Autosales Incorporated, dba Summit Racing Equipment v. Texas International Property Associates NA NA
Case No. D2008-0121
1. The Parties
Complainant is Autosales Incorporated, dba Summit Racing Equipment, Akron, Ohio, of United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.
Respondent is Texas International Property Associates NA NA, Dallas, Texas of United States of America, represented by Law Offices of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <summitracingtv.com>, is registered with Compana, LLC, dba BudgetNames.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2008. On January 29, 2008, the Center transmitted by email to Compana, LLC a request for registrar verification in connection with the domain name at issue. Compana, LLC transmitted by email an untimely response,1 on February 28, 2008, confirming that the Respondent 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2008. The Response was filed with the Center on March 9, 2008.
The Center appointed Seth M. Reiss as the sole panelist in this matter on March 18, 2008. The Panel finds that it was properly constituted. 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
Complainant is in the business of selling high performance aftermarket motor vehicle accessories and racing parts and, in conjunction therewith, arranges motor sports events. Complaint holds numerous United States of America federal registrations for the marks SUMMIT and SUMMIT RACING, as well as other marks that include and emphasize these words, dating from 1968. Complainant also holds trademark registrations for the mark SUMMIT in Canada, Mexico, the European Community, Australia, Venezuela, Brazil, and South Africa. Complainant has used the URL “www.summitracing.com” in conjunction with its high performance aftermarket automobile accessory business since December 1995.
Respondent registered the domain name <summitracingtv.com> on November 8, 2005. The disputed domain name is used to point to a webpage that includes links to a wide variety of goods and services. Most of the goods and services listed on the pointed to webpage are unrelated to Complainant’s business. One link, however, advertises “Summit Racing Parts” and promises “Low Prices and Multiple Offers [on] summit racing parts.”2
Texas International Property Associates NA NA, the Respondent herein, appears to have been a named respondent in thirty-six WIPO UDRP decisions in 2007.
5. Parties’ Contentions
A. Complainant
Complaint contends that the disputed domain <summitracingtv.com> is confusingly similar to Complainant’s numerous trademarks and its <summitracing.com> domain name. Complainant argues that adding the “tv” to “summitracing” constitutes a misspelling or “near-spelling variant” of its SUMMIT RACING mark. Complainant references UDRP cases which have found misspellings of well known marks to be identical or confusingly similar to the marks when the misspellings do not serve to distinguish or significantly change the overall impression of the mark.
Complainant next alleges that it is unaware that Respondent is commonly known by the <summitracingtv.com> domain name, that Respondent is attempting to palm off of the goodwill that Complainant has built in the name “Summit Racing”, and that fair use is inapplicable in cases where the disputed domain is a misspellings of another’s mark.
In regards to the final element of the Policy, Complainant claims Respondent is using the disputed domain in bad faith as evidenced by the domain name being set to point to a “link farm” that links to businesses offering competing automobile racing parts from which Complainant presumes that Respondent earns click through revenues, and by Respondent having been a named respondent in no less than thirty–six WIPO UDRP decisions in 2007, many involving conduct similar to the conduct alleged against Respondent in this case.
By way of remedy, Complainant requests that the disputed domain name be transferred.
B. Respondent
In its Response, Respondent agrees to the relief requested by the Complainant while stating that its “unilateral consent to transfer [. . ]. is not an admission to the three elements of 4(a) of the Policy.” Respondent requests that the Panel order the immediate transfer of the disputed domain name to Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs that: “A Panel shall 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 directs that the complainant has the burden with respect to each of the following:
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; and,
2) the 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.
Here, Respondent has agreed to the relief requested without admitting to the elements of the Policy. Guidance as to how a panel may proceed under such circumstances can be found in The Cartoon Network LP, LLLP v. Mike Morgan,
WIPO Case No. D2005-1132.
A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,
WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group,
WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,
WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware,
WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen,
WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co,
WIPO Case No. D2003-0745).
Respondent likewise consented to the transfer of disputed domains in the context of a number of the UDRP cases filed against Respondent reported in 2007. Panels in those cases concluded that the disputed domains names at issue should be transferred, but did so following different analytic routes. In Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211, the panel declined Respondent’s offer of consent to transfer and engaged in a traditional paragraph 4(a) analysis to reach a transfer result, while characterizing Respondent’s offer as a disingenuous method by which to delay the ultimate transfer in order to continue earning pay per click revenues meanwhile. In Fry’s Electronics Inc. v. Texas International Property Associates,WIPO Case No. D2007-0343, the panel ordered transfer based upon Respondent’s consent, while considering whether complainant had made out a prima facie case, that Respondent was represented by legal counsel, and whether there was anything in the record casting doubt on the genuineness of the Respondent’s consent. In Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates,
WIPO Case No. D2007-1404, the panel cited and following Levantur, S.A. v. Rarenames, WebReg,
WIPO Case No. D2007-0857, to conclude that a genuine unilateral consent to transfer by Respondent provided a basis for an immediate order for transfer without consideration of the elements of paragraph 4(a) of the Policy. And in Genzyme Corporation v. Texas International Property Associates, NAF Claim No. FA0702000921807, the panel ordered the transfer based upon Respondent’s consent, without making “any findings of fact or compliance or otherwise”.3
This Panel is satisfied that Complainant has made out a prima facie case as to each of the three elements set forth in paragraph 4(a) of the Policy, and that Respondent’s consent is informed as well as genuine. Accordingly, an order for transfer of the disputed domain name, without further dissection of the paragraph 4(a) elements, is appropriate.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <summitracingtv.com> be transferred to the Complainant.
Seth M. Reiss Sole Panelist
Dated: March 31, 2008
1 Compana, LLC’s failure to timely reply to the Center’s request for registrar verification caused the Center to email Compana, LLC regular reminders while placing ICANN staff on notice of the situation.
2 The “Summit Racing Parts” link appears live on the exhibit that Complainant annexed to its Complaint, and although Complainant alleges that Respondent’s website “provides visitors, with links to other websites that sell the same type of aftermarket auto parts offered by Complainant’s website”, Complainant does not show the pages to which “Summit Racing Parts” link links. The “Summit Racing Parts” link was no longer functional at the time this Panel was appointed and visited Respondent’s website.
3 The panel in Genzyme Corporation v. Texas International Property Associates, NAF Claim No. FA0702000921807, followed the reasoning set forth by the NAF panel in The Body Shop Int’l plc v. Agri, Lacus, andCaelum LLC, NAF Claim No. FA0604000679564:
Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.
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