Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Arizona State Parks Board, Phoenix, AZ, USA ("Complainant"). The Respondent is Pink Banana Adventures, Wilcox, AZ, USA ("Respondent").

The domain names at issue are "KARTCHNERTOURS.COM" and "KARTCHNERCAVERN.COM", registered with Network Solutions Inc ("NSI").

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

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/29/2000; The Forum received a hard copy of the Complaint on 07/05/2000.

On 07/05/2000, NSI confirmed by e-mail to The Forum that the domain names "KARTCHNERTOURS.COM" and "KARTCHNERCAVERN.COM" are 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 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/10/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/30/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 24, 2000, Respondent filed a Request for Extension of Time to Respond to Complaint and Complainant Consents requesting a 20 day extension of the final response date.

On August 10, 2000, Respondent filed a second Request for Extension of Time to Respond to Complaint and Complainant Consents requesting an additional 10 day extension of the final response date.

On August 30, 2000, the Respondent filed a Response.

On September 5, 2000, Complainant filed a Reply in Support of Complaint.

On September 8, 2000 pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the Respondent, by obtaining and using the domain names that are the subject of this Complaint, has caused, or is likely to cause, confusion, mistake or deception to the public as the domain name is identical or confusingly similar to the Complainant’s trademark. Also, the Complainant contends that the Respondent has no rights or legitimate interest in the domain name; and, further, the Respondent violated the Complainant’s trademarks and is using the domain name in bad faith.

B. Respondent

The Respondent contends that it registered the domain names to promote his complimentary enterprise of transporting visitors to and from the park’s front gate. Also, the Respondent contends that without the use of "Kartchner" to identify it’s tour services provided at the Park, internet users would have no way of location the Respondent’s tour services except by coincidence. The Respondent also contends that the domain name was not registered in bad faith, as they are not in competition with the Complainant.

The Complainant operates 24 parks throughout the State of Arizona, including the property that is the subject of this Complaint. Complainant is the sole owner of the property and has total control over its access and sole responsibility for its management, preservation and development.

The caves were discovered in 1974. In 1988 with approval and funding from the legislature of the State of Arizona, Complainant purchased the property from its owners. The property contained the caves in its entirety. During the first six months of 1988, Complainant announced the purchase and the decision to name the caves Kartchner Caverns State Park.

The Complainant registered the mark Kartchner Caverns State Park ® with the U.S. Patent and Trademark Office and has 14 additional trademark applications pending. These marks have become well known in the tourism industry and to the public at large referring to the services and products provided by Complainant, and has developed substantial and valuable goodwill in connection with the mark.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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.

Respondent’s domain name "kartchnercavern.com" is merely the singular of the distinctive element of Complainant’s mark. See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, <QUIXTAR>, the domain name is confusingly similar.)

As such, this is likely to cause confusion and may be misinterpreted by the public as a service sanctioned by the Complainant.

As the Complainant is the owner of the mark and has the exclusive right to use the mark the Respondent has no rights or legitimate interest in the domain names. See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of a site "as a portal to suck surfers into a site sponsored by Tencent seems hardly legitimate").

The registration of the domain names in connection with a commercial venture offering services in competition with those offered by Complainant, thereby disrupting the Complainant’s business. See 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 Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

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 names "KARTCHNERTOURS.COM" and "KARTCHNERCAVERN.COM" be transferred from the Respondent to the Complainant.