Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Alaska Spa Headquarters, Inc., Anchorage, AK, USA ("Complainant") represented by James M. Gorski. The Respondent is Tim Bennett The Waterworks, Girdwood, AK, USA ("Respondent") represented by Paul W. Koval, of Koval & Featherly, P.C.

The domain name at issue is <alaskaspa.com> registered with Melbourne IT.

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 March 1, 2001; the Forum received a hard copy of the Complaint on March 5, 2001.

On March 05, 2001, Melbourne IT confirmed by e-mail to the Forum that the domain name <alaskaspa.com> is registered with Melbourne IT and that the Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 March 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 28, 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@alaskaspa.com by e-mail.

A timely response was received and determined to be complete on March 28, 2001.

On April 4, 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.

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

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to the Complainant’s trademark/service mark, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered in bad faith by the Respondent.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar to the Complainant’s trademark/service mark, that the Respondent does have rights and a legitimate interest in the domain name, and that the domain name was not registered in bad faith.

The Complainant is engaged in the business of selling hot tubs, spas and related equipment and services. The Complainant bought the business as a proprietorship in 1995, and then incorporated the business 1997.

The Complainant began working with Webmistress.com in November, 2000 to create a webpage for Alaska Spa Headquarters, and intended to use the domain name alaskaspa.com. When the Complainant attempted to register the desired domain name, it learned that the Respondent had registered same in May of 2000, along with the domain name alaskaspa.net.

On February 10, 2001, a print ad appeared in the Anchorage Daily News, advertising the Respondent’s website address, same being the domain name that is the subject of this action.

On February 12, 2001 and February 14, 2001, the Complainant filed an application with the United States Patent and Trademark Office for "Alaska Spa Headquarters, Inc." and "Alaska Spa" respectively.

In an attempt to protect as much of the business name as possible, the Complainant registered alaskaspa.org, to reflect its trade name and/or trademark/service mark.

The Respondent is also engaged in the business of selling hot tubs, spas and related equipment and services, and has conducted said business since 1976.

There are several other hot tub and spa dealers doing business in the same geographical location as the Complainant and Defendant. It would appear that each dealer is a distributor for a specific manufacturer. Many of these dealers use the word "Alaska" and "Spa" in their advertising and trade names.

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.

While the domain name at issue does contain the words "Alaska" and "spa", it does not contain the word "Headquarters" which would have been identical to the Complainant’s trade name and/or pending trademark/service mark. The word "Alaska" is a proper noun used to identify a certain geographic location, and the word "spa" is a noun used to identify relaxation tubs and/or resorts. See Successful Money Management Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights).

Further, even though the Complainant and Respondent are engaged in the business of selling hot tubs and spas, they each represent different manufacturers of said equipment. From the evidence presented, it would appear that the majority of the dealers in the same geographic area also use these words in their print ads.

The Respondent registered the domain name and invested a good deal of time and money developing its website, which was launched in late January, 2001 for the purpose of promoting its business. See EAuto,L.L.C. v. EAuto Parks, D200-0096 (WIPO Apr. 9, 2000)(finding that the Respondent has rights and a legitimate interest in the domain name where the Respondent has used the domain name to post information on its business).

Further, the Respondent claims to have used these words in their advertisements for a number of years, and is using the domain name in connection with a bona fide offering of goods and services. See Western Hay Co. v. Forester, FA 93466 (Nat. Arb. Forum, Mar. 3, 3000) (finding that Respondent was using the domain names for a legitimate purpose).

The evidence presented supports the Respondent claim that they registered and are using the name in good faith as they are using generic terms to designate their geographic location and business. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

Also, no evidence was submitted to indicated that it was the Respondent‘s intention to cause a likelihood of confusion by diverting potential customers to its website. See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules).

Finally, even though the Complainant is attempting to register "Alaska Spa" as a trademark and/or service mark, the Complainant could have been registered previously "Alaska Spa Headquarters, Inc." to accurately reflect its trade name in a domain name. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith where even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts, the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "ALASKASPA.COM" REMAIN WITH THE RESPONDENT.