Fan club forced to find alternative to ''

In Dale Earnhardt Inc v Noramar Enterprises, sole National Arbitration Forum panellist Tyrus R Atkinson Jr has ordered the transfer of the domain name '' to the exclusive licensing agent of the late NASCAR driver Dale Earnhardt. The panellist dismissed Noramar's claim that it intended to use the domain to host a Dale Earnhardt fan club, concluding that it had failed to demonstrate that there was no other reasonable domain name alternative.

Dale Earnhardt had obtained two federal registrations for the trademark
DALE EARNHARDT before his death in 2001. During the proceedings, Dale Earnhardt Inc (DEI) produced evidence that, through its exclusive licensing agreement with Earnhardt, it is the beneficiary of the rights in the DALE EARNHARDT mark. Atkinson held that the affidavit alone was concrete evidence of DEI's rights in the trademark and concluded that there was no discernable difference between the mark and the domain name registered by Noramar.

Noramar claimed that its president was a lifelong fan of Earnhardt, and that it intended to use the disputed domain name to host a fan club website. Noramar argued that the site would be non-commercial and therefore legitimate and fair use of the domain name as prescribed by Article 4 of the Uniform Domain Name Dispute Resolution Policy.

Prior to the publication of notice of the complaint, Noramar's web page contained only its name and contact details. Atkinson reasoned that this constituted a passive holding of the domain name and was not a bona fide use. Atkinson concluded that, even if Noramar initially registered the domain name for use as a fan site, registration in itself did not provide a basis for a finding of legitimate rights or interests. In addition, in order to fully exercise its right to host a fan site, Noramar had to demonstrate to the panel that there was no reasonable domain name alternative. Noramar failed to make such a demonstration.

Atkinson also held that Noramar registered the domain name in bad faith since it had full knowledge of Earnhardt's, and by implication DEI's, rights in the DALE EARNHARDT trademark.

As a result, Atkinson ordered that the domain name be transferred.

Jessica L Rothstein, Goodwin Procter LLP, New York

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