Autosales Incorporated, dba Summit Racing Equipment v. CostNet

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Autosales Incorporated, dba Summit Racing Equipment v. CostNet

Case No. D2004-0036

1. The Parties

The Complainant is Autosales Incorporated, dba Summit Racing Equipment, Akron, Ohio, United States of America. The Respondent is CostNet, San Jose, Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <sumitracing.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2004. On January 19, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the subject domain name. Register.com 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, 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 January 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2004.

The Center appointed Edward C. Chiasson Q.C. as the Sole Panelist in this matter on February 25, 2004. The panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was properly constituted.

On March 8, 2004, the Administrative Panel issued an Order providing to the Complainant an opportunity to supplement its submission. The Order subsequently was amended to delete a paragraph inserted by the Center concerning inferences, which the Administrative Panel did not consider to be appropriate in the circumstances of this case. The Complainant delivered a supplemental submission. The Respondent has not participated in the proceeding. The time to deliver a decision was extended to March 29, 2004.

4. Factual Background

This dispute concerns the domain name <sumitracing.com>

, registered by the Respondent on May 18, 1999.

The registrar with which the domain name is registered is:

Register.com

575 Eighth Ave.

11th Floor

New York, New York 10018

United States of America

5. Parties’ Contentions

A. Complainant

The following information derives from the Complaint and the Complainant’s supplemental submission.

Although the Complainant does not say so, an examination of documents filed with the Complaint and supplemental submission suggests that it is in the retail auto parts business. The documents also show that it carries on business under the name "Summit Racing Equipment," which is a registered trade name.

The relationship between the Complainant and Summit Racing Equipment began in January 1969, and has continued. Summit Racing Equipment is also variously known as "Summit Racing" and "Summit" to its customers. The Complainant owns the following United States trademarks:

Registration #1,979,695 (June 11, 1996), SUMMIT RACING EQUIPMENT, based on an actual use in commerce dating back to 1968, for the goods and services in International Class 042 described as "retail store and mail order services, featuring high performance, racing and after-market accessories for land vehicles such as automobiles, vans and small trucks."

Registration #2,528,907 (January 15, 2002), SUMMIT RACING EQUIPMENT, based on an actual use in commerce dating back to either May 1985 or May 1982, depending on the class, in International Classes 012 (high performance automotive equipment and accessories, namely, engines; engine blocks; heads; transmission coolers; belts; hoses; clutch cables; clutch pilots; shifter cables; flex plates; shock absorbers; springs; differentials; wheel disks; brake proportioning valves; fender wells; roll bar gussets; battery boxes; electrical wiring and shirts, sweatshirts, jackets, t-shirts, hats, caps and sweat pants); 007 (automotive engine components, namely camshafts, intake valves, exhaust valves, thrust plates, locking plates, valve lifters, button spacers, camshaft rollers, gaskets oil pumps, oil pans, breather tanks, oil filter kits, oil filter covers, timing gear drive systems, timing tape, timing sets, push rods, guide plates, rocker arms, valve spring balancers, harmonic balancers, pistons, piston rings, bearings, crankshafts, and connecting rods; carburetors and carburetor accessories, namely, carburetor spacers, adapters, spring kits, and linkage plates; intake manifolds; exhaust manifolds; fuel lines and plumbing therefore, namely, o-ring, hose ends, hose nipples, braided hoses, hose clamps, adapters and couplers, banjo fittings, brake assemblies and pressure fittings; fuel filters; air filters; fuel injectors; fuel pumps; overflow tanks an accessories therefore, namely overflow catches, intake bolts, and header bolt kits; water pumps; fans, oil coolers; radiators; exhaust components, namely, headers, collectors, clamps, mufflers, exhaust pipes, header wraps, and catalytic converters; fly wheels; filter kits comprised of filter housing, filter mounts, hoses and fittings; alternator cases; starters; starter harnesses; ignition wires; distributors; heat shield; rotors; and coil covers); and 009 (fuel pressure regulators, fuel cells, fuel cell mounts, thermostats; water necks; gauges for fuel pressure, oil pressure, water temperature, voltage and vacuum; electrical connectors, and switches for batteries).

Registration #1,741,692 (December 22, 1992), SUMMIT RACING EQUIPMENT SPEEDCARD, based on an actual use in commerce dating back to February 6, 1992, for the services in International Class 036 described as "credit card services."

Registration #2,547,445 (March 12, 2002), SUMMITRACING.COM, based on an actual use in commerce dating back to February 2000, for the services in International Class 036 described as "financial sponsorship of annual hot rod races."

Registration #2,618,328 (September 10, 2002), SUMMIT RACING and Design, based on an actual use in commerce dating back to March, 1999, for the services in International Class 035 described as "mail order catalog services in the field of automotive engine components."

Registration #2,713,558 (May 6, 2003), SUMMIT RACING and Design, based on an actual use in commerce dating back to April 1984, for the services in International Class 035 described as "retail store, mail order catalog and on-line retail store services all featuring a wide variety of consumer goods."

Registration #2,741,865 (July 29, 2003), SUMMIT RACING SPORT COMPACT NATIONALS, based on an actual use in commerce dating back to July 1999, for the services in International Class 035 described as "promoting motorsport events of others."

Registration #2,711,507 (April 29, 2003), SUMMIT SPORT COMPACT & Design, based on an actual use in commerce dating back to May 2002, for the services in International Class 041 described as "arranging and conducting motorsport events."

Registration #2,681,383 (January 28, 2003), SUMMIT SPORT COMPACT & Design, based on an actual use in commerce dating back to February 2002, for the services in International Class 035 described as "mail order catalog and on-line retail store services featuring a wide variety of consumer goods."

Registration #2,643,024 (October 29, 2002), SUMMIT SPEEDCARD, based on an actual use in commerce dating back to March 2001, for the services in International Class 036 described as "credit card services."

Registration #2,558,948 (April 9, 2002), SUMMIT, based on an actual use in commerce dating back to December 2000, for the services in International Class 035 described as "mail order catalog services in the field of automotive engine components."

Registration #2,775,525 (October 21, 2003), SUMMIT, based on an actual use in commerce dating back to November 2001, for the services in International Classes 007, 009 and 012 described variously for automotive engine components.

Registration #76/535,587 (filed July 25, 2003), SUMMIT PERFORMANCE, based on an actual use in commerce dating back to October 2002, for the services in International Class 009 described as "fuel pressure regulators, fuel cells, fuel cell mounts, thermostats, water necks, gauges for fuel pressure, oil pressure, water temperature, voltage and vacuum, electrical connectors and switches for batteries"

Registration #2,781,919 (November 11, 2003), SUMMIT PERFORMANCE, based on an actual use in commerce dating back to August 2002, for the goods in International Class 007 described variously for automotive engine components.

Registration #2,683,753 (September 10, 2002), SUMMIT TRUCKSTYLE OFF-ROAD TEAM, based on an actual use in commerce dating back to August, 2001, for the services in International Class 035 described as "retail store and mail order services, featuring high performance racing and after-market accessories for land vehicles such as automobiles, vans and small trucks."

Registration #2,675,145 (January 14, 2003), SUMMIT TRUCKSTYLE, based on an actual use in commerce dating back to August 2001, for the services in International Class 035 described as "retail store and mail order services, featuring high performance, racing and after-market accessories for land vehicles such as automobiles, vans and small trucks."

There are many pending or registered trademarks outside of the United States for the mark SUMMIT. The mark is pending or has been registered in Austria, Australia, Brazil, Benelux, Canada, Denmark, Community Trademark, Finland, France, Germany, Great Britain, Greece, Ireland, Italy, Mexico, Norway, New Zealand, Portugal, South Africa, Sweden, Switzerland, and Venezuela.

Application S/N

Application Date

Registration #

Registration Date

Austria

16

Aug 1995

162,036

24

Jan 1996

Australia

(Class 7)

01

Mar 1993

597,256

01

Mar 1993

Australia

(Class 12)

08

Sep 1994

639,826

30

Apr 1996

Brazil

20

Nov 1998

Published

02 Feb 1999

Benelux

07 Oct 1988

455,871

07

Oct 1988

Canada

21

Jul 1988

369,204

08

Jun 1990

Denmark

28

Jul 1988

VR1990-06940

26

Oct 1990

European

Mark

06

Jun 1996

297,754

15

Dec 1998

Finland

17

Aug 1995

207,532

30

Sep 1997

France

07

Jul 1988

1,625,777

07

Jul 1988

Germany

TM

11

May 1988

1,149,558

13

Nov 1989

Germany

SM

21

Aug 1990

DD654,157

31

Mar 1998

Great

Britain (Class 7)

20

Jan 1993

1,524,509

20

Jan 1993

Great

Britain (Class 12)

31

Jul 1990

1,434,236

31

Jul 1990

Great

Britain (& Device)

Unknown

330,391

25

Jan 1911

Greece

05

Sep 1995

126,045

17

Feb 1998

Ireland

SM, Class 39

17

Aug 1995

202,062

01

Jul 1996

Italy

03

Oct 1995

00731070

21

Oct 1997

Mexico

TM, Class 7

15

Sep 1995

506,416

29

Sep 1995

Mexico

TM, Class 12

15

Sep 1995

579,143

26

Jun 1998

Mexico

SM, Class 42

15

Sep 1995

506,417

29

Sep 1995

Norway

04

Sep 1995

192,518

03

Sep 1998

New

Zealand TM, Class 12

18

Feb 1999

305,311

12

Nov 1999

New

Zealand SM, Class 35

18

Feb 1999

305,312

12

Nov 1999

Portugal

10

Nov 1995

313,663

17

Feb 1998

South

Africa

22

Mar 1988

88/2239

13

Nov 1992

Sweden

07

Apr 1988

225,215

26

Jul 1991

Switzerland

24

Mar 1988

362,802

09

Sep 1988

Venezuela

14

Jul 1999

S-14.218

09

Sep 2000

The Complainant also owns the domain names <summitracing.com> and <store.summitracing.com>, which resolves to appropriate web sites.

The Respondent has used the following URL for a web address since no earlier than May 18, 1999: "www.sumitracing.com" which linked to "www.linkster.com." The latter is the address of the Respondent’s web page.

The Respondent is no stranger to ICANN decisions, based on the same behavior identified in the Complaint. See the following:

Estate of Shel Silverstein v. CostNet (CPR 0114)

ABC Distributing, Inc. v. CostNet (FA0111000101826)

H-D Michigan, Inc. v. CostNet (FA0210000128681)

MRA Holding, LLC v. CostNet (FA0301000140454)

The Cartoon Network LP, LLLP v. CostNet (FA0301000141820)

Television Food Network, G.P. v. CostNet (FA0308000190611)

Briefing.com Inc. v. CostNet (WIPO

Case No. D2001-0970)

Ltd Commodities, Inc. v. CostNet (WIPO

Case No. D2002-0031)

The Sportsman’s Guide, Inc. v. CostNet (WIPO

Case No. D2002-1126)

Deloitte Touche Tohmatsu v. CostNet (WIPO

Case No. D2003-0619)

In each of the above matters, which were decided by the CPR Institute for Dispute Resolution, the National Arbitration Forum and the WIPO Arbitration and Mediation Center, the Respondent was required to transfer the domain names to the Complainant.

It was stated in Deloitte Touche Tohmatsu v. CostNet aka Domain Manager,

WIPO Case No. D2003-0619, "Respondent

currently owns over two hundred domain names, a number of which are based on

third party names and marks, used to direct traffic to the <linkster.com>

web site or to other web sites, including pornographic ones."

The Respondent’s web site appears presently to be inactive, although it was active within a few days of the filing of the Complaint in this proceeding.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant relies on its use and registration of the words "summit racing" in various forms and contends that the subject domain name is confusingly similar.

It is clear that the Complainant has rights to the words "summit racing." The subject domain name differs from them only by the omission of the letter "m." That omission is of little consequence.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant does not offer the usual information that Respondent is not affiliated with the Complainant and is not authorized to use the Complainant’s marks. On the facts of this case, the Administrative Panel is prepared to infer these facts, but it should not have to do so.

Similarly, the Complainant does not state what business it is in or specify the legal relationship between it and Summit Racing Equipment. The Administrative Panel has obtained the requisite information by examining the documents filed in this proceeding. Again, it should not have to do so.

Relying on previous domain name dispute decisions, the Complainant contends that the Administrative Panel is entitled to presume that the Respondent does not have a legitimate interest in the subject domain name. The Administrative Panel rejects this contention. The onus is on the Complainant to establish the lack of a legitimate interest.

The Administrative Panel also rejects the notion that on the basis of the mere assertion by a complainant that a respondent does not have a legitimate interest in a domain name "…it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is ‘uniquely within the knowledge and control of the Respondent’."

Insofar as a complainant has established a prima facie case, it is entitled to succeed if there were nothing more. It is not a matter of shifting the burden of proof as contended by the Complainant and as apparently asserted by other tribunals. The burden of proof remains on the Complainant, but the decision must be based on all of the information provided to the Administrative Panel. A respondent may provide information that meets the weight of the information provided by the complainant and if it were to do so, the complainant likely would fail, but respondents do not have the burden to establish a legitimate interest.

A respondent is under no legal obligation to participate in a domain name dispute, but its failure to do so leaves the respondent open to whatever inferences may derive from the material presented to the Administrative Panel and the Administrative Panel may take as true the credible assertion of fact of the complainant.

The Respondent appears to have used the subject domain name to direct Internet users to the Respondent’s web page. There being no apparent relationship between the Respondent and Summit Racing Equipment or its business, the use suggests a lack of legitimate interest. The subterfuge of simply misspelling the word "summit," adds weight to the suggestion.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant states: "By using a domain name that is confusingly similar to Complainant’s domain name, and that leads to a web site that does not make any attempt to remove confusion, Respondent is intentionally frustrating Internet users looking for Complainant’s web site from finding Complainant’s web site. Complainant’s potential loss of customers due to Internet user impatience, caused by Respondent’s deliberate attempts to generate confusion, disrupts Complainant’s business."

There is substance to the assertion.

The Complainant also says: "Through its automatic referrals to third-party

sites and through its current web site, Respondent has made itself a competitor

of Complainant" and "[r]espondent, the creator of this situation that

has led to this Complaint, has acted, and is acting, in opposition to the Complainant.

In the past, Respondent has acted in opposition to Complainant by deliberately

diverting Internet users from Complainant’s web site to web pages owned by Complainant’s

competitors." The concept of "competition" in this context has

been recognized previously: see Estee Lauder Inc. v. estelauder.com,

WIPO Case No. D2000-0869; Mission

Kwa Sizabantu v. Benjamin Rost, WIPO Case

No. D2000-0279 and Gallo v. Hanna Law Firm, WIPO

Case No. D2000-0615.

Relying on previous decisions, the Complainant states: "…[the subject domain name], as long as Respondent owns it continues to be an instrument of fraud and deception, and Respondent may use it to divert and confuse Internet users from finding Complainant’s website." Standing alone, this contention is somewhat speculative, but in the context of the Respondent’s history of improper use of domain names, it is some evidence of bad faith.

The Administrative Panel rejects the Complainant’s contention that, "[r]egistration

of the confusingly similar domain names is evidence of bad faith pursuant to

the Policy." A finding that a respondent does not have a legitimate interest

in a domain name that is confusingly similar to the mark of another, does not

establish bad faith registration or use, but the facts that support the finding

may be relevant to the bad faith inquiry. As noted in Sony Kabushiki Kaisha

v. Inja, Kil, WIPO Case No. D2000-1409

a finding of bad faith registration and use may be based on a conclusion that

it is "inconceivable that the Respondent could make any active use of the

disputed domain names without creating a false impression of association with

the Complainant," but standing alone this would be a tenuous basis for

such a conclusion.

The Complainant alleges "typosquatting" on the basis that the subject domain name is the same as the Complainant’s mark, but for a minor letter difference. This is a legitimate factor to take into account. It has been recognized in previous decisions: see Hewlett-Packard Co. v. Zucarrini, FA 94454 (Nat. Arb. Forum May 30, 2000) and Bama Rags v. Zucarrini FA 94380 (Nat. Arb. Forum May 8, 2000).

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

Based on the information provided to it and its findings of fact in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the subject domain name be transferred to the Complainant.

Edward C. Chiasson Q.C.

Sole Panelist

Dated: March 17, 2004

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• Autosales Incorporated, dba Summit Racing Equipment — D2009-0599 · Terminated