ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Angus Chemical Company of Buffalo Grove, Illinois (USA) and is represented in this proceeding by counsel, Thomas P. Arden of McBride, Baker & Coles, Chicago, Illinois (USA). The Respondent is National Event Photography of Holualoa, Hawaii (USA). The contested domain name is nitrofuel.com.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on May 5, 2000. The hardcopy of the Complaint Form was received on May 9, 2000. Payment was received on May 12, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The Clerk of eResolution concluded that: the Registrar was Network Solutions, the Whois database contained all the required contact information, the contested Domain Name resolved to an active Web page and the Complaint was administratively compliant.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 15, 2000 and, on that date, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the May 15, 2000 date of commencement of the administrative proceeding.
On June 5, 2000, the Clerk's Office contacted the undersigned and requested him to act as panelist in this case.
On June 6, 2000, the undersigned, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
By June 6, 2000, the Respondent had not submitted a response.
On June 6, 2000, the parties were notified that the undersigned had been appointed to serve as panelist.
3. Factual Background
Angus Chemical Company is the registered owner in the United States of the trademark NITROFUEL. Angus presented as proof of this registration a copy of Certificate of Registration No. 1,310,726 issued by the U.S. Patent and Trademark Office. Since June 1983, Angus has used the trademark NITROFUEL throughout the United States in connection with the sale and advertising of drag racing fuel. At an unspecified date, Angus also began to sell other products bearing the trademark NITROFUEL primarily to drag racing enthusiasts, including jackets, hats, pins, T-shirts and mugs. Each of these uses of the trademark NITROFUEL was documented in a set of exhibits appended to the complaint.
On October 6, 1998, National Event Photography registered the domain name nitrofuel.com with Network Solutions, Inc. According to the WHOIS database, National Event Photography is an organization located in Hawaii (USA). National Event Photography uses the web site nitrofuel.com to promote and cover Hawaiian and national drag racing events and to offer online shopping for "Nitro Fish Gear" including "the wildest t-shirts, caps, [and] decals." These uses of the site nitrofuel.com were documented in a set of exhibits appended to the complaint.
Angus has brought this proceeding under the Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("ICANN Policy") to have the domain name transferred to it.
4. Parties' Contentions
Angus contends that the nitrofuel.com domain name is identical to the NITROFUEL trademark. Angus argues that National Event Photography has no legitimate rights to use of the mark NITROFUEL because National Event Photography does not use NITROFUEL either as a mark for any services or products or as a corporate or trade name. Angus claims that NITROFUEL is not used as a name or mark to commonly identify National Event Photography and that National Event Photography registered the domain name without any legitimate reason.
Angus asserts that National Event Photography registered the domain name in bad faith to trade off the reputation and good will of Angus in the drag racing industry and to create confusion with respect to the source and affiliation of the web site with Angus. Angus alleges that National Event Photography targets the same drag racing enthusiasts who would be familar with the Angus NITROFUEL products.
Angus further contends that National Event Photography plans on expanding its use of nitrofuel.com to promote another racing fuel product, though Angus did not produce any evidence to support this assertion. Angus also asserted with any specific evidence that National Event Photography intends to continue using the NITROFUEL trademark on additional collateral items such as clothing for racing enthusiasts.
National Event Photography failed to respond to the complaint and has therefore asserted no defense.
5. Discussion and Findings
As the registered owner of the domain name nitrofuel.com, National Event Photography is required to submit to this proceeding according to Section 4(a) of the ICANN Policy. The rules of procedure for this proceeding are set forth in the ICANN Rules for Uniform Domain Name Dispute Resolution Policy as adopted by ICANN on October 24, 1999 (« ICANN Rules »). Section 5(a) of the ICANN Rules require the owner of a domain name to respond to any complaint within 20 days. National Event Photography has failed to satisfy this requirement.
Section 14(a) of the ICANN Rules requires the Panel to proceed to a decision where a party fails to meet any time periods established by the ICANN Rules. But, the ICANN Rules do not require that a decision be rendered automatically in favor of the Complainant. Instead, Section 14(b) of the ICANN Rules states that «the Panel shall draw such inferences therefrom as it considers appropriate. » The Panel will therefore consider all allegations of fact made by Angus to be uncontested. The Panel will not, however, relieve Angus of its burden under Section 4(a) of the ICANN Policy to prove that « (i) … the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) [the domain name owner has] no rights or legitimate interests in respect of the domain name; and (iii) … domain name has been registered and is being used in bad faith. » Consequently, the Panel will consider each of these elements of the complaint.
Identity or Confusing Similarity of Domain Name and Trademark
Angus asserts that the registered trademark NITROFUEL is identical to the domain name nitrofuel.com. While the two terms are not literally identical, in the context of the Internet in the United States, where both Angus and National Event Photography conduct their business, the dot-com suffix has become an indistinguishable part of a web address. The Panel therefore finds that the registered trademark NITROFUEL and the registered domain name nitrofuel.com are « identical or confusingly similar » and that Angus has proven this element of its complaint.
No Legitimate Interest in the Domain Name
Angus has argued that National Event Photography has no legitimate interest in the domain name nitrofuel.com. Section 4(c ) of the ICANN Policy considers the owner of the domain name to have a legitimate interest in the name if the owner used the name in connection with a bona fide offering of goods or services prior to notice of the dispute, if the owner was commonly known by the name or if the owner was making a legitmate noncommercial or fair use of the domain name. National Event Photography does not appear to offer goods or services with the name NITROFUEL. As demonstrated in the exhibits attached to the complaint, National Event Photography offers goods bearing the name « Nitro Fish » rather than the mark NITROFUEL. Similarly, National Event Photography does not appear to be commonly known by the name nitrofuel.com or NITROFUEL. Indeed, the exhibits attached to the complaint show that the tradename used by the web site owner is the company's own name, National Event Photography, and not NITROFUEL or nitrofuel.com. The company uses National Event Photography as the identification for the toll free phone number on the home page banner and on the photograph order information page. Lastly, there is no indication from the sample web pages submitted as exhibits to the complaint that National Event Photography makes any fair use or noncommercial use of the domain name such as a parody or critique.
While these criteria are not the exclusive factors to establish a legitimate interest in the registered domain name, National Event Photography has not contested the assertions by Angus nor presented any alternative statements to refute the evidence submitted by Angus in support of its claim.
The Panel, thus, finds Angus has shown that National Event Photography does not have a legitimate interest in the domain name nitrofuel.com.
Bad Faith Registration
Angus argues that National Event Photography has registered the domain name in bad faith. Section (4)(b)(iv) of the ICANN Policy defines registration and use in bad faith to include «using the domain name … intentionally .. . to attract for commercial gain, Internet users … by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of [the] web site ». The similarity in the web site activities of National Event Photography, in particular the promotion of drag racing events and products, with some of the activities of Angus that are associated with the trademark NITROFUEL, namely sponsorship of drag racing events and the sale of collateral products, are likely to create confusion as to the relationship between National Event Photography and Angus and to imply the endorsement of the web site by Angus. The web site does not, for example, appear to contain any disclaimer of an affiliation between National Event Photography and Angus. The Panel does not believe that the likelihood of confusion combined with the web site's impression of endorsement can possibly be coincidental. The only plausible explanation from the uncontested evidence is that nitrofuel.com was chosen as a domain name for the purpose of attracting drag racing enthusiasts seeking information or products associated with the Angus trademark NITROFUEL. This use by National Event Photography was clearly for commercial gain.
The Panel, therefore, finds that the domain name was registered in bad faith according to the terms of the ICANN Policy.
The Panel concludes that the Complainant has proven that the domain name nitrofuel.com is identical or confusingly similar to the Complainant's registered trademark, NITROFUEL, that the Respondent had no legitimate interest in the domain name and that the Respondent's registration of the domain name was in bad faith. For these reasons, the Panel orders the transfer of the domain name nitrofuel.com to the Complainant, Angus Chemical Corporation.
New York, NY
(s) Joel R. Reidenberg