Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

DOMAIN NAME DISPUTE ADMINISTRATIVE DECISION

________________________________________________________________

GENE SHULTZ

TURQUOISE BUFFALO GALLERY

320 N. HWY 89A

SEDONA, AZ 86336

USA

Telephone: (520) 282-2994

Fax: None Given

E-mail Address: gene@turquoise-buffalo.com

COMPLAINANT,

vs.

MATTHEW LEO

30 Little Green Circle

Sedona, AZ 86336

USA

Telephone: (800) 462-8536

Fax: Not Given

E-mail Address: sedonawolf@aol.com

RESPONDENT.

DECISION
Forum File No.: FA0003000094359

________________________________________________________________

The above entitled matter came on for an administrative hearing on

April 12, 2000 before the undersigned on the Complaint of GENE SHULTZ and TURQUOISE BUFFALO GALLERY, hereafter "Complainant", against MATTHEW LEO, hereafter "Respondent". Both parties appear pro se. Upon the written submitted record, the following decision is made:

PROCEDURAL FINDINGS

Domain Name: TURQUOISEBUFFALO.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: MATTHEW LEO (TURQUOISEBUFFALO — DOM)

30 Little Green Circle

Sedona, AZ 86351

USA

Date of Domain Name Registration: November 16, 1999.

Date Complaint filed: March 27, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule

2(a) and Rule 4(c): March 28, 2000

Due date for a Response: April 17, 2000.

Respondent’s Response was filed (dated) March 28, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on March 28, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent submitted a response to the Forum within twenty (20) days pursuant to Rule 5(a).

On November 16, 1999, Respondent registered the domain name TURQUOISEBUFFALO.COM with Domain Name Registrar, Network Solutions, Inc., the entity that is the Registrar of the domain name. On March 30, 2000, the Domain Name Registrar Network Solutions, Inc. verified that LEO, MATTHEW (TURQUOISEBUFFALO-DOM) is the Registrant for the domain name TURQUOISEBUFFALO.COM and that the domain name is in active status. By registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

The undisputed evidence establishes that:

1. Complainant is the owner of several legal Arizona Trademarks and tradenames, including No. 223887, Turquoise Buffalo; No. 106553, Turquoise Buffalo Gallery and No. 106554 Turquoise Buffalo Indian Traders. .

2. Complainant registered the mark, Turquoise Buffalo in Arizona in 1992.

3. Complainant does business under the name Turquoise Buffalo Gallery and Turquoise Buffalo Gallery and Indian Traders, selling goods described as "Native American Art and Native American Jewelry" and has done so under those names for more than eight years.

4. Respondent did not challenge Complainant’s Affidavit that he and Respondent "were friends and business associates for eleven years."

5. Complainant and Respondent operate similar businesses in the same local market of Sedona, Arizona.

6. Respondent has several domain names for his businesses, including www.sedonawolf.com.

7. Respondent did not present any evidence of development of the TURQUOISEBUFFALO.COM web site other than his statement that he has "been building the turquoisebuffalo (SIC) at www.sedonawolf.com."

8. Complainant offered to buy TURQUOISEBUFFALO.COM for the registration fees; Respondent states that the domain name is not for sale.

9. The trademark Turquoise Buffalo is owned exclusively by Complainant.

10. Respondent registered a name, TURQUOISEBUFFALO.COM, that is confusingly similar to Complainant’s trademark.

9. The confusingly similar domain name is likely to confuse any user who seeks to find Turquoise Buffalo Gallery or Turquoise Buffalo Gallery and Indian Traders, using the business name because Respondent admits that TURQUOISEBUFFALO.COM is being developed at www.sedonawolf.com, which is Respondent’s business.

10. Respondent has shown no right or legitimate interest in the use of the mark TURQUOISEBUFFALO.COM or in the use of the Complainant’s name and trademark.

11. It may be presumed that Respondent is wrongfully using the domain name to attract customers from Complainant since by Respondent’s own admission an inquiry using Turquoise Buffalo will get them in touch with Respondent’s business at www.sedonawolf.com.

12. It may be presumed that Respondent intends to wrongfully prevent Complainant from developing the recognized legal interest that Complainant has in the trademark Turquoise Buffalo inasmuch as Respondent has shown no expressed claim of right or interest in that name.

13. The following is evidence that Respondent filed the domain name TURQUOISEBUFFALO.COM in bad faith:

a. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iii) Respondent wrongfully registered the domain name TURQUOISEBUFFALO.COM in order to disrupt the business of a competitor, the Complainant, who is the legal owner of the trademark Turquoise Buffalo.

b. That contrary to ICANN’s Uniform Domain Name Dispute Resolution Policy, Paragraph 4(b)(iv) Respondent wrongfully used the web site by diverting any customers who contacted Turquoise Buffalo to the Respondent’s website at www.sedonawolf.com and that he did so by creating a likelihood of confusion with the Complainant’s trademark.

Complainant’s prayer for relief requests that the domain name TURQUOISEBUFFALO.COM be transferred from Respondent to Complainant.

CONCLUSIONS

The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name TURQUOISEBUFFALO.COM registered by Respondent on November 16, 1999, is so close as to be identical or confusingly similar to Complainant’s Turquoise Buffalo trademark, to which Complainant has legal right and to which Respondent has failed to show any legitimate right or interest.

2. Respondent acted in bad faith by registering or acquiring the domain name TURQUOISEBUFFALO.COM for the purpose of disrupting the business of a competitor, Turquoise Buffalo Gallery and Turquoise Buffalo Gallery and Indian Traders.

3. Respondent acted in bad faith by intentionally attempting to attract, for commercial gain, internet users to his web site or other on-line location by creating a likelihood of confusion with the Complainant’s trademark.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME TURQUOISEBUFFALO.COM REGISTERED BY RESPONDENT MATTHEW LEO BE TRANSFERRED TO RAYMOND EUGENE SHULTZ, THE LEGAL OWNER OF THE TRADEMARK TURQUOISE BUFFALO.

DATED: April 12, 2000 by Judge Carolyn Marks Johnson (Ret.), Arbitrator.

_______________________________________

Honorable Carolyn Marks Johnson

Assigned District Judge

Arbitrator