DECISION

Austin, Nichols & Co. v. Dave Petersen

Claim Number: FA0208000117913

PARTIES

Complainant is Austin, Nichols & Co., White Plains, NY (“Complainant”) represented by Louis S. Ederer, of Gursky & Ederer, LLP.  Respondent is Dave Petersen, Ludington, MI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wildturkey.info>, registered with domainbargain.com.

PANEL

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.

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 9, 2002; the Forum received a hard copy of the Complaint on August 12, 2002.

On August 22, 2002, domainbargain.com confirmed by e-mail to the Forum that the domain name <wildturkey.info> is registered with domainbargain.com and that the Respondent is the current registrant of the name.  Domainbargain.com has verified that Respondent is bound by the domainbargain.com 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 August 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 2002 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@wildturkey.info by e-mail.

A timely Response was received and determined to be complete on September 12, 2002.

Complainant filed a timely Additional Submission on September 13, 2002.

Respondent filed a timely Additional Submission on September 14, 2002.

On October 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain name at issue is identical to its registered trademark; that Respondent lacks rights or interest in the domain name; and that Respondent registered and used the domain names at issue in bad faith.

B. Respondent

Respondent contends that he does have a right to use the domain name at issue; and did not register the domain name at issue in bad faith.

C. Additional Submissions

Complainant’s Additional Submission contains a rebuttal to Respondent’s Response, with strong emphasis on what Complainant interprets as Respondent’s admissions as to bad faith.

Respondent’s Additional Submission contains a rebuttal to Complainant’s arguments regarding Respondent’s bad faith registration of the domain name at issue.

FINDINGS

Complainant is a well-known distiller, holding four trademarks with the United States Patent and Trademark Office.  Complainant also uses this trademark in connection with other products and services, including Internet services.  The mark has been in use consistently since 1942.

Respondent has registered over 150 domain names, and states he would like to develop 100 sites that would generate an income stream to support his family.  He also offers domain names for sale.

DISCUSSION

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.

Identical and/or Confusingly Similar

Respondent does not dispute the fact that the domain name at issue is identical and/or confusingly similar to Complainant’s famous mark.

Rights or Legitimate Interests

Respondent has not presented any evidence to dispute Complainant’s contention that the domain name at issue is not being used in connection with a bona fide offering of goods or services.  See Ziegenfelder Co. v. VMH Enters., Inc., D2000-0039 (WIPO Mar. 14, 2000)  (finding that failure to provide a product or service or develop the site demonstrates that Respondent has not established any rights or legitimate interests in the said domain name).

Registration and Use in Bad Faith

The evidence presented would indicated that Respondent registered the domain names at issue to intentionally attract, for commercial gain, Internet users to its website, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website.  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain). 

Additionally, Complainant’s reputation and its substantial consumer recognition and goodwill would lead one to believe that Respondent had to have been aware of Complainant’s mark prior to registering the domain name at issue. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of 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).

DECISION

As all three elements required by the ICANN Policy paragraph 4(a) have been satisfied, 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 name <wildturkey.info> be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist
Dated:  October 17, 2002

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