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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autosales, Incorporated v Summit Racing
Case No. D2007-0383
1. The Parties
The Complainant is Autosales, Incorporated, dba Summitt Racing Equipment of Akron, Ohio, United States of America.
The Respondent is Summit Racing of Yamato, Kanagawa, Japan.
2. The Domain Name and Registrar
The disputed domain name <summit-racing.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 13, 2007 and by hard copy on March 16, 2007. On March 16, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. This was responded to on March 16, 2007. The Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contacts. The Center has verified that the Complaint satisfies 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 23, 2007. Notification of the Complaint was given to the Respondent by email on March 23, 2007. On March 24, 2007, the Center received by email from Mr. Norihiko Yamaji of the Respondent a letter in which he stated that the domain name “was never intended to be used for any malicious purposes.”
Mr. Yamiji further requested that if the domain name is transferred that he would be “compensate[d] for the additional costs of acquiring a new domain.”
The Center responded acknowledging this letter by email confirming that it would be transmitted to the Panel when duly appointed and referencing the Response filing quidelines.
No formal response was received from the Respondent. Accordingly, notification of Respondent’s default was emailed to the Respondent on April 13, 2007. No response was received to the notification of the Respondent’s default.
On April 24, 2007, Mr. Clive Duncan Thorne was appointed as sole panelist.
The Panel finds that it has been properly constituted. It has submitted the required 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 appears to trade in motor parts. The Complaint does not set out details of the Complainant’s business. However, the Complainant Autosales Incorporated has traded using “Summit Racing Equipment” since January 1969. This is evidenced by a certificate of the State of Ohio trade name registration number RN62666 exhibited at Annex 16 to the Complaint.
At Annex 18 to the Complaint, is an extract from the Complainant’s website “www.summitracing.com” which refers to “Welcome to Summit Racing Equipment” and offering for sale various items of motor equipment.
The Complainant has a number of relevant trade mark registrations worldwide for the mark SUMMIT including in the United States of America, Austria, Australia, Benelux, Canada, Denmark, European Community, Finland, France, Germany, United Kingdom of Great Britian, Greece, Italy, Mexico, Norway, New Zealand, Portugal, South Africa, Sweden, Switzerland and Venezuela. There is a pending application in Brazil.
In particular, the Complainant relies upon United States trade mark registrations for variations of Summit and also Summit Racing Equipment including the following:
1. No. 1979695 for SUMMIT RACING EQUIPMENT in Class 42 registered on June 11, 1996. The Certificate of Registration shows first use in 1968.
2. No. 2528907 for SUMMIT RACING EQUIPMENT in classes 12, 25, 7 and 9. This was registered on January 15, 2002 but according to the Certificate of Registration exhibited at Annex 4 first used in 1985.
3. No. 2618328 for SUMMIT RACING registered in Class 35. The mark was registered on September 10, 2002 with first use in 1999.
4. No. 2713558 Class 35 registered on May 6, 2003 with first use in 1984 for the mark Summit Racing.
The only evidence of the Respondent’s activities are extracts from the Respondent’s website “www.summit-racing.com” incorporated in the Complaint which show an apparent offer for sale of motor parts which the Complainant asserts are the same type as those offered on the Complainant’s website referred to above. It should be noted that the extract from the website is headed “Summit Racing Amazing Power Creator!”. The website headings are in English.
The date of first registration of the disputed domain name was September 29, 1998.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that the Respondent’s domain name <summit-racing.com> is phonetically identical and confusingly similar to the Complainant’s trademarks and domain name <summitracing.com>. It submits that the Respondent has done nothing more than add a hyphen between “Summit” and “Racing” to create the domain name.
Rights or Legitimate Interest in the Domain Name.
The Complainant states that it is unaware of any evidence to establish that the Respondent is commonly known by the domain name in dispute. It submits that the Respondent is attempting to “palm” off the goodwill that the Complainant has built in the name “Summit Racing” in the field of auto parts.
The domain name was registered and is used in bad faith.
The Complainant relies upon:
1. The minor degree of variation from the Complainant’s mark as evidence that the Respondent registered the domain name primarily for the purpose of disrupting the Complainant’s business. In support of this submission it relies upon the extract from the Respondent’s website at Annex 18.
2. By using a domain name that is confusingly similar to the Complainant’s the Respondent is purposefully frustrating Internet users from visiting the Complainant’s website.
3. The Respondent is diverting customers from the Complainant’s website by deliberate attempts to generate confusion to disrupt the Complainant’s business.
No formal Response was received.
6. Discussion and Findings
A. Identical or confusingly similar
The Panel is satisfied from the evidence of the Complainant’s trademark rights contained in the Complaint that the Complainant has relevant trade mark rights in SUMMIT RACING and SUMMIT RACING EQUIPMENT that precede any use of the domain name by the Respondent. It is also satisfied that it trades using the website “www.summitracing.com” and has done since December 27, 1995.
The only difference between SUMMIT RACING and the Respondent’s domain name <summit-racing.com> is the insertion of a hyphen. The Panel therefore finds for the Complainant and accepts the Complainant’s argument that the Respondent’s domain name is confusingly similar to Complainant’s relevant registered trademarks.
B. Rights or Legitimate Interests
The extract from the Respondent’s website incorporated in the Complaint is headed “Summit Racing”. The Complainant surmises that this is an attempt to “palm off” of the goodwill the Complainant has built in the name “Summit Racing” in the field of auto parts.
The letter from Mr. Yamaji referred to above states that the domain name in dispute was never intended to be used for any malicious purposes and refers to his company’s website as being almost entirely in Japanese. In the circumstances, and specifically taking into account that there is no formal Response, the Panel is satisfied that the Complainant has made a prima facie case proving the Respondent lacks rights or legitimate interested in the domain name. On this basis that there is no evidence showing that the Respondent has any prior rights or legitimate interests in the domain name, the Panel finds for the Complainant on this element.
C. Registered and Used in Bad Faith
The evidence is limited. However, the following is established:-
1. The Parties are both trading on-line in similar motor parts.
2. The domain name in dispute is confusingly similar to the Complainant’s trade mark rights.
3. A user of the Respondent’s website is directed to a site that as in the case of the Complainant’s site offers after market auto parts for sale.
In the absence of a formal Response, the Panel is prepared to accept that the registration of the domain name that is confusingly similar to the Complainant’s trademarks and the domain name appears to be an attempt to divert customers from the Complainant’s website by generating confusion and so disrupting the Complainant’s business. On the evidence presented, this is sufficient to establish bad faith.
The Panel notes the Complainant’s further submission that the practice of “typo- squatting” by diverting Internet users who mis-spell the Complainant’s mark or domain name constitutes bad faith. However, in this case the Panel is not satisfied that there is sufficient evidence to show that the use of the hyphen is a deliberate act of “typo- squatting”.
Nevertheless, for the reasons set out above, the Panel finds for the Complainant in respect of this element.
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 <summit-racing.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: May 8, 2007