National Association for Stock Car Auto Racing, LLC v. fabian tira
Claim Number: FA2209002013013
Complainant is National Association for Stock Car Auto Racing, LLC (“Complainant”), represented by Neil C. Magnuson, North Carolina, USA. Respondent is fabian tira (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nascarnft.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on September 21, 2022; Forum received payment on September 21, 2022.
On September 22, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <nascarnft.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 26, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2022 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@nascarnft.com. Also on September 26, 2022, 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 October 4, 2022.
On October 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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
Complainant is the premier regulating, sanctioning, and governing body for stock car automobile and truck racing in the United States. Complainant has rights in the NASCAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 990, 987 registered August 13, 1974). Respondent’s <nascarnft.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the NASCAR mark in its entirety and adds the abbreviation “nft” (short for “non-fungible token”, a record on a blockchain which is associated with a particular digital or physical asset) and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <nascarnft.com> domain name. Respondent is not commonly known by the Domain Name and Complainant has not authorized or licensed Respondent any rights in the NASCAR mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Name presently resolves an inactive webpage and prior to the commencement of the proceeding resolved to a webpage indicating that the Domain Name was for sale. Further, the Domain Name has been offered to sale to Complainant for a sum greater than any out-of-pocket costs.
Respondent registered and uses the <nascarnft.com> domain name in bad faith. Respondent offers the Domain Name for sale for a sum in excess of its out-of-pocket costs. In addition, the Domain Name resolves to an inactive webpage. Finally, Respondent had actual knowledge of Complainant’s rights in the NASCAR mark prior to registering the Domain Name.
B. Respondent
The Response consists of contact details, two administrative queries sent to Forum, and the statement “First, I have this domain name but never used this domain name, there is no website.”
Complainant holds trademark rights for the NASCAR mark. The Domain Name is confusingly similar to Complainant’s NASCAR mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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.
Complainant asserts rights in the NASCAR mark through its registration of the mark with the USPTO (e.g., Reg. No. 990,987 registered August 13, 1974). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <nascarnft.com> domain name is confusingly similar to Complainant’s NASCAR mark as it incorporates the mark in its entirety and simply adds the generic abbreviation “nft” along with the “.com” gTLD. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding generic term and a gTLD is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case and that Respondent has failed to satisfy its burden to show it has rights or legitimate interests.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the NASCAR mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “fabian tira” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name presently resolves to an inactive page which by itself does not show a bona fide offering of goods and services. Complainant provides evidence that the Domain Name had been listed as potentially available for sale and following further investigation by Complainant, was offered for sale to Complainant for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Response contains no explanation why Respondent chose a Domain Name corresponding with Complainant’s NASCAR mark and does not address Complainant’s evidence that the Domain Name has been listed for sale. Given the matters above the Panel is not satisfied that the Respondent has rights or legitimate interests in the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, which was February 20, 2021, Respondent had actual knowledge of Complainant’s NASCAR mark. Complainant has used the NASCAR mark for over 40 years and has developed a significant reputation in the mark. Furthermore Respondent has not provided a plausible explanation why they registered a domain name that consists of the NASCAR mark and the abbreviation “nft” (and offered it for sale) other than to take advantage of Complainant’s reputation in the NASCAR mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without a plausible and supported explanation (or other active use), registered a domain name that is confusingly similar to the NASCAR mark and offered it for sale. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)); see also Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). In the present case, given the nature of the Domain Name, the manner in which it has been used (not at all), and the lack of a clear and supported alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nascarnft.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 12, 2022
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