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NASCAR beat to checkered flag in domain name dispute

By Brian Beckham

Complainant NASCAR filed suit under the UDRP against The Racin? Connection, Inc. over the domain name . In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin? Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the domain name since 1996.

NASCAR filed a complaint alleging that the unlicensed use of the domain name is confusingly similar to its NASCAR mark, that The Racin? Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to ?entice?[and] misleadingly divert consumers for [] commercial gain.?

The Racin? Connection, Inc. argued that the domain name is not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a ?race package reseller?. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin? Connection, Inc.?s argument of laches unavailing, the 3-member Panel found that the domain name is confusingly similar to its NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller?s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin? Connection, Inc.?s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin? Connection, Inc. was only offering NASCAR tours; the website disclosed the parties? relationship; and the respondent did not try to ?corner the market? in domain names incorporating the mark). Finally, the Panel found that The Racin? Connection, Inc.?s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to prevent use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html

Full post as published by InternetCases.com on March 26, 2008 (boomark / email).