Generic Top Level Domain Name (gTLD) Decisions

Complainant is John Egert First Team Sports, Inc., Anoka, MN, USA ("Complainant") represented by Z. Peter Sawicki, of Kinney & Lange, P.A.. Respondent is Thomas M. Verrengia, Staten Island, NY, USA ("Respondent").

The domain names at issue are "hespeler.com" and "hespelerhockey.com" registered with Network Solutions, Inc.

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

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 27, 2001; the Forum received a hard copy of the Complaint on March 28, 2001.

On April 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "hespeler.com" and "hespelerhockey.com" are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 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@hespeler.com and postmaster@hespelerhockey.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 April 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

The following Registered Trademark is owned by Complainant and are in use by Complainant First Team Sports in connection with its on-going business activities.

Complainant became the owner by assignment of the HESPELER mark when it purchased the company which owned the HESPELER mark. Complainant also was assigned the goodwill associated with the HESPELER mark. Complainant formed

Hespeler Hockey, Inc. as a wholly owned subsidiary of First Team Sports. The HESPELER mark has been continually used in commerce by either the first owner of the mark or by Hespeler Hockey, Inc. as a wholly owned subsidiary of First Team Sports, since March 15, 1988. The HESPELER mark is well known in the hockey equipment industry. Before being purchased by Complainant, the company that owned the HESPELER mark made custom made hockey equipment, typically for professional hockey players. Therefore, the HESPELER mark in the hockey equipment industry was synonymous with quality and craftsmanship. Besides making custom-made hockey equipment, the previous company also used the HESPELER mark on hockey sticks. Complainant plans on using the HESPELER mark in association with hockey equipment in the retail market.

Complainant recently became aware that the "hespeler.com" and the "hespelerhockey.com" domain names were owned by Respondent when Complainant attempted to register the "hespeler.com" domain name prior to beginning an extensive advertising campaign to make the hockey equipment market aware of the HESPELER name in the retail hockey equipment market. Because of Respondent’s ownership of the domain names in dispute, Complainant has delayed the advertising campaign.

Respondent owns "hespeler.com" and "hespelerhockey.com", each domain name containing the HESPELER mark. Respondent registered both domain names within two days of each other, on May 9, 1998 and May 11, 1998, respectively.

Respondent is attempting to state that a business relationship exists between Complainant and Respondent. Complainant is not aware of any existing business relationship with Respondent, nor does Complainant anticipate having any future business relationship with Respondent. Respondent has no property rights in the HESPELER mark for hockey equipment.

On January 8, 2001, Peter J. Ims of Kinney & Lange, P.A. wrote Respondent, Thomas M. Verrengia, the listed owner of "hespeler.com" and "hespelerhockey.com", requesting that Respondent "abandon and cancel" the domain names. Respondent responded to the letter of January 8, 2001 by claiming to be an authorized dealer of Hespeler Hockey, Inc. and stated an intention to market HESPELER hockey equipment under the "hespelerhockey.com" domain name.

After sending the above-mentioned letter to Complainant’s attorneys, Respondent contacted Complainant’s President, John Egert. Respondent was informed of Complainant’s position requiring Respondent to assign both domain names to Complainant. Complainant’s President was led to believe that Respondent agreed to transfer both domain names to Complainant. Complainant’s attorneys were notified of the agreement and drafted a domain name transfer agreement and contacted Respondent. Respondent told Complainant’s attorneys that Respondent would transfer the "hespelerhockey.com" domain name but would not transfer the "hespeler.com" domain name to Complainant.

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 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 Panel holds that the "hespeler.com" and "hespelerhockey.com" domain names are identical and confusingly similar to the registered mark owned by Complainant.

The "hespeler.com" domain name is identical to Complainant’s mark. The addition of the ".com" is insignificant in determining confusing similarity. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) ".com" after the name POMELLATO is not relevant).

The "hespelerhockey.com" domain name is confusingly similar to Complainant’s mark. The addition of the generic word "hockey" is of no significance when determining confusing similarity because the HESPELER term is the dominant term. See Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding <westfieldshipping.com> confusingly similar because WESTFIELD mark was dominant element).

Therefore, the elements of Policy ¶ 4(a)(i) have been satisfied.

Respondent had the opportunity to respond and present evidence that it is using the domain names in connection with a legitimate business interest. Respondent chose not to do so. The Panel can draw evidentiary inferences from Respondent’s failure to respond. Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Respondent has not offered any proof that it is using the domain names in connection with a bona fide good or service or for any non-commercial legitimate purpose. Policy ¶ 4(c)(i), (iii).

Complainant and the company it acquired began use of its HESPELER mark as early as 1988, and has been using the mark in commerce to the present. The HESPELER trademark has built up more than 13 years of goodwill. Given Respondent’s recent registration of the domain names containing the HESPELER mark, in comparison to Complainant’s long term use of the mark, the Panel concludes that Respondent has no legitimate rights in either domain name. Respondent is not commonly known by the mark. Policy ¶ 4(c)(ii).

Respondent’s apparent willingness to transfer at least one of the domain names further reveals no rights or legitimate interests in the domain names. It is apparent to the Panel that Respondent registered and used the domain names as leverage to either enter the hockey equipment market or for some other unacceptable purpose. See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).

Consequently, since no other circumstance has been evidenced by Respondent that could reasonably support an inference in its favor under paragraph 4(c) of the Policy, the elements of Policy ¶ 4(a)(ii) have been satisfied.

The totality of Respondent’s conduct evidences bad faith registration and use of the domain names.

There can be no dispute that the ownership of the "hespeler.com" and "hespelerhockey.com" domain names by someone other than Complainant is likely to cause confusion, mistake, and deception as to the affiliation, connection, or association of Respondent with Complainant. Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant").

Based on correspondence provided by Complainant, it is evident to the Panel that Respondent indicated to Complainant that he was willing to transfer at least one of the domain names. However, when Complainant’s attorneys drafted transfer documents, Respondent never effectuated the transfer. Leading Complainant to believe that a transfer is imminent, but failing to perfect the transfer is evidence of bad faith registration and use. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding bad faith where Respondent sent e-mails to the Complainant indicating that it would cancel the domain name registration, but refused to transfer it to the Complainant).

Therefore, the elements of Policy ¶ 4(a)(iii) have been satisfied.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "hespeler.com" and "hespelerhockey.com" be transferred from the Respondent to the Complainant.