Generic Top Level Domain Name (gTLD) Decisions

DECISION

Tweetsie Railroad, Inc. v. Amer-Con Industries

Claim Number: FA0201000104187

PARTIES

The Complainant is Tweetsie Railroad, Inc., Blowing Rock, NC (“Complainant”) represented by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman LLP.  The Respondent is Amer-Con Industries, Montville, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tweetsierailroad.com>, registered with eNom.

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 January 30, 2002; the Forum received a hard copy of the Complaint on January 31, 2002.

On January 31, 2002, eNom confirmed by e-mail to the Forum that the domain name <tweetsierailroad.com> is registered with eNom and that the Respondent is the current registrant of the name.  eNom has verified that Respondent is bound by the eNom 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 February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 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@tweetsierailroad.com by e-mail.

A timely Response was received and determined to be complete on February 21, 2002.

Additional submissions were received timely on February 22, 2002 and February 24, 2002.

On March 4, 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

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to Complainant’s service mark; that the Respondent has no rights or legitimate interest in the disputed domain name; and that the domain name at issue was registered and is being used in bad faith.

B. Respondent

The Respondent contends that he registered the domain name at issue in good faith and intended to use it for his own website.

FINDINGS

The Complainant operates a theme park and tourist destination, which is very well known, especially in the Southeastern United States.  The Complainant opened this attraction to the public in 1957, and its service mark has been in continuous use in commerce since then.    The Complainant holds a trademark registration for use of the TWEETSIE RAILROAD mark in association with amusement park services, and this mark is now uncontestable under United States law.

The Respondent offers no details on what type of commerce it is engaged in.  The Respondent states that it purchased the domain name at issue to create a website that would appeal to younger children, and that the website would involve the use of a train.  On June 17, 1999, the Respondent send a communication to the Complainant stating that he had been a patron of the park and had purchased the domain name at issue for an  investment purpose.  He then offered to sell the domain name to the Complainant for the sum of $1,000.00.

Further, the Respondent asserts that he is not subject to the UDRP.  The UDRP was made a part of the Respondent’s registration agreement with its original Registrar, and when the Respondent renewed the registration with a new Registrar in January 2002, a new registration agreement incorporating the UDRP was executed by the Respondent.

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

The domain name at issue is identical to Complainant's service mark because as it  incorporates the Complainant's mark in its entirety, merely adding the top-level domain name ".com".  The addition of the top-level domain name does not create a distinctive mark.  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); 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).

Rights or Legitimate Interests

It does not appear that Respondent is using the domain name at issue for a bona fide offering of goods and services.  Rather, it appears that the Respondent registered the domain name at issue for the express purpose of selling it back to the Complainant.  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); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

The Respondent, is not commonly known by <tweetsierailroad.com> nor has it ever been known by TWEETSIE RAILROAD.  The Respondent is not an agent or licensee of the Complainant.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Registration and Use in Bad Faith

The evidence presented by both parties clearly shows that the Respondent visited the Complainant’s theme park, and registered the domain name at issue for the express purpose of selling the domain name back to the Complainant.  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the  intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent).

DECISION

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

Honorable Paul A. Dorf (Ret.), Panelist
Dated:  March 19, 2002

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