Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Turbonetics, Inc., Moorpark, CA, USA ("Complainant") represented by Christopher Jacobs, of Renner, Otto, Boisselle & Sklar. The Respondent is Performance Techniques, San Bernadino, CA, USA ("Respondent").

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

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

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

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 22, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On December 26, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "turbonetics.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 5.0 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 December 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 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@turbonetics.com by e-mail.

On January 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant’s contentions are as follows:

B. Respondent

The Respondent’s contentions are as follows:

The Complainant is the owner of the trademark TURBONETICS® in connection with turbochargers and turbocharger controls for vehicles. Respondent was an authorized distributor of the Complainant’s goods for over ten years. This relationship ended in March, 1999 when the Complainant changed its criteria for warehouse distributors of their products. Although the Respondent met Complainant’s new criteria to maintain its status as a warehouse distributor, Complainant refused to sell any products to the Respondent after March 17, 1999. The Respondent continues to purchase Complainant’s products for resale from another warehouse distributor.

Early in their business relationship Respondent had a discussion with Complainant regarding Complainant’s help in building a catalog for Respondent and reproducing part of Complainant’s catalog. Complainant gave his blessing regarding the catalog and offered help to the Respondent, if needed.

When the Respondent decided to run a website offering turbocharger services and products, the Respondent called Complainant and informed him of his intentions. The Complainant looked upon it as free advertising, and gave permission to Respondent to use the trademark as a domain name and to reproduce Complainant’s catalog on the website.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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 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 Respondent does not dispute that the domain name is similar to the Complainant’s trademark, but denies that it is confusingly similar as Respondent has been an authorized warehouse distributor for the Claimant. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding that the Complainant met the identical and confusingly similar aspect of Policy ¶ 4(a), but failed to prove that the Respondent had no rights or legitimate interests in the domain name <smartdesign.com>).

As the Respondent was a warehouse distributor for Complainant, Respondent was authorized to use the Complainant’s trademark to advertise and promote the Complainant’s products. Respondent had received permission to reproduce parts of Complainant’s catalog in approximately April of 1990 to assist Respondent in promoting Complainant’s products in Respondent’s catalog.

The Respondent Owner, Allan Nimmo, along with employees Jami Nimmo and Tom Rose, were having an office conference to discuss ideas for their website, and searching for available domain names that were in any way connected to turbochargers. They noticed that the domain name at issue was available. Allan Nimmo telephoned the Complainant Owner, Bob Keller, to discuss his intentions about the website. This telephone conversation was held on Allan Nimmo’s speaker phone, and Jami Nimmo and Tom Rose were present at the time of the conversation. Complainant stated that he did not think much of the internet and was not interested in putting up a website. Respondent expressed concern that someone else would register the domain name; someone who did not have anything to do with the products and services provided by both the Complainant and Respondent. Respondent suggested that they register the domain name at issue and point it to Respondent’s already existing website, where Complainant’s products would be promoted, along with the Respondent’s products and services. Complainant liked the idea of free advertising and gave his permission to use the Complainant’s trademark for the domain name. Complainant also consented at that time to allowing Respondent to reproduce its catalog online. Tom Rose and Jami Nimmo have provided affidavits as to the content of this telephone conversation. See Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, D2000-0006 (WIPO Feb. 28, 2000) (finding it cannot be concluded that Respondent has no "rights or legitimate interests" in the domain as is required under the Policy. While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially, or whether Respondent’s use is a nominative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts).

Respondent asserts that Complainant has never objected to its use of the trademark until the present dispute and has encouraged Respondent to register the domain name at issue and reproduce its catalog on Respondent’s website.

Respondent asserts that it never had any intention of disrupting Complainant’s business, in fact, it would appear that by promoting sales of Complainant’s products and services, Respondent is enhancing Complainant’s business. Disrupting the Complainant’s business would also disrupt the Respondent’s business.

The Respondent was a warehouse distributor for the Complainant for some eleven years. The Respondent’s website shows that he sells turbochargers, turbocharger parts and services and Respondent makes no claim to be the Complainant.

It was not the Respondent’s intention to disrupt Complainant’s business, nor was it attempting to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. It would appear that the Respondent did not register the domain name in bad faith, as it promotes the Complainant’s goods, services and mark, and did so with the full knowledge and permission of the Complainant. See Eddy’s (Nottingham) Ltd. v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where the Respondent registered the domain name in good faith, without objection by the Complainant, and in the interest of promoting the Complainant’s business).

As the Complainant has failed to prove each of the three elements under Section 4(a) of the Policy, the Complainant’s request for cancellation or transfer is denied. The domain name "TURBONETICS.COM shall remain with the Respondent.