DECISION

SFX Motor Sports, Inc. d/b/a Clear Channel Entertainment-Motor Sports v. Fusion Systems of Utah

Claim Number:  FA0403000245968

PARTIES

Complainant is SFX Motor Sports, Inc. d/b/a Clear Channel Entertainment-Motor Sports (“Complainant”), represented by Robert M. Wasnofski Jr., of Baker Botts L.L.P., 30 Rockefeller Plaza, 44th Floor, New York, NY 10112-4498.  Respondent is Fusion Systems of Utah (“Respondent”), 5757 S. State St., Murray, UT 84107.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monsterjam.net>, registered with Intercosmos Media Group.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 17, 2004; the Forum received a hard copy of the Complaint on March 18, 2004.

On March 18, 2004, Intercosmos Media Group confirmed by e-mail to the Forum that the domain name <monsterjam.net> is registered with Intercosmos Media Group and that Respondent is the current registrant of the name. Intercosmos Media Group has verified that Respondent is bound by the Intercosmos Media Group 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 March 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2004 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@monsterjam.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On April 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,  as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <monsterjam.net> domain name is identical to Complainant’s MONSTER JAM mark.

2. Respondent does not have any rights or legitimate interests in the <monsterjam.net> domain name.

3. Respondent registered and used the <monsterjam.net> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a leading provider of specialized motor sporting events, providing more than 500 performances and more than 250 hours of television programming events over each of the last 28 years.  Complainant’s most popular motor sporting events are “monster truck” events.  Complainant has produced more than 120 monster truck events annually in the U.S. and Canada for each of the past 10 years, most of which are part of its MONSTER JAM series of events.  During the 2003 season, more than 3 million people attended Complainant’s monster truck events.

Complainant has used the MONSTER JAM mark since September 24, 1992 in connection with outdoor motor sporting events.  These events include car, truck, and motorcycle racing in addition to various other entertainment services.  GRAVE DIGGER is the name and mark associated with one of Complainant’s famous monster trucks, which Complainant claims it owns. 

Complainant filed a registration application with the United States Patent and Trademark Office (“USPTO”) for the MONSTER JAM mark on February 11, 1997.  Registration was granted on November 25, 1997 (Reg. No. 2,116,431).

Complainant uses and/or licenses its MONSTER JAM mark in connection with a wide range of goods, including toy die cast vehicles, prerecorded home video tapes, clothing, video games and more.  MONSTER JAM merchandise is marketed and sold around the world.  Particularly, MONSTER JAM toy vehicles are distributed by Mattel, Inc., a leading toy manufacturer to major retailers throughout the world.  Complainant has sold MONSTER JAM merchandise direct from its websites and at live events with sales in excess of $15 million in 2003.

Respondent registered the disputed domain name <monsterjam.net> on May 14, 2003.  Respondent has used the domain name to host an online website that sells Complainant’s MONSTER JAM related products as well as others.  At its website, Respondent has prominently displayed the image of Complainant’s famous monster truck, GRAVE DIGGER. 

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."

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.

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.

Identical and/or Confusingly Similar

The registration of a mark with a governing authority is sufficient to establish rights in a mark under the Policy.  Complainant registered the MONSTER JAM mark with the USPTO.  Thus, Complainant has established rights in the MONSTER JAM mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The disputed domain name <monsterjam.net> contains Complainant’s MONSTER JAM mark in its entirety.  The difference between the domain name and Complainant’s mark is the addition of the generic top-level domain “.net,” which is irrelevant under the Policy.  Therefore, the disputed domain name is identical to Complainant’s MONSTER JAM mark. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Therefore, the Panel presumes that Respondent lacks rights to and legitimate interests in the disputed domain name <monsterjam.net>. See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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 assertion in this regard.”).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent has incorporated Complainant’s MONSTER JAM mark to sell Complainant’s merchandise without license from Complainant. See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors); see also Ziegenfelder Co. v. VMH Enters., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).   

Furthermore, there is nothing in the record to indicate Respondent is commonly known by the disputed domain name, and the record suggests that no such circumstance could exist without license from Complainant. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent lacks rights and legitimate interests in the disputed domain name <monsterjam.net>. Therefore, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is functioning as a competitor of Complainant by selling unlicensed merchandise associated with Complainant’s MONSTER JAM mark. Such unauthorized offering of goods is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii) by registering the name primarily to disrupt Complainant’s business, which is in competition with Respondent’s unauthorized sales. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

Furthermore, it is also evident that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MONSTER JAM mark.  Such use is evidence of bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).

Respondent has registered and used the disputed domain name <monsterjam.net> in bad faith.  Therefore, Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 30, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/405.html