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Brickyard Trademarks, Inc. andIndianapolis Motor Speedway, LLC v. robdaddy.com a/k/a Robert Thomas [2003] GENDND 601 (11 June 2003)


National Arbitration Forum

DECISION

Brickyard Trademarks, Inc. and Indianapolis Motor Speedway, LLC v. robdaddy.com a/k/a Robert Thomas

Claim Number: FA0304000155132

PARTIES

Complainant is Brickyard Trademarks, Inc., Henderson, NV and Indianapolis Motor Speedway, LLC, Indianapolis, IN (“Complainant”) represented by Rachel L. St. Peter of Ice Miller. Respondent is Robert Thomas a/k/a robdaddy.com, Evansville, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <indianapolismotorspeedway.com> registered with Go Daddy Software, Inc.

PANEL

The undersigned, Daniel B. Banks, Jr., 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2003; the Forum received a hard copy of the Complaint on April 21, 2003.

On May 1, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <indianapolismotorspeedway.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 May 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2003 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@indianapolismotorspeedway.com by e-mail.

A timely Response was received and determined to be complete on May 22, 2003.

On June 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

Complainant BRICKYARD TRADEMARKS, INC. (BTI) is an affiliate of the  INDIANAPOLIS MOTOR SPEEDWAY, LLC (IMS), and is the owner and licensing body for the nationally and internationally renowned INDIANAPOLIS MOTOR SPEEDWAY (IMS) marks, which are registered with the U.S Patent & Trademark Office.  Those marks are among the most recognized, valued and famous marks in the entire automobile racing industry.  The IMS marks have been used by Complainant and its' predecessors since 1909.   Complainant is a licensee of the marks and actively uses the marks in the United States and throughout the world.  In addition, Complainant sublicenses the marks to third parties.

The Indianapolis Motor Speedway track was built in 1909 and is listed on the National Register of Historic Places.  Since 1911, Complainants and its predecessors have held an annual 500 mile automobile race.  This race is known as the INDIANAPOLIS 500 Mile Race and has become recognized as the INDY 500 Race to race fans throughout the world. 

The Indianapolis Motor Speedway holds other well known races such as the BRICKYARD 400 Mile Race and the U.S. Grand Prix Race and is commonly referred to as the "World's Greatest Race Track."  In addition to the trademark registrations, Complainants own substantial common law rights to this famous mark.  They are synonymous with the highest quality automobile racing experience.  IMS marks are famous to those who do not follow automobile racing and were famous long before Respondent registered the subject domain name. 

The subject domain name <indianapolismotorspeedway.com> is identical to the famous Indianapolis Motor Speedway Race Track mark except for the addition of the domain name designation, ".com". 

The Respondent should be considered as having no rights or legitimate interests in respect of the subject domain name for the following reasons:

First, before any notice to the Respondent of the dispute regarding the domain name and continuing to date, the Respondent has not used or made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.  The name was registered on December 1, 2001.  As of July 2, 2002, Respondent was offering the subject name for sale to any party.  On that date, Complainants sent a cease and desist letter to Respondent via electronic mail and certified mail.  Respondent received the electronic mail but refused delivery of the certified mail and has never responded in writing to Complainants' cease and desist letter.  Attempts to contact Respondent by telephone were to no avail.  It appears that the telephone number listed by Respondent is incorrect.  Sometime after the cease and desist letters, Respondent ceased offering the domain name for sale and has modified the home page for this domain name to state "Coming Soon." 

Second, the Respondent is not commonly known by the subject domain name and, to Complainants' knowledge and belief, has no intellectual property rights in the name.  Respondent is not using the IMS marks with the permission of Complainants and is in no way affiliated with Complainants.

Third, Respondent registered a domain name that would misleadingly divert customers to its website in order to sell the domain name to a third party for commercial gain.  Since Respondent resides in Indiana, it seems inconceivable that Respondent did not have actual knowledge of Complainants' rights in the mark. 

The subject domain name was registered and is being used in bad faith.  Respondent registered the name in order to capitalize financially on the fame and goodwill associated with the IMS marks and has used the domain in bad faith by offering to sell the domain name for a profit.   In addition, Respondent intentionally registered a domain that creates a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of the domain name in order to transfer the domain name to a third party for a profit.  Respondent's registrations of the IMS domain name causes Internet users to believe that the domain name is owned or somehow affiliated or endorsed by Complainants. 

 

B. Respondent

He purchased the domain name <indianapolismotorspeedway.com> as a valuable and treasured keepsake of the Indianapolis 500.  He ran across the name by chance.  If the Indianapolis 500 wanted to own the name, they would have purchased it and set up a website years ago.  He owns at least 50 other domain names.  Some were purchased for resale after he intended to set up websites.  He is trying to learn how to set up websites on his own but has not gotten any set up at this time.  The for sale sign was put on the subject domain name website when it was purchased.  He planned to set up websites and offer them for sale on eBay or run them himself.  He still has not figured out how to download or what to do to get the sites up and running.

He received several emails concerning the subject domain name site.  Some wanted to buy the site and others were requesting information about the Indianapolis 500 Race or how to purchase tickets for the Brickyard 400.  He responded to the ones wanting information by telling them what he knew or suggested to them how they might be able to find out what they wanted to know. 

FINDINGS

1 - The domain name is identical to a trademark in which the Complainants have rights.

2 - The Respondent has no rights or legitimate interests in respect of the domain name.

3 - The domain name was registered and is being used in bad faith.

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) (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;

(1) (2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(2) (3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The subject domain name is identical to Complainants' registered trademark.  Complainant provides evidence of several trademark registrations with the United States Patent and Trademark Office (USPTO) for the INDIANAPOLIS MOTOR SPEEDWAY mark (Reg. No. 815,638 registered on September 20, 1966) related to an annual automobile race.  Complainant has established its rights in the mark through registration with the USPTO. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Complainant argues that Respondent’s <indianapolismotorspeedway.com> domain name is identical to Complainant’s mark because the disputed domain name incorporates Complainant’s entire mark and simply omits the spaces between the words and adds the generic top-level domain (gTLD) “.com” to the end of the mark. The undersigned finds that neither the omission of the spaces between the words nor the addition of a gTLD sufficiently differentiate the disputed domain name from the mark with regard to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.

7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

            Rights or Legitimate Interests

Respondent has no rights to or legitimate interests in the <indianapolismotorspeedway.com> domain name because Respondent had not used the domain name except to offer it for sale. This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Respondent is not commonly known by either INDIANAPOLIS MOTOR SPEEDWAY or <indianapolismotorspeedway.com>. The  Respondent has no rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith

Complainant has produced evidence that the website <indianapolismotorspeedway.com> domain name resolved to indicate the domain name was for sale. The undersigned concludes that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Moreover, due to the international fame of Complainant’s mark and the proximity to the Indianapolis 500 of Respondent’s address in Indiana, Respondent had actual or constructive knowledge of Complainant’s rights in its mark.   Indeed, Respondent indicates in his response that he knew of the Indianapolis Motor Speedway, the Indianapolis 500 race and its fame.  The undersigned finds that Respondent registered and used the <indianapolismotorspeedway.com> domain name despite having notice of Complainant’s rights, which evidences registration and use in bad faith with regard to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

DECISION

Having established all three elements required under ICANN Policy, the undersigned concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <indianapolismotorspeedway.com> domain name be TRANSFERRED from Respondent to Complainant.

Daniel B. Banks, Jr., Panelist
Dated: June 11, 2003


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