Generic Top Level Domain Name (gTLD) Decisions

The Complainant is PT Cruiser Club LLC, Long Beach, WA, USA ("Complainant"). The Respondent is Thompson Six Star Inc., Carpinteria, CA, USA ("Respondent").

The domain name at issue is "ptcruiserclub.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 January 17, 2001; the Forum received a hard copy of the Complaint on January 17, 2001.

On January 18, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "ptcruiserclub.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified t hat 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 January 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Resp ondent 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@ptcruiserclub.com by e-mail.

A timely response was received and determined to be complete on February 5, 2001.

On February 12, 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 alleges the domain name at issue is identical or confusingly similar to its pending trademark application, that the Respondent has no rights or legitimate interest in the domain name, and that the domain name was registered in bad faith .

B. Respondent

Respondent contends the domain name is not identical or confusingly similar, as the trademark is pending, that the Respondent does have rights or legitimate interest in the domain name, and that Respondent did not register the name in bad faith. Respon dent also contends that the Complainant is trying Reverse Domain Name Hijacking.

The Complainant is a Limited Liability Company in the State of Washington and operates as an auto club for PT Cruiser enthusiasts.

The Respondent is a California Corporation operating many businesses. It is the Respondent’s desire to start an auto club for PT Cruiser enthusiasts on-line, but he wanted to actually own the vehicle before putting up the website.

The Respondent registered the domain name at issue on February 22, 1999. The Complainant registered its LLC status in the state of Washington on October 27, 1999 and filed its trademark application on August 8, 2000. On September 22, 1999, Complainant registered the domain names ptcruiserclub.org and ptcruiserclub.net.

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.

On the surface it would appear that the domain name is identical to the Complainant’s pending trademark application; however the domain name is comprised of the words PT Cruiser (the already trademarked name of a vehicle produced by Daimler Chrysle r) and club (generic term), with the addition of the .com.

In addition, it appears that the Respondent registered the domain name before the Complainant’s first use in commerce and prior to filing its trademark application.

It is this Panel’s opinion that the domain name is not identical or confusingly similar. See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that "[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.").

The Respondent states that it intended to develop a noncommercial website , but wanted to actually own the car before developing the website. Respondent was developing the website at his own pace. See IG Index PLC v Index Trade, D2000-1124 ( WIPO Oct. 16, 2000) (finding that the Respondent has rights in the domain name because the Respondent’s claimed use of the domain name is a "plausible explanation" to which the Panelist must give weight).

As the domain name was registered well in advance of any action by the Complainant to formalize plans for his auto club, it is this Panel’s opinion that the Respondent was not acting in bad faith at the time of the registration.

Also, the Respondent claims that Complainant’s spouse made the first inquiry regarding purchasing the domain name. See General Machine Products Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant that the Compl ainant, and not the Respondent had initiated contact, inquiring about purchasing the domain name <craftwork.com>, and that this fact tended to weigh against a finding of bad faith).

Honorable Paul A. Dorf (Ret.)

Dated: February 28, 2001