Reliable Racing Supply, Inc. v. ALPINE RACING TECHNOLOGY-ARTECH LLC
Claim Number: FA1306001505000
Complainant is Reliable Racing Supply, Inc. (“Complainant”), represented by Robert J Kimmer of Rader, Fishman & Grauer, PLLC, New York, United States. Respondent is ALPINE RACING TECHNOLOGY-ARTECH LLC (“Respondent”), represented by Gavin McMorrow, New Hampshire, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reliableracing.co>, registered with NETWORK SOLUTIONS 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.
Mr Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2013; the National Arbitration Forum received payment on June 14, 2013.
On Jun 17, 2013, NETWORK SOLUTIONS INC. confirmed by e-mail to the National Arbitration Forum that the <reliableracing.co> domain name is registered with NETWORK SOLUTIONS INC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS INC. has verified that Respondent is bound by the NETWORK SOLUTIONS 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 June 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2013 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@reliableracing.co. Also on June 17, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 1, 2013.
On July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
The Complainant is the owner of the U.S. trademark registration No. 1,651,834 RELIABLE RACING (word), filed July 3, 1990, and registered July 23, 1991, with the date of first use of March 1982 (Exhibit 1 of the Complaint).
The Respondent registered the disputed domain name <reliableracing.co> on May 7, 2011.
As noticed above, on June 17, 2013, the Written Notice of the Complaint, notifying Respondent of the deadline for a Response, was transmitted to Respondent, and a timely Response was received and determined to be complete on July 1, 2013. The fact that Respondent, although well informed of all details, basically only replied with “no dispute being filed” will therefore be considered by the Panel as a formal Response where the Respondent has chosen to make no comments to the Complaint other than a request that the Panel denies the remedy requested by the Complainant.
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.
The Panel further finds that the deletion of the space between words in Complainant’s mark is not relevant to confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Finally, the Respondent’s addition of the country-code top-level domain (“ccTLD”) “.co,” referring to Columbia, is irrelevant to a Policy ¶ 4(a)(i) analysis. See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
Therefore, the Panel finds that Respondent’s <reliableracing.co> domain name is close to identical and at least confusingly similar to the RELIABLE RACING trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends, and Respondent has not contradicted, that Respondent is not commonly known by the <reliableracing.co> domain name. The Panel notes that Respondent identifies as “ALPINE RACING TECHNOLOGY-ARTECH LLC” and lists “Gavin McMorrow” as the contact of note. The WHOIS information supports the assertion of Respondent’s identity, and this is further confirmed directly by the Respondent in the Response. The Panel therefore concludes that Respondent has not been commonly known as the <reliableracing.co> domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Finally, the Panel notes that the domain name resolves to Respondent’s business website, which is selling the same types of goods sold by Complainant, such as skis, race wax, tuning equipment, and other ski equipment. The Panel therefore agree with the Complainant that Respondent’s appropriation of the domain name to send Internet users to its directly competing business is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Although registered under the country-code top-level domain of Colombia, Respondent is based in United States – the same country as Complainant. The Panel therefore cannot draw any other conclusion than that the “.co” ccTLD was chosen not to connect to customers or goods and services related to Colombia, but because it is visual close to the gTLD “.com” where under Complainant advertises its trademark, goods, and services as <reliableracing.com>.
As stated above, the Panel notes that Respondent is redirecting Internet users who visit the <reliableracing.co> domain name to Respondent’s own competing web site <artechski.com> where they are provided with numerous offers and discounts for skis and related equipment. The Panel concludes that Respondent’s registration and use of the domain name is in furtherance of a Policy ¶ 4(b)(iii) bad faith attempt to disrupt Complainant’s legitimate business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
The Panel further notes that the disputed domain name redirects Internet users to the domain name housing Respondent’s directly competing business, obviously in order to confuse Internet users into believing that the competing business operated by Respondent is endorsed by or affiliated with Complainant. See Complainant’s Ex. 3. The Panel concludes that Respondent’s bad faith is also apparent under Policy ¶ 4(b)(iv), as Respondent is using this domain name in hopes of confusing and tricking Internet users into believing its goods are affiliated with Complainant. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Being a direct competitor with Complainant in the ski industry, and based in the same country as the Complainant, the Respondent’s bad faith is rooted in its actual knowledge of Complainant’s rights in the mark as intended by Policy ¶ 4(a)(iii) , based upon Respondent’s decision to use confusingly similar domain name (with the only difference to the Complainants trademark that the space between the two words of the trademark RELIABLE RACING is eliminated in the domain name <reliableracing.co>), to send Internet users to his own domain name and directly competing business. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reliableracing.co> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 22, 2013
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