through Respondent’s Website to support a finding that Respondent’s Domain was used in connection with a bona fide commercial offering of services.

 

However, given Respondent’s assertions that its activities were not truly commercial, it is appropriate to consider whether the strictly non-commercial activities carried on by Respondent through Respondent’s Website also qualify as an “offering of goods or services”.

The wording of Paragraph 4 (c) (i) does not limit the words “offering of goods or services” with the word “commercial” or any similar adjective.  U.D.R.P. panels have construed the words “offering of goods or services” to include a variety of activities that are not what one would ordinarily consider to be standard commercial enterprises.  For example, panels have found offering information about geographical destinations or commonly played games to be a bona fide offering of goods or services.  See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights or legitimate interests in the <portofhelsinki.com> domain name because the respondent was using the disputed domain name in order to provide information about services available in different ports around the world); see also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments was a bona fide use of the domain name); see also Vishwa Nirmala Dharma v. Sahaja Yoga Ex-Members Network, D2001-0467 (WIPO June 16, 2001) (finding the offering information regarding the practice of Sahaja Yoga is a bona fide offering of goods or services pursuant to Paragraph 4(c)(i)).

 

This Panel agrees with the approach taken to Paragraph 4 (c) (i) in the decisions referenced in the preceding paragraph.

 

Accordingly, the Panel finds that Complainant has failed to satisfy the requirements of Paragraph 4 (a) (ii) of the Policy for two reasons.  First, Complainant has not provided sufficient evidence from which it can be determined that Respondent does not have rights or legitimate interests in Respondent’s Domain.  Second, the requirements of Paragraph 4 (c) (i) of the Policy have been satisfied by the evidence and admissions of the disputants.

 

Registration and Use in Bad Faith

 

Given the Panel’s findings on Respondent’s rights and legitimate interests, it is not necessary to consider the final element of the Policy, namely, whether Respondent’s Domain was registered and is being used in bad faith.  However, the Panel does note that all available evidence supports the view that Respondent’s Domain was unquestionably registered in good faith.

 

DECISION

Given that Complainant has failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Robert A. Fashler, Panelist
Dated: August 20, 2009

 

 

 

 

 

 

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