national arbitration forum

 

DECISION

 

Kevin Brinkworth v. Christopher Pearson

Claim Number: FA1012001362920

 

PARTIES

 

Complainant is Kevin Brinkworth (“Complainant”), New York, USA.  Respondent is Christopher Pearson (“Respondent”), Rhode Island, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <pitroad.com>, registered with GoDaddy.com, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2010; the National Arbitration Forum received payment on December 10, 2010.

 

On December 13, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pitroad.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pitroad.com.  Also on December 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on January 13, 2011.

 

On January 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

A.     Complainant

 

Complainant states he is the owner of a registered trademark for PITROAD.COM.  He contends that the domain name <pitroad.com> is identical to the registered mark.  Complainant contends that Respondent has not used the domain name in connection with a bona fide offering of goods or services, and that Respondent is not commonly known by the domain name.  Complainant contends that Respondent offered to sell the domain name to Complainant for $7,500, an amount well in excess of Respondent’s out-of-pocket costs.

 

B.     Respondent

 

The registration of Complainant’s mark extends to Internet services; thus Respondent’s domain name, which relates to auto racing, will not cause confusion with Complainant’s mark.   Respondent also contends that Complainant does not own the trademark; it is owned by Roy M. Irwin.  Respondent states that he is using the domain name as an advertising vehicle for auto racing related information and memorabilia.  Respondent states that the Complainant, through his attorney, made repeated contacts to Respondent for the purpose of purchasing the domain name.

 

FINDINGS

 

The Complaint is based on the United States Trademark Registration for

PITROAD.COM, (Reg. No. 3068870 issued March 14, 2006).  The Trademark is registered in International Class 042 and U.S. Classes 100 and 101, which relate, among other things, to a business engaged in the field of creating, operating and managing electronic mailing lists, creating web sites and managing website content, and e-commerce software, specifically, internet shopping cart software for enabling electronic commerce and electronic transaction processing on a global computer network.

 

The domain name was originally registered in 2000; its ownership lapsed in 2010, when it was acquired by Respondent at an auction.  Respondent is using the domain name as an advertising vehicle for auto racing information.

 

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."

 

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.

 

Because Complainant is unable to establish that Respondent registered and has used the domain name in bad faith, it is unnecessary to consider the remaining elements of the Policy.  Atlantic Station, LLC v. Burns, FA 1250592 (Nat. Arb. Forum April 26, 2009).

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).  Complainant’s sole claim of bad faith concerns the contention that Respondent offered to sell the domain name to Complainant for $7,500 presumably in excess of Complainant’s out-of-pocket costs for acquiring the domain name.  Respondent alleges that he never registered the <pitroad.com> domain name with the intention to sell it to Complainant and never approached Complainant in order to sell the disputed domain name.[1]   Respondent asserts that Complainant approached Respondent, “out of the blue,” in the form of an email and indicated Complainant’s desire to purchase the <pitroad.com> domain name.  Respondent provides evidence of these email communications between Complainant and Respondent.   Under these circumstances, the Panel concludes that Respondent did not acquire the domain name for the purpose of selling it; thus Respondent’s conduct was not in bad faith.   See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (offering to sell a domain name is insufficient to show bad faith unless it can be shown that the domain name was registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000).

 

Moreover, according to the record, the domain name was first registered in 2000.  Complainant’s mark was not registered until 2006, and there has been no showing that common law rights existed in the mark prior to that date.  The general rule is that “when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (April 7, 2009); e.g., Riveron Consulting, L.P. v. Pace, FA 1309793 (Apr. 12, 2010).

 

DECISION

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <pitroad.com> domain name REMAIN WITH Respondent.

 

 

Bruce E. Meyerson Panelist

Dated:  January 28, 2011