Generic Top Level Domain Name (gTLD) Decisions

Complainant is WomanBiker.com, LLC, Concord, NH, USA ("Complainant") represented by Mark A. Wright, of McLane, Graf, Raulerson & Middleton, P.A. Respondent is Wiser Living, USA ("Respondent").

The domain name at issue is <womenbiker.com> registered with Register.com.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 15, 2001; the Forum received a hard copy of the Complaint on May 17, 2001.

On May 16, 2001, Register.com confirmed by e-mail to the Forum that the domain name <womenbiker.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 2001 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@womenbiker.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 June 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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.

A. Complainant urges that:

In September 2000, Complainant became aware that consumers were having difficulty accessing the <womanbiker.com> website or were unable to find the <womanbiker.com> website. Complainant further learned that consumers were unable to reach the <womanbiker.com> website because they mistakenly typed <womenbiker.com> as their requested domain name. Many customers that have attempted to access the <womanbiker.com> website mistakenly accessed the <womenbiker.com> website, and these customers became confused when the website they accessed stated that it was under construction and "coming soon."

Because there is no mailing address listed by Register.com for <womenbiker.com>, Complainant could not communicate with Respondent by mail. Accordingly, on September 13, 2000, Complainant attempted to contact <womenbiker.com> via the e-mail address provided in the Register.com database. Complainant sent a letter by e-mail to Tom Weidmyer to inform him of Complainant’s intellectual property rights to the mark WOMANBIKER.COM and to the domain name <womanbiker.com>. Complainant requested that Mr. Weidmyer cease and desist the use of the domain name Womenbiker.com. By e-mail dated September 13, 2000, Complainant received the following response: "Your barking up the wrong tree, so eat shit!" Complainant has received no other response from Respondent.

In December 2000, the registration of Respondent's domain name, <womenbiker.com>, was extended until January 19, 2002. Again, the registration does not provide a mailing address, but only the same e-mail address and a telephone number. In February 2001, Complainant attempted to contact Tom Weidmyer using the telephone number listed. After various attempts, Complainant determined that the telephone number listed is for a residence that is not affiliated with Tom Weidmyer or <womenbiker.com>.

B. Respondent has not filed a response to the current proceedings.

Pursuant to ¶ 5(e) and 14 of ICANN Rules, the Panel shall decide the dispute based upon the Complaint.

Complainant, Womanbiker.com, LLC, is a New Hampshire limited liability company, having its principal place of business in Concord, New Hampshire. Complainant is engaged in the business of selling motorcycle clothing and accessories.

Complainant first registered the domain name <womanbiker.com> on January 29, 1998, and has been operating the website since September 1998.

Complainant first began using the mark WOMANBIKER.COM in connection with its services on April 14, 1998, and with its goods on June 1, 1998. Complainant first began using the mark in interstate commerce on September 3, 1998.

Complainant has substantial state and federal common law rights in the mark WOMANBIKER.COM, and is the owner of the pending federal applications for the marks WOMANBIKER.COM (Serial No. 76-107,129) and WOMANBIKER (Serial No. 76-107,130). These applications were filed with the United States Patent and Trademark Office ("USPTO") on August 10, 2000.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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 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.

Complainant established its rights to the WOMANBIKER mark in this record. Respondent’s domain name <womenbiker.com> is calculated to and likely to result in confusion with the marks WOMANBIKER and WOMANBIKER.COM given the substantial similarity in the sound, meaning and appearance. The only difference between the two marks is the use of the letter "e" in the word "women" in Respondent's domain name. Using the plural form of the word "woman" in Respondent’s domain name is confusingly similar to the Complainant’s mark. Martin v. MDD, Inc, AF-0310 (eResolution Oct. 4, 2000) (finding that the domain name <blueridgeknife.com> is identical to Complainant’s registered marks BLUE RIDGE KNIVES); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

Therefore, the Panel finds that Complainant met the requirements of Policy ¶ 4(a)(i) to show that the domain name registered by Respondent is identical to or confusingly similar to Complainant’s mark.

Complainant also established its rights to and legitimate interests in the mark contained within the domain name registered by Respondent. The record permits an inference that Respondent is not and has never been commonly known by the name <womenbiker.com>, either as a business, an individual, or an organization. Policy Paragraph 4(c)(ii). See Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding "that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark").

The record also permits the finding that Respondent does not use this domain name in connection with a bona fide offering of goods or services. Policy Paragraph 4(c)(i). Nor is Respondent making a noncommercial or fair use of the domain name. Policy Paragraph 4(c)(iii). The domain name <womenbiker.com> does not resolve to an active website and there is no evidence Respondent has any planned use for the domain name. See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").

Accordingly, Complainant has established rights in the mark contained within the domain name registered by Respondent and Respondent has no such rights. Policy ¶ 4(a)(ii).

No active website has been connected to the domain name in question. In certain circumstances, such passive holding of a domain name is evidence of bad faith registration and use. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I] t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Furthermore, Complainant has shown that Respondent has acted in bad faith by providing an incorrect telephone number to the registrar. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied; Respondent registered and used the domain name in issue in bad faith.

Having established all three elements required under ICANN Policy, this Panel concludes that the requested relief shall be and is hereby granted.

Therefore, it is Ordered that the domain name, <womenbiker.com>, be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson (Ret), Panelist