Indy Racing League, LLC d/b/a INDYCAR and Brickyard Trademarks, Inc. v. PacificCoastWebDesigns
Claim Number: FA1103001376886
Complainant is Indy Racing League, LLC d/b/a INDYCAR and Brickyard Trademarks, Inc. (“Complainant”), represented by Bradley M. Stohry of ICE MILLER LLP, Indiana, USA. Respondent is PacificCoastWebDesigns (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indycarworldchampionship.com>, registered with directNIC, LTD.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2011; the National Arbitration Forum received payment on March 9, 2011.
On March 10, 2011, directNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <indycarworldchampionship.com> domain name is registered with directNIC, LTD and that Respondent is the current registrant of the name. directNIC, LTD has verified that Respondent is bound by the directNIC, LTD 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 March 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@indycarworldchampionship.com. Also on March 11, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <indycarworldchampionship.com> domain name is confusingly similar to Complainant’s INDYCAR mark.
2. Respondent does not have any rights or legitimate interests in the <indycarworldchampionship.com> domain name.
3. Respondent registered and used the <indycarworldchampionship.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brickyard Trademarks, Inc. (“BTI”), is the owner of the INDYCAR trademark, which is used in association with automobile racing events, activities, and products of the INDYCAR series. Complainant, Indy Racing League, LLC d/b/a INDYCAR (“INDYCAR”) is the sanctioning body behind the INDYCAR series and is a licensee of the INDYCAR mark. Due to the nature of the relationship between BTI and INDYCAR, the Panel elects to treat them as a single Complainant throughout this proceeding. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its INDYCAR mark (e.g., Reg. No. 1,877,676 issued February 7, 1995). Complainant also owns the domain name <indycar.com> which it uses to promote its INDYCAR racing series and related services and merchandise.
Respondent, PacificCoastWebDesigns, registered the disputed domain name on April 7, 2008. The disputed domain name fails to resolve to a website with any active content.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant claims that it has rights in its INDYCAR mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,877,676 issued February 7, 1995), a federal trademark agency. The Panel finds that it is has been well established that registration of a mark with the USPTO grants a complainant rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant claims that Respondent’s <indycarworldchampionship.com> domain name is confusingly similar to Complainant’s INDYCAR mark. The disputed domain name incorporates Complainant’s entire mark and adds the generic terms “world” and “championship,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of generic terms and a gTLD fail to distinguish the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, according to Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <indycarworldchampionship.com> domain name is confusingly similar to Complainant’s INDYCAR mark.
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that based on the arguments set forth in the Complaint, Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nevertheless, the Panel elects to consider the evidence on record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the disputed domain name and has no intellectual property rights in the disputed domain name. Complainant further asserts that Respondent is not using the INDYCAR mark with the permission of, or a license from, Complainant, nor is Respondent in any way affiliated with Complainant. The Panel notes that the WHOIS information for the disputed domain name indicates that the registrant is known as “PacificCoastWebDesigns,” which the Panel finds is not similar to the disputed domain name. Therefore, the Panel can only conclude that Respondent is not commonly known by the disputed domain name and as such lacks any rights or legitimate interests in the <indycarworldchampionship.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant argues, and submits screenshot evidence to support, that Respondent’s <indycarworldchampionship.com> domain name resolves to a website without any active content. The Panel finds that Respondent’s failure to make an active use of the disputed domain name cannot be considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant submits evidence that Respondent’s <indycarworldchampionship.com> domain name does not resolve to a website featuring any active content. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indycarworldchampionship.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2011
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