A big finish for the Indianapolis Motor Speedway

In Brickyard Trademarks Inc v Thomas, National Arbitration Forum (NAF) panellist Daniel Banks Jr has ordered the transfer of 'IndianapolisMotorSpeedway.com' to Brickyard Trademarks, the owner of the INDIANAPOLIS MOTOR SPEEDWAY mark.

The INDIANAPOLIS MOTOR SPEEDWAY mark has been in use since the Indianapolis Motor Speedway racetrack was built in 1909. The racetrack serves as the site for the world-famous Indy 500.

Robert Thomas of Evansville, Indiana, contended that he came across the disputed domain name by chance and registered it as "a valuable and treasured keepsake" of the Indy 500. Thomas, who owns at least 50 other domain names, argued that he was in the process of learning how to construct websites, and had intended to offer the completed website for sale on eBay or operate the site himself. Thomas had put the domain name up for sale soon after it was registered, but changed the "for sale" sign to read "coming soon" after receiving a cease and desist letter from Brickyard.

Banks found that Thomas had no legitimate rights or interests in 'IndianapolisMotorSpeedway.com', as his only use of the domain name had been to offer it for sale, which does not constitute a bona fide offering of goods or services under Paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy. Banks also noted that Thomas had registered the domain name primarily for the purpose of reselling it for valuable consideration in excess of his costs. As such, Banks found that the domain name had been registered and used in bad faith.

In determining that Thomas had either actual or constructive knowledge of Brickyard's rights in the INDIANAPOLIS MOTOR SPEEDWAY mark, Banks referred to the international fame of the mark and the proximity of Thomas's home in Indiana to the site of the Indy 500.

This decision is consistent with recent NAF and World Intellectual Property Organization decisions granting strong trademark protection to stadiums and arenas that serve as the sites for famous sporting attractions.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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