Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Mat Wilkins Captain Wohlt Inn, Hermann, MO, USA ("Complainant") represented by Todd S. Bontemps, of Cooley Godward LLP. The Respondent is Carol Damhorst Hermann Services Netsolutions, Rhineland, MO, USA ("Respondent").

The domain name at issue is "captainwohlt.com", registered with Network Solutions, Inc.

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 16, 2001; the Forum received a hard copy of the Complaint on March 19, 2001.

On March 22, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "captainwohlt.com" is registered with Network Solutions, Inc. and that the 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 March 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 11, 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@captainwohlt.com by e-mail.

A timely response was received and determined to be complete on April 11, 2001.

On April 17, 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 trademark/service mark; that the Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered by the Respondent in bad faith.

B. Respondent

The Respondent contends that the domain name at issue is not identical or confusingly similar, that the Respondent has rights and a legitimate interest in the domain name, and that the Respondent did not register the domain name in bad faith.

In February 2001, Complainant purchased Captain Wholt Inn, located in Hermann, Missouri, along with the trademarks and established goodwill The inns has been in continuous operation since 1981. The Complainant uses the Captain Wholt mark in the marketing and operation of his business, which is the operation of bed and breakfast inns and overnight accommodation reservation services

The Respondent is the registered owner of many domain names, and several of these domain names contain reference to Hermann, Missouri. In addition to owning said domain name, Respondent is the owner/operator of a competing bead and breakfast in Hermann, Missouri, known as White Roses Bed and Breakfast.

The Respondent registered the domain name at issue, along with the domain name "captainwholtinn.com" in February, 2000. The Respondent claims that the reason her business name appears on the registration is that someone named Jason Skaggs had contacted the former owner of Captain Wholt Inn about designing a webpage for them. Since Mr. Skaggs did not have a credit card, the Respondent used her credit card to register the domain name.

These two domain names were then pointed to a website known as "rosegardenbandb.com" which reflects the name of another bed and breakfast owned and operated by Robert and Janet Scheibe. On February 16, 2001, the Complainant wrote separate cease and desist letters to the Respondent and the Scheibes demanding that they stop infringing on Complainant’s trademarks and discontinue using "captainwohlt.com" and "captainwholtinn.com"

On February 22, 2001, the Scheibes informed the Complainant that the "pointers" had been removed.

The registration for both "captainwohlt.com" and "captainwholtinn.com" expired on February 18, 2001. The registration for "captainwholtinn.com" was not renewed; however despite the fact that the Complainant placed Respondent on notice via the cease and desist letter, the Respondent renewed the registration for "captainwohlt.com."

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 Respondent argues that the name "Captain Wohlt" and common law trademark belong to the community of Hermann. Further, the Respondent states that there is another bed and breakfast inn called the Wohlt House, which was the home of Captain Wohlt who was the first mayor of Hermann. Respondent then states that the name "Captain Wohlt" would not be included in the Complainant’s common law rights nor would the goodwill that goes along with the name. However, since it’s inception in 1981, the name "Captain Wohlt" has been used in connection with the inn, the Complainant owns and maintains common law trademark rights in the marks CAPTAIN WOHLT and CAPTAIN WOHLT INN, which it has uses in connection with its bed and breakfast operations. See Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis for making the complaint in the first place); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights).

The Respondent has offered no proof that it is commonly known by the disputed domain name, that it operates a business under the disputed domain name, or that it offers goods or services under the trademark "Captain Wohlt." See Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Further, the domain name at issue was "pointed" to a competitor’s website. See Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites).

The Respondent has offered no evidence to dispute Complainant’s allegations that Respondent registered the domain name at issue for the purpose of creating confusion in the marketplace by attracting Internet users to its website through the use of Complainant’s mark. See 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 the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Further, the Respondent acted in bad faith by "pointing" the domain name at issue to a competitor’s website. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site 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 the Complainant’s marks).

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 "captainwohlt.com" be transferred from the Respondent to the Complainant.