nascartours.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.

Case No. D2007-1524

1. The Parties

The Complainant is National Association for Stock Car Auto Racing, Inc. of Daytona Beach, Florida, United States of America, represented by Enns & Archer LLP, United States of America.

The Respondent is Racing Connection / The Racin' Connection, Inc. of Cornelius, North Carolina, United States of America, represented by Moore & Van Allen, PLLC, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <nascartours.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2007. On October 18, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On October 18, 2007, the Registrar transmitted by email to the Center its verification response confirming that “Racing Connection” is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 24, 2007. The Respondent requested an extension of time to file the Response, which was granted with the Complainant’s consent on November 12, 2007. In accordance with the Center’s order, the due date for the Response was December 13, 2007. The Response was filed with the Center on December 12, 2007.

The Center appointed W. Scott Blackmer, David H. Bernstein and William R. Towns as panelists in this matter on January 14, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, commonly known by its acronym NASCAR, is a family-owned Florida corporation that has acted since 1948 as the principal governing body for stock car and stock truck racing events in North America. NASCAR “sanctions” more than 1,300 races annually on roughly 100 tracks in 37 states of the United States of America, as well as on racetracks in Canada and Mexico.

NASCAR-sanctioned motorsports events have become a highly popular form of entertainment. In 2006, 36 NASCAR “points events” culminating in championships attracted 4.5 million attendees. The NASCAR NEXTEL Cup Series racing events are nationally televised in the United States of America, where they represent the second most watched sporting events of any kind on both broadcast and cable television. These events are also broadcast in more than 150 other countries. The premier annual racing event in that series, the DAYTONA 500 stock car race, has been televised nationally since 1978; the 2007 race attracted more than 30 million television viewers and was broadcast on 495 radio stations as well. NASCAR events are also covered by national and local print media, and by motorsports magazines and newsletters. The Complainant asserts that roughly one-third of the adults in the United States of America characterize themselves as NASCAR racing fans, distributed throughout all regions of the country.

The Complainant has operated a website at “www.nascar.com” since December 1999. The website publishes information and schedules about racing events, racetracks, and drivers and includes an online store selling an array of NASCAR-branded merchandise. Videos of some racing events are also broadcast on the website. The Complainant’s website logs roughly 100 million page views monthly, with nearly four million unique visitors.

Although the Complaint states that consumers can also purchase event tickets and travel packages “from the NASCAR.com website”, a perusal of the website indicates that such requests are actually redirected to a separate website at “www.racetickets.com” operated by “RacingOne.com”. The Complaint does not explain the relationship between the Complainant and RacingOne.com. The WHOIS database identifies the registrant of the domain name <www.racetickets.com> as International Speedway Corporation. According to its website at “www.iscmotorsports.com”, International Speedway Corporation (“ISC”) is a corporation located at the same Florida address as NASCAR’s headquarters. ISC owns 13 racetracks used in NASCAR events and promotes events at those tracks. The record does not further elaborate the relationship between NASCAR and ISC.

The Complainant holds more than 60 registered United States trademarks featuring the acronym NASCAR, often in combination with other words and design elements. For purposes of this proceeding, the Panel refers to the following marks in particular:

The Complainant reports that it licenses its marks to more than 200 licensees, some on an exclusive basis, and that sales of licensed products branded with a NASCAR mark totaled US$80 million in 1990, US$600 million in 1995, and US$2 billion in 2006.

According to the Response, the Respondent The Racin’ Connection, Inc. registered the Domain Name on May 8, 1996 in the name of “Racing Connection”. There is no evidence in the record indicating that the latter is a legal entity. It appears instead to be an alias for The Racin’ Connection, Inc., to which the Panel refers henceforth as the “Respondent” in this proceeding.

The Response and attachments to the Affidavit of Ms. Suer, president of The Racin’ Connection, Inc., indicate that the Respondent was organized as a North Carolina business corporation in February 1993, succeeding the business formerly operated by Ms. Suer under a different trade name since February 1992. According to the online corporations database published by the North Carolina Secretary of State, the state has suspended the articles of incorporation for The Racin’ Connection, Inc. It appears that the business continues to operate, however, using the website associated with the Domain Name.

The Response states that the Respondent and (before 1993) its predecessor have organized tours of NASCAR events since February 1992. The website associated with the Domain Name is headed “The Racing Connection”, with the tagline “NASCAR® RACING’S BEST TOUR COMPANY!”. The website advertises packages for both individuals and groups including travel arrangements, event tickets, hotel accommodations, catering, a “VIP Hospitality tent”, and related services for 20 or more NASCAR racing events annually.

A disclaimer appears in the middle of the home page of the Respondent’s website:

“The Racin’ Connection, INC and our website “www.nascartours.com” is in no way affiliated with or owned by NASCAR. As an independent tour operator for 16 years, we buy our race tickets and hospitality facilities in advance – either directly or indirectly through ISC and SMC corps. We independently work with hotels, transportation companies, drivers, catering companies etc – and do our best to offer the fans a great package at a great price. As you can see from our feedback section, the fans have really loved what we do for a long time. It is not our intention to mislead any fan to believe that this tour company is in any way owned or operated by NASCAR.”

According to the Response, ISC, named in the disclaimer as one of the Respondent’s sources of race tickets and hospitality services, refers to International Speedway Corporation. As mentioned above, ISC is the registrant of the domain name <racetickets.com>, to which visitors to the Complainant’s website are redirected if they seek to purchase race tickets or travel packages. Another source of the Respondent’s race tickets, “SMC”, is not identified in the record. The Response also attaches copies of agreements with Daytona International Speedway, LLC (at the same address as the Complainant) under which the Respondent resells tickets and other services in connection with certain NASCAR racing events. Thus, it appears that the Respondent has resale arrangements with companies that host relevant NASCAR events and that are sanctioned by the Complainant (and possibly affiliated with the Complainant).

The Respondent reports that over the past 17 years it has provided tours for over 30,000 customers to more than 275 NASCAR events. The Respondent states that it has expended more than $1 million in advertising its tour services, primarily in motorsports newsletters and magazines and on banners and give-away merchandise at racetracks. Many of the advertisements feature the Domain Name.

The Complainant sent a cease-and-desist letter to the Respondent on January 24, 2007. The parties communicated inconclusively thereafter until this proceeding commenced.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its NASCAR marks, which the Respondent is using without permission. The Complainant contends that the Respondent had actual and constructive notice of the marks when it registered the Domain Name. The Complainant concedes that the Respondent could make fair use of the marks on its website to inform consumers that the Respondent organizes tours of NASCAR-sanctioned racing events, but the Complainant denies that the Respondent can legitimately use the NASCAR mark in the Domain Name itself to “entice customers to its website” and “misleadingly divert consumers for its own commercial gain.”

B. Respondent

The Respondent argues that the Domain Name is not confusingly similar to the Complainant’s NASCAR marks and asserts, alternatively, that the Domain Name represents a fair use of the marks. The Respondent contends that it has legitimately used the Domain Name since 1996, descriptively and accurately, in connection with its bona fide offering of goods and services as a “race package reseller”. The Respondent asserts that it registered and used the Domain Name only to sell tours to NASCAR events and prominently disclaims any affiliation with the Complainant.

The Respondent further contends that the Complaint should be dismissed on the ground of laches, since the Respondent has openly used the Domain Name for more than eleven years and expended substantial sums to promote the website associated with the Domain Name.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Laches

The Respondent points out that it used and advertised the Domain Name for more than a decade before the Complainant complained of such use. The Respondent argues that the “Complainant’s failure to timely object to use of the <nascartours.com> domain name raises the issue of laches.”

The parties are both located in the United States, where courts recognize the doctrine of laches (undue delay in asserting a legal claim, resulting in prejudice to the respondent). However, the Panel concludes that the equitable defense of laches does not properly apply in this Policy proceeding. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes). See also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §31:10 (4^th ed. 2005), and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this is not apposite to injunctive relief in a trademark action that seeks to avoid confusion among customers in the future).

Therefore, the Panel declines to reject the Complaint on the ground that the Complainant inexcusably failed to seek transfer of the Domain Name more promptly.

B. Identical or Confusingly Similar

The Complainant indisputably owns the registered NASCAR mark. Because the Domain Name incorporates the registered NASCAR trademark, that alone is sufficient to support a finding that the Domain Name is confusingly similar to the Complainant’s trademark for purposes of the policy. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Moreover, the Panel notes, in the context of a website promoting tours to NASCAR events, the addition of the generic word “tours” does nothing to change the impression created by the Domain Name. The Complainant’s website itself links to a website offering tour packages for NASCAR racing events, and one of the Complainant’s more recently registered marks features the word “tours” in association with “NASCAR”.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s NASCAR marks for purposes of the first element of the Complaint.

C. Rights or Legitimate Interests

The Policy, paragraph 4(c), advises respondents as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; . . .”

The Respondent claims, without contradiction, that it has used the Domain Name since 1996 in connection with its pre-existing business of offering tour packages for NASCAR events. The Complainant argues that this should not be considered a use in connection with a “bona fide” offering of goods and services, because it is misleading and unnecessary for the Respondent to incorporate the NASCAR marks in the Domain Name itself.

Several panel decisions under the Policy address the question of whether a reseller of branded goods is making a bona fide offering that should be viewed as conferring a “legitimate interest” in a domain name, where the trademark holder has not authorized the reseller to use the mark in a domain name. These decisions were reviewed in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (respondent used the complainant’s VOLVO mark in the domain name <volvo-auto-body-parts-online.com>). The panel in that proceeding noted that some Policy decisions treat unauthorized use of a mark in a domain name as generally illegitimate. An example is Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292, which held that “[i]t is a well-known principle of trademark law that the manufacturer of ‘unoriginal’ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name.”

Other panels have more readily recognized a right to use a mark to describe a respondent’s business accurately, even in a domain name. An example is Daimler Chrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (with dissent), where the operator of a site marketing Mercedes automotive parts and accessories was deemed to have a legitimate interest in using the MERCEDES mark descriptively in its domain name (and with appropriate disclaimers in the text of the website).

This Panel agrees with the conclusion of the panel in Volvo Trademark Holding AB supra that the proper standard by which to evaluate reseller cases is the one articulated in 2001 in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, where the reseller’s domain name <okidataparts.com> incorporated the complainant manufacturer’s OKIDATA trademark. The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized

dealer in that case) should be regarded as a “bona fide offering of goods or services” within the meaning of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel considers the Oki Data criteria consistent with the letter and the spirit of the Policy. The Panel further notes that the views articulated in Oki Data are identified as the “majority view” for evaluating domain names of resellers and distributors in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 2.3 (available at http://www.wipo.int/amc/en/domains/search/overview/index.html#23), and the Panel is of the opinion that it is incumbent upon UDRP panels to seek to achieve consensus in the interpretation and application of the UDRP, when possible.¹

While the criteria set forth in Oki Data are generally relevant to evaluating the domain names of resellers, the facts of this case require the Panel to further consider whether those criteria are relevant specifically where the respondent may not be an authorized reseller or distributor of the Complainant itself. Some UDRP decisions view only authorized resellers as having a legitimate interest in using a trademark in a domain name. See, e.g., The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, cited by the Complainant. Other decisions have accepted the general relevance of the Oki Data criteria to resale or distribution arrangements, but nevertheless declined to apply them in certain circumstances – where, for example, the respondent was not an authorized reseller or distributor of the complainant’s products and the domain name was identical to the complainant’s mark. See, e.g., General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645.

The Panel has carefully considered these arguments but ultimately agrees with the opinion articulated in Volvo Trademark Holding AB supra that the Oki Data criteria are appropriate even in cases where the respondent is not an authorized dealer, so long as the Respondent operates a business genuinely revolving around the trademark owner’s goods or services. Such an approach is not only consistent with the Policy, but also is consistent with the nominative fair use principles that apply under the trademark law of the United States of America (which is relevant here given that both parties are residents of the United States of America). Moreover, it is not clear from the record that Respondent is not an authorized reseller. The Respondent operates under resale agreements with companies that are sanctioned by the Complainant and, since they share the same postal address, may be affiliated with the Complainant. At the very least, in these circumstances, it seems disingenuous for the Complainant to treat the Respondent as simply an opportunistic trademark infringer.

Applying the Oki Data criteria to the record in the current proceeding, the Panel finds that the Respondent is actually offering tours of NASCAR events, and only tours of NASCAR events, on the website associated with the Domain Name. While these packages include some services, such as hotel accommodations (and perhaps even race tickets), that are not offered directly by the Complainant itself, they all relate to attendance at NASCAR racing events and not, for example, other travel opportunities. The Respondent’s business is NASCAR tours, just as the Domain Name implies; this is not merely a “bait and switch” use of the Domain Name. The Respondent’s website accurately and prominently explains that the Respondent is a reseller and is not affiliated with the Complainant. Finally, the Respondent has not monopolized relevant domain names. The Complainant itself operates a website associated with the domain name most closely resembling its marks, “www.nascar.com”. Therefore, the Panel finds that the Respondent in this proceeding has satisfied the Oki Data standard.

The Panel concludes that the Respondent has a legitimate interest in using the Domain Name in connection with a bona fide offering of goods and services in which the Respondent was engaged for many years before notice of this dispute. Accordingly, the second element of the Complaint is not established.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant implicitly relies on this provision, arguing that the Respondent had actual and constructive knowledge of its marks and no authorization or legitimate interest in using them in the Domain Name.

The Respondent does not deny knowledge of the Complainant’s NASCAR marks (those that were registered by the time the Domain Name was created, which include NASCAR but not NASCAR STREET TOUR). The Respondent argues instead that it uses the NASCAR mark in the Domain Name only because its business is indeed selling tours to NASCAR events. As discussed above, the Panel agrees that this reflects a legitimate interest in the Domain Name. The Respondent or its predecessor have offered tour packages for NASCAR events since 1992. The Respondent’s website refers to the Respondent as “NASCAR® RACING’S BEST TOUR COMPANY!”, which appears to use “NASCAR” in a nominative fair use sense to refer to NASCAR-sanctioned racing events. The Respondent’s website also prominently disclaims any affiliation with the Complainant. Moreover, the Respondent’s website does not emulate the content or appearance of the Complainant’s website or its design marks. Thus, the Panel does not find in the record evidence supporting a finding or even an inference that the Respondent chose the Domain Name as part of a plan to mislead Internet users for commercial gain. It is true that the Respondent is attempting to attract consumers to its website for commercial gain, but the Panel does not agree that it is doing so by creating a likelihood of confusion; to the contrary, the Respondent has taken steps to avoid confusion. The Panel also notes that the Complainant has not submitted any evidence of actual or likely confusion, such as anecdotal or survey evidence.

Because the Respondent has a legitimate interest in the Domain Name and has not engaged in conduct that reveals a bad faith intention to create a likelihood of confusion with the Complainant’s marks, the Panel concludes that the Complainant has not established the third element of its Complaint.

7. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns
Panelist

Dated: January 28, 2008

¹ The Panel agrees with the reasoning of Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.,WIPO Case No. D2005-0061:

Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. As this Panel previously explained in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004): “Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP. See Koninklijke Philips Electronics N.V. v. Relson Ltd., WIPO Case No. DWS2002-0001 (June 14, 2002); Nikon, Inc. v. Technilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001), n.3. Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy paragaph 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result.”

See also, WIPO Decision Overview ¶ 4.1 (available at http://www.wipo.int/amc/en/domains/search/overview/index.html#41).