Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Indian Industries, Inc. , Evansville, IN, USA ("Complainant") represented by Charles J Meyer, Woodard, Emhardt, Naughton, Moriarty & McNett. The Respondent is Ping Pong Mania & Sporting Goods Co., Bloomfield, CT, USA ("Respondent").

The domain name at issue is pingpongmania.com, registered with Network Solutions.

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

Honorable Tyrus R. Atkinson Jr., Esq. as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 2, 2000; The Forum received a hard copy of the Complaint on October 6, 2000.

On October 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name pingpongmania.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@pingpongmania.com by e-mail.

The Response was received on November 3, 2000.

Complainant filed its Reply of Indian Industries to Ping Pong Maniaís Response on or about November 10, 2000. The Reply of Ping Pong Mania & Sporting Goods Co. to Indian Industries, Inc.ís Reply and Supplemental Response was filed on or about November 13, 2000. Citations and other documents supporting earlier pleadings were submitted by both Complainant and Respondent.

On November 8, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honorable Tyrus R. Atkinson Jr., Esq. as Panelist.

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

A. Complainant

Complainant is a business that is owner of four uncontestable United States Trademark Registrations for the trademark PING-PONG, for table tennis equipment such as tables, rackets and hollow balls.

The Ping-Pong trademark has been used by Complainant and its predecessors for at least 100 years to refer to table tennis equipment and is internationally famous.

Complainant only sells its PING-PONG equipment through Sears, Inc. which is its exclusive licensee.

Ping Pong Mania is a business in the State of Connecticut.

On May 26, 1999, Respondent registered the domain name PINGPONGMANIA.COM with Network Solutions, Inc.

Respondent advertises itself as an online distributor of table tennis equipment and other sporting goods using the web site PINGPONGMANIA.COM.

Respondent currently distributes Complainantís "Stiga"and "Harvard" lines of table tennis equipment, but is not and has never been authorized distributor of PING-PONG table tennis equipment. Respondent also sells brands of table tennis equipment directly in competition with Complainantís PING-PONG table tennis equipment.

Respondent was previously in the same business under another name. In late 1998 or early 1999 the other name was changed to Ping Pong Mania Sporting Goods Co. This entity then registered the domain name PINGPONGMANIA.COM.

Complainant contacted Respondent and requested that it stop its unauthorized use of the PING-PONG trademark.

Respondent continues tousle the domain name PINGPONGMANIA.COM to market non-PING-PONG table tennis products made by a variety of competitors of Complainant.

Respondent has no legitimate interest in the trademark PING-PONG. Respondent intentionally adopted and is using the trademark in bad faith in an attempt to benefit from the goodwill of the PING-PONG trademark. Respondent has never been a distributor of PING-PONG products. PING-PONG and PINGPONGMANIA.COM are identical. The use by Respondent intentionally causes confusion to divert internet users for commercial gain.

B. Respondent

Respondent is an online distributor and retailer of various makes of table tennis equipment, clothing and sporting goods. It serves customers in the United States, Canada, United Kingdom, Caribbean and many other international locations.

Respondent distributes the "Stiga" and "Harvard" lines of Complainantís products but has never been an authorized distributor of PING-PONG products.

Respondent was formed in 1998 and thereafter contacted Complainant requesting an account change and credit application under the name Ping Pong Mania & Sporting Goods Co.

During the process of setting up the account, no notice was give to Respondent by Complainant of possible trademark infringement. Some business was done between Complainant and Respondent in 1998 and 1999.

During the week of October 18, 1999, Respondent contacted Complainant about business matters and during the transaction of the business Complainant informed Respondent of possible trademark infringement between Respondentís name and Complainantís trademark.

On October 30, 1999, research was done on the validity of the claim PING-PONG being a registered trademark. Respondent concluded that there was no confusion between its name and the trademark of Complainant.

In the month of November 1999, communications initiated by Complainant to Respondent demanded that Respondent change its name on the ground of trademark infringement. Respondent told Complainant that its name was totally different from the PING-PONG trademark and thus Respondent would not change its name.

The term "Ping Pong" has become commonplace terminology for the game of table tennis. "Ping Pong" does not connote a particular brand of table tennis equipment, but rather has become the generic term for the sport. For this reason, Complainant does not have bona fide trademark rights in the name PING-PONG, nor does Complainant have enforceable rights in the trademark PING-PONG.

The domain name PINGPONGMANIA.COM was registered and exhibits "fair use" and "good faith".

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 PINGPONGMANIA.COM entirely incorporates Complainantís PING-PONG mark. The only difference is the addition of the generic phrase "mania" and ". com". Adding ".com" does not, of course, make a mark and a domain name different. see Ruben L. Lopez v. Irish Realty Corporation, FA 94906 (Nat. Arb. Forum Aug. 8, 2000). The use of a hypen is not material. See Internet Billing Company, Ltd, v. Fundu Technologies, FA95547 (Nat. Arb. Forum Oct 2, 2000). The addition of a generic word does not circumvent a complainantís rights to its mark nor avoid the confusingly similarity aspect of the ICAAN Uniform Domain Name Dispute Resolution Policy. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000), where it was held that combining the generic word "shop" with the Complainantís registered mark "LLBean" does not make the combined form different enough to survive Complainantís rights under its mark. Adding "claims help" to Complainantís mark "State Farmíí did not make the domain name which incorporated Complainantís mark and the generic term not identical or confusingly similar. See State Farm Mutual Auto Ins. Co. v. Douglas LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000). PING-PONG and PINGPONGMANIA.COM, if not identical, are certainly confusingly similar.

There is a second element which must be shown by Complainant. That element is that Complainant must show that it has rights in the words PING-PONG. Respondent argues that Complainant has no such rights because the term "Ping Pong" has become a generic term. Ping Pong, Respondent argues, does not connote a particular brand of table tennis equipment, but has become a generic term for the sport. Respondent cites the case of Gorstew Limited and Unique Vacations v. Twinsburg Travel as authority for this proposition. That case concerned a number of domain names containing the word "sandals" owned by the Respondent and the trademark "sandals" owned by Complainant. Respondent contended that the word "sandals" was a generic term. Respondentís arguments were rejected as follows: "While as Respondent suggests, ësandalsí is a generic term derived from the Latin ësandaliumí and the Greek ësandaloní the term as here used is high on the evaluation spectrum. It has acquired a secondary meaning and is a ësuggestiveí mark, because imagination is required to determine the nature of Complainantís offeringÖOn this issue, Respondent cannot prevail." Gorstew Limited and Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000). Respondentís reliance upon this case is misplaced. The argument that PING-PONG is a generic term cannot prevail when measured against the Trademark Registrations and use of PING-PONG in business for such a long period of time. Complainant has rights in the Trademark PING-PONG. Complainant must prevail on this element.

Complainant contends that Respondent has no authority or license from Complainant to use the trademark PING-PONG. Respondent may demonstrate its rights to and legitimate interests in the domain name by showing that "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; orÖyou have been commonly known by the domain name, even if you have acquired no trademark or service mark rightsÖ" ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(c)(i)(ii).

Respondent argues that it has been commonly known as Ping Pong Mania & Sporting Goods Co. since 1998. Respondent did some business with Complainant and others under its name for some period of time in 1998 and 1999. It was not until November 1999, that Complainant notified Respondent of trademark infringement. The problem with this argument is that Respondent and its predecessor companies did business with Complainant for years before 1998 and were fully aware of Complainantís sale of PING-PONG table tennis equipment and use of the mark PING-PONG. Respondent is using Complainantís PING-PONG mark for commercial gain, selling competing table tennis equipment. Respondent is not authorized to use Complainantís mark in connection with its competing table tennis equipment. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO March 14, 2000) which found no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of the Respondent and that the Respondent would only legitimately choose to use Complainantís mark in a domain name if the Respondent was seeking to create an impression that the two businesses were affiliated. See also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) which found that Respondent has not demonstrated any rights or legitimate interests in the domain name "TWILIGHT-ZONE.NET" since Complainant had been using the mark TWILIGHT ZONE since 1959. The fact that some months elapsed between the formation of Respondent and the notification of trademark infringement, under the circumstances of this case, does not satisfy this element.

Respondent registered the domain name with actual or constructive knowledge of Complainantís PING-PONG mark. "Before any notice to you of the dispute" as stated in the ICAAN Policy must be taken to mean a good faith belief that a party is not violating the rights of another in using or preparing to use of a name. It cannot be taken to mean that one may use a domain name or a name corresponding to the domain name that the party knows either by actual or constructive knowledge violates the rights another has in a trademark. Complainant must prevail on this element.

Respondent concedes that it intentionally attempts to attract, for commercial gain, internet users to its web site for the purpose of selling table tennis equipment. If Respondent does so by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location, these actions are taken in bad faith. see ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(b)(iv).

Respondentís actions in this case have produced this result. see Fanuc Ltd v. Machine Control Services, FA 93667 (Nat. Arb. Forum March 13, 2000), holding that by selling used Fanuc parts and robots on website "fanuc.com" Respondent caused customers visiting the site to be confused as to the relationship between Respondent and Fanuc Ltd., the Complainant. see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) which found that Respondent acted in bad faith by registering the domain name "fossilwatch.com" and using it to sell various watch brands. see also CSA Intíl v. Shannon and Care Tech Ind., Inc., D2000-0071 (WIPO March24, 2000). When Respondent intends to use the Complainantís marks to attract the public to the web site without permission from Complainant, this is evidence of registration and use in bad faith. State Farm Mutual Auto Ins. Co. v. Kyle Northway, FA95464 (Nat. Arb. Forum. Oct 11, 2000); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO April 22, 2000). Respondent chose to incorporate Complainantís trademark, PING-PONG, in the domain name with the purpose of attracting customers to Respondentís web site to sell the customers table tennis equipment and other goods related thereto. Respondentís actions create a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement Respondentís web site. Respondent registered the domain name in bad faith. Complainant must prevail on this element.

Complainantís demand that the domain name PINGPONGMANIA.COM be transferred from Respondent to Complainant is granted. It is ordered that the domain name PINGPONGMANIA.COM be transferred from Respondent to Complainant.