Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Barry R. Reecher, Fairfield, MA, USA ("Complainant") represented by John P. Halvonik. The Respondent is TP Productions, Riverside, AL, USA ("Respondent").

The domain name at issue is "teamwhitetail.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 5, 2000; The Forum received a hard copy of the Complaint on December 5, 2000.

On December 7, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "teamwhitetail.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 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 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@teamwhitetail.com by e-mail.

On January 3, 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 contends that the domain name at issue is identical or confusingly similar to Complainant’s trademarks, 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

The Respondent contends that neither of the Complainant’s trademark registration extend to the Complainant the right to the domain name at issue and that Respondent did not register the domain name in bad faith.

The Complainant holds two United States Federal Trademark Registrations for the mark Team Whitetail, one used for goods, namely videotapes featuring hunting and one used for services, namely organizing deer hunts for others. These marks have been in use since 1996, prior to Respondent’s registration of the domain name.

The Respondent produces a television show entitled Better Builts World of Outdoors and directs his viewers to the web site by ads that run during the television show. The Respondent states that it offered Complainant the free and unlimited use of a portion of the web space to promote and/or sell his products and services. The Complainant declined.

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 domain name is identical to the Complainant’s trademark with the only difference being the addition of the ".com" as the extension for the top level of domain name. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Respondent has never been known by the name in question; admits that it does not engage in any form of e-commerce, and admits it does not directly sell or offer to sell any products or services. Given these facts, it is evident that the Respondent has no rights or legitimate interests in the domain name at issue. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The registration of this domain name prevents the Complainant from reflecting its marks in corresponding domain names important to its business, thereby disrupting the Complainant’s business. The Respondent was actively aware of the Complainant’s mark and such knowledge is believed to predate the registration of the domain name, as the Complainant’s first use of the mark dates back to January, 1996. The reflection of the Complainant’s mark in the domain name may confuse the public as to the source of the Complainant’s goods and services. As the Respondent states its purpose for the website was to provide information and resources relating to deer hunting, it would appear that the Respondent should have known of the Complainant’s famous mark, as the Complainant is actively engaged in the business of organizing deer hunts and marketing prerecorded video tapes featuring hunting. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr.17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "TEAMWHITETAIL.COM" be transferred from the Respondent to the Complainant.