Generic Top Level Domain Name (gTLD) Decisions

Complainant is ATR/TreeHouse, Inc., Johnston, R, USA ("Complainant") represented by James Foster, Wolf, Greenfield & Sacks, P.C. Respondent is DigiComm Corp., Cranston, RI, USA ("Respondent") represented by Stephen M. Litwin.

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

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 25, 2000; The Forum received a hard copy of the Complaint on October 26, 2000.

On October 30, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name atrtreehouse.com is registered with Network Solutions and that 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 ICANN’s UDRP.

On October 31, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 20, 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 Respondent’s registration as technical, administrative and billing contacts, and to postmaster@atrtreehouse.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 27, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from Respondent.

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

B. Respondent did not submit a response in this matter.

Complainant has used its trademarks, ATR/TREEHOUSE and ATR TREEHOUSE, in commerce since 1993. On September 10, 1999, Complainant filed applications to register its ATR/TREEHOUSE and ATR TREEHOUSE trademarks in the Principal Register of the United States Patent and Trademark Office (USPTO). Complainant’s trademark application for ATR/TREEHOUSE and ATR TREEHOUSE reveals that it seeks to use the marks for distributorship, leasing, installation and production services of audiovisual equipment for events, for lighting and for theatrical supplies.

Complainant alleges that Respondent, DigiComm Corp., currently doing business under the name Audio Visual Presentation Services, Inc., competes directly with Complainant by providing the same type of goods and services in the same geographic area. The evidence indicates that the domain name at issue, atrtreehouse.com, is being used by Respondent to direct internet users to a web site which advertises goods and services that are in direct competition with the goods and services offered by Complainant.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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 a Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 at issue, atrtreehouse.com is identical to Complainant’s trade name and common law trademarks ATR/TREEHOUSE and ATR TREEHOUSE. Complainant has established, at a minimum, common law rights in the ATR/TREEHOUSE and ATR TREEHOUSE marks. Complainant has used the marks in commerce since 1993 in association with the provision of audiovisual equipment and services. In addition, Complainant has filed an application for federal registration of the ATR/TREEHOUSE mark on the Principal Register with the United States Patent and Trademark Office. Under the ICANN Policy, the evidence is sufficient to demonstrate that Complainant "has rights" in the ATR/TREEHOUSE and ATR TREEHOUSE marks. See e.g. MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing The British Broadcasting Corp. v. Jaime Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

The domain name at issue, atrtreehouse.com, incorporates every letter contained in Complainant’s trademarks. A miniscule difference such as the absence of a back-slash ‘/,’ is inconsequential because such characters may not be included in domain names. Therefore, the domain name is, as far as is possible, identical to Complainant’s trademark. See e.g. InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 ("The domain name "info-space.com" is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features").

The Panel finds that in accordance with ICANN Policy, atrtreehouse.com is identical to the ATR/TREEHOUSE and ATR TREEHOUSE marks, in which Complainant has rights.

Respondent, DigiComm Corp., does business under the name Audio Visual Presentation Services, Inc. Respondent is not commonly known as ATR/ Treehouse, Inc. or ATR TREEHOUSE. Respondent and Complainant compete in the audiovisual business in the same general area, the state of Rhode Island, and Respondent is a direct competitor of Complainant.

Respondent provided no evidence that would indicate that Respondent has rights or a legitimate interest in the atrtreehouse.com domain name.

Therefore, for the above reasons, the Panel finds that Respondent has shown no rights or legitimate interests in the atrtreehouse.com domain name, which is identical to Complainant’s mark.

The evidence indicates that Respondent has registered and is using the domain name atrtreehouse.com in bad faith in at least two respects. Respondent is a direct competitor of Complainant and Respondent has registered its competitor’s trade name and trademark as a domain name in violation of ICANN Policy 4(b)(iii). Respondent also is intentionally attempting to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location in violation of ICANN Policy 4(b)(iv).

Under ICANN Policy, registering a domain name primarily for the purpose of disrupting the business of a competitor indicates registration and use in bad faith. Here, Respondent has registered its competitor’s domain name and is using that domain name to identify a competitor’s online location. The practical result of such conduct is to disrupt Complainant’s business by confusing Complainant’s customers. See e.g. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that "Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name")

Further, ICANN Policy provides that registration and use in bad faith may be found where Respondent uses a domain name to attract or divert Internet users to another web site by creating a likelihood of confusion between Complainant’s mark and Respondent’s web site. Here Respondent has done precisely this. Respondent registered Complainant’s trademark as a domain name and has used that domain name to divert Internet users to a competitor’s web site, selling competing goods and services. See e.g. Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website). Respondent’s registration and use of the domain name in bad faith is clearly evident from the record before the panel.

For the above reasons, the Panel finds that Respondent registered and used the domain name atrtreehouse.com in bad faith.

Having satisfied all three elements required under the ICANN Policy, the Panel finds that the requested relief should be granted.

Accordingly, for all the foregoing reasons, the Panel orders that the domain name atrtreehouse.com be transferred from Respondent to Complainant.