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and Mediation Center
C & W Motors, Inc. dba Arizona Motorsports, Tucson Motorsports,
Inc. v. Carlos Alvarez
Case No. D2005-0270
1. The Parties
The Complainant is C & W Motors, Inc. dba Arizona Motorsports, Tucson Motorsports, Inc., Phoenix, Arizona, United States of America; represented by Jennings, Haug & Cunningham, LLP, United States of America.
The Respondent is Carlos Alvarez, Tucson, Arizona, United States of America.
2. The Domain Names and Registrar
The disputed domain names <arizonamotorsports.com> and <tucsonmotorsports.com>
are registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2005. On March 16, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On March 17, 2005, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <arizonamotorsports.com> and providing the contact details for the administrative, billing, and technical contact. On March 21, 2005, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for <tucsonmotorsports.com> and providing the contact details for the administrative, billing, and technical contact. 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 on March 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2005. The Response was filed with the Center on April 11, 2005.
The Center appointed Sandra Franklin as the sole panelist
in this matter on April 21, 2005. 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. The Center received a Supplemental filing from the Complainant
on April 29, 2005, which was forwarded to the Panel on May 2, 2005. The Panel
declined to consider the Supplemental filing.
4. Factual Background
Complainant purchased the rights to the trade name
ARIZONA MOTORSPORTS on December 8, 1998. Prior to that time, the trade name
ARIZONA MOTORSPORTS had been used since June 1, 1984. Complainant has a trademark
registration for TUCSON MOTORSPORTS with the State of Arizona dated May 13,
1994. Both marks are used commercially.
5. Parties’ Contentions
The Complainant makes the following assertions:
1. Respondent’s <arizonamotorsports.com> and <tucsonmotorsports.com> domain names are confusingly similar to Complainant’s ARIZONA MOTORSPORTS and TUCSON MOTORSPORTS marks.
2. Respondent does not have any rights or legitimate interests in the <arizonamotorsports.com> and <tucsonmotorsports.com> domain names.
3. Respondent registered and used the <arizonamotorsports.com> and <tucsonmotorsports.com>
domain names in bad faith.
The Respondent states that he has a legitimate right
to use the domain names <arizonamotorsports.com> and <tucsonmotorsports.com>
because he is using them to post criticism of Complainant and he is not using
them for commercial gain.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in ARIZONA MOTORSPORTS
and TUCSON MOTORSPORTS through trademark registration and commercial use. The
Panel finds that the domain names <arizonamotorsports.com> and <tucsonmotorsports.com>
are virtually identical to Complainant’s trademarks ARIZONA MOTORSPORTS
and TUCSON MOTORSPORTS, but for the addition of “.com”. Many previous
cases have held that the addition of “.com” in no way distinguishes
a domain name which otherwise wholly incorporates another’s trademark.
See Pomellato S.p.A v. Richard Tonetti, WIPO
Case No. D2000-0493 finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the
name “Pomellato” is not relevant; see also Sony Kabushiki Kaisha
v. Inja, Kil, WIPO Case No. D2000-1409
finding that “[n]either the addition of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant
part of the name in each case, namely the trademark SONY” and thus Policy
paragraph 4(a)(i) was satisfied.
The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel notes that there is a split in opinion as to whether or not posting criticism of a trademark owner is a fair and legitimate use of a domain name which incorporates the trademark. This Panel agrees with the line of cases which denies that a domain name holder can establish legitimate use of a domain name which is virtually identical to a trademark by posting criticism of the trademark holder. It is true that Respondent has every right to criticize Complainant, to post criticism on the Internet, and to refer to the Complainant by name, which necessarily involves using Complainant’s trademarks in discussion. However, it does not follow that Respondent may hi-jack Complainant’s exact trade name and surreptitiously redirect Internet surfers, primarily seeking Complainant for normal commercial purposes, and subject them to commentary they were not looking for. Respondent will not be deprived of his right to speak out against Complainant by being denied the right to use the domain names <arizonamotorsports.com> and <tucsonmotorsports.com>; he can post commentary under another name, which will allow Complainant the use of its own trade names in Internet commerce and will not mislead Internet users.
Respondent argues that it is obvious that the site is not sponsored by Complainant
and therefore cannot confuse Internet users. However, this Panel agrees with
previous Panels that it is too late at that point; the user has already been
“tricked”. See Triodos Bank NV v. Ashley Dobbs, WIPO
Case No. D2002-0776, where the Panel found that, though Respondent may have
a genuine grievance, he is not entitled to represent that he is the Complainant.
See also Myer Stores Limited v. Mr. David John Singh, WIPO
Case No. D2001-0763, which states: “The disclaimers come too late.
Although disclaimers at the “www.myeronline.com” website are located
both at the start and end of the page, they are not effective in displacing
assumptions likely to be made by Internet users. Internet users accessing the
“www.myeronline.com” website would have every reason to believe
that, until they actually arrived there, they were on their way to visiting
a website sponsored or authorized by the Complainant.” See also E &
J Gallo Winery v. Hanna Law Firm, WIPO
Case No. D2000-0615.
The Panel finds that Complainant satisfied Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Respondent admits that he registered and is using the domain name to criticize
Complainant. Respondent also provides links to websites of Complainant’s
competitors. See Mission KwaSizabantu v. Benjamin Rost, WIPO
Case No. D2000-0279 finding bad faith and defining “competitor”
as “one who acts in opposition to another and the context does not imply
or demand any restricted meaning such as commercial or business competitor”;
see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation
from Complainant’s marks suggests that Respondent, Complainant’s
competitor, registered the names primarily for the purpose of disrupting Complainant’s
business. Though the Respondent here is not in direct competition with Complainant,
he is clearly steering visitors to the website to Complainant’s competition.
Furthermore, while each of the four circumstances listed under Policy paragraph 4(b), if proven, evidences bad faith use and registration of the domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”.
There can be no doubt that Respondent intends to cause
harm to Complainant’s business, a certain indication of bad faith. The
Panel again notes the decision in Triodos Bank NV v. Ashley Dobbs, WIPO
Case No. D2002-0776, which states: “In short, what the Respondent
has done is to select for the Domain Name a name which is not its own, which
it knew at the time of registration to be the name and trade mark of the Complainant
and which it proposed at the time of registration to use in a campaign against
the Complainant to cause the Complainant disruption and damage. The Domain Name
would be particularly useful for that purpose because it would catch by surprise
visitors intending to reach the Complainant’s website”. This Panel
agrees that such intentional misappropriation of a trademark is a clear demonstration
of bad faith”.
The Panel finds that Complainant satisfied Policy
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 names <arizonamotorsports.com> and <tucsonmotorsports.com> be transferred to the Complainant.
Dated: May 2, 2005