Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Gow-Mac Instrument Co., Lehigh Valley, PA, USA ("Complainant"). The Respondent is Gow Mac Instrument Company, Ottawa, ON, Canada, ("Respondent").

The domain name at issue is "GOWMAC.COM registered with Network Solutions Inc ("NSI").

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

The Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/10/2000; The Forum received a hard copy of the Complaint on 07/10/2000.

On 07/13/2000, NSI confirmed by e-mail to The Forum that the domain name "GOWMAC.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On 07/14/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/03/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail.

On August 7, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (Ret.) as Panelist.

On August 3, 2000, a Response to Complainantís Domain Name Complaint was filed with The Forum.

On August 10, 2000, this Arbitrator issued an Order for Additional Submissions and Extending Time for Rendering A Decision was filed with The Forum.

On August 18, 2000, Complainantís Response to the Order for Additional Submissions and Extending Time for Rendering a Decision was filed with The Forum. This Response consisted of an Affidavit in Response to Order for Additional Submissions, as requested by this Arbitrator.

On August 22, 2000, the Respondent filed a Response to Complainantís Response to the Order for Additional Submissions and Extending Time for Rendering a Decision was filed with The Forum.

All of these documents were received and reviewed by the Arbitrator prior to rendering this Decision.

The Complainant requests that the domain name transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the Respondent, by obtaining and using the domain name that is the subject of this Complaint, has created confusion among its existing and potential customers as the domain name is identical or confusingly similar to the Complainantís trademark. Further, the Respondent violated the Complainantís trademarks and is using the domain name in bad faith.

B. Respondent

The Respondent contends that it was an agent of the Complainantís in Canada, which lead to the formation of a Canadian company to enhance the Complainantís position in the world market. As a result of the formation of the Canadian office, the Respondent severed all agency relations with other manufacturers. The Respondent also contends that the domain name was not registered in bad faith, but was registered with the permission of the Complainant.

The Complainant is an international supplier and manufacturer of laboratory equipment, including gas partitioners, gas chromotographs and gas analyzers, and has used the mark "GOW-MAC" continuously since 1942. The Complainant registered the mark "GOW-MAC" with the United States Patent and Trademark Office on July 28, 1998, and with the Canadian Intellectual Property Office on October 19, 1999.

The Respondent is a former distributor of the Complainant and assumed this name without the permission of the Complainant, and uses this name in direct competition with Complainant in the gas analysis equipment business.

The Complainant won a Declaratory Judgment again the Respondent for infringement upon the "GOW-MAC" trademark and "chromatograph" logo in the Court of Common Pleas of Northampton County, Pennsylvania.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The domain name "gowmac.com" registered and in use by the Respondent is confusingly similar to Complainantís domain name "Gow-Mac.com", the only difference being the hyphen (-) between "Gow" and "Mac". See Policy  4(a)(i); see also Chi-Chiís Inc. v. Restauran Commentary (Restaurant Commentary), D2000-0321 (WIPO June 19, 2000) (finding that varying punctuation of a trademark makes the domain name confusingly similar). It is not unreasonable for an average consumer to assume that the gowmac.com web site belongs to the Complainantís company. Further, it is likely that a consumer searching for the Complainantís web site would believe Respondentí site to be that of the Complainant. This is further complicated by the fact that both companies sell gas analysis equipment.

Respondent has no legitimate interest in the domain name as Respondent adopted the name of the Complainant without permission. The use of the Complainantís name and mark by Respondent violates the United States and Canadian trademarks held by Complainant. See Compangnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 14, 2000) (finding no rights or legitimate interest where Respondent has never applied for a license or permission from the Complainant to use the trademarked name).

The Respondent registered the "gowmac.com" knowing that it would be confusing for customers. The Respondent linked this web site to hypertext links using Complainantís company name and trademark in an effort to identify itself as Complainant on the Internet. The Respondent also seeks to disrupt Complainantís business by attracting unknowing consumers to its web site and selling inferior products in Complainantís name. See Policy  4(b)(iii-iv); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385, (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainantís marks suggests that the Respondent, the Complainantís competitor, registered the names primarily for the purpose of disrupting the Complainantís business).

As the Respondent is in direct competition with the Complainant and is using Complainantís name and mark to attract potential customers to its web site. This has and will continue to harm Complainantís reputation in the marketplace.

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "GOWMAC.COM" be transferred from the Respondent to the Complainant.