[Indexed as: Pfohl v. Semenik Systems]
[Indexed as: Thetotalpackage.com]
National Arbitration Forum
Administrative Decision

Decision: Forum File No.: 7A0002000093546
Judgement: April 10, 2000

Arbitrator: Herman D. Michels

ICANN's domain name dispute resolution policy - U.S. Trademark - Service mark - Confusingly similar domain name - Latham Act - Domain name suggesting affiliation - Misleading consumers for commercial gain.

The Complainant uses the mark "THE TOTAL PACKAGE, U.S" in association with entertainment services, namely live performances by a professional wrestler. Complainant holds all right and title in the service mark The Total Package, U.S., which is confusing similar to Respondent's domain name THETOTALPACKAGE.COM.  THE TOTAL PACKAGE mark is advertised and recognized by consumers internationally and Complainant's valuable goodwill extends throughout the United States and the rest of the world. 

Held, Domain name transferred to Claimant.

Respondent's domain name which is confusingly similar to Complainant's mark, is misleading the consuming public as to the source and origin of the services it is selling and suggests affiliation with Complainant that it does not have. 

Respondent does not have any rights or legitimate interests in THETOTALPACKAGE.COM domain name. Respondent registered the domain name THETOTALPACKAGE.COM in bad faith in that by using said domain name Respondent has intentionally attempted to attract for commercial gain internet users to Respondent's website or other on-line location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or location or of a product of service on Respondent's website or location.
The above entitled matter came on for an administrative hearing on April 10, 2000 before the undersigned on the Complaint of Lawrence W. Pfohl (hereinafter "Complainant"), represented by Kenneth A. Cutshaw, Esq. (Holland & Knight, attorneys), against Semenik Systems, Inc. (hereinafter "Respondent"), represented by Brian A. Weinberger, Esq. (The Weinberger Law Firm, attorneys). Upon the written submitted record, including the Complaint and the Response to the Complaint, the following decision is rendered:

PROCEDURAL FINDINGS

Domain Name: THETOTALPACKAGE.COM
Domain Name Registrar: Network Solutions
505 Huntmar Park Drive

Herndon, VA 20170-5139

Domain Name Registrant: Semenik Systems, Inc.

7898 East Acoma Drive, Suite 106

Scottsdale, Arizona 85260

Date of Domain Name Registration: January 21, 1998

Date Complaint Filed: February 7, 2000

Date of Response Filed: March 3, 2000

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (the "Forum") forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN") and the Respondent that the administrative proceeding had commenced. Respondent submitted a Response to the Forum within twenty (20) days pursuant to Rule 5(a). The Complaint and the Response were docketed and forwarded to the undersigned Arbitrator for decision.

The record shows that on January 21, 1998 Respondent registered the domain name THETOTALPACKAGE.COM with the domain name registrar Network Solutions, Inc. Network Solutions, Inc. verified that Respondent is the registrant for the domain name THETOTALPACKAGE.COM. Accordingly, Respondent agreed to resolve any dispute regarding its the domain name registration pursuant to ICANN's rules for uniform domain name dispute resolution policy. Neither the Complainant nor the Respondent contest the jurisdiction of the Forum or the undersigned Arbitrator to resolve this controversy.

FINDINGS OF FACT

1.The service mark on which the Complain is based is THE TOTAL PACKAGE, U.S. Trademark Registration No. 2052134. The Complainant uses the mark in association with entertainment services, namely live performances by a professional wrestler. Complainant holds all right and title in the service mark The Total Package, U.S. Trademark Registration No. 2052134, which is confusing similar to Respondent's domain name THETOTALPACKAGE.COM. This service mark was filed on November 20, 1995. The registration date for said mark is October 8, 1996, and the publication date for opposition was July 2, 1996. The date of first use, according to the U.S. Patent and Trademark Office, is listed as October 1, 1995 and the date of first use in commerce is October 1, 1995. 

2.Respondent's use of THETOTALPACKAGE.COM violates 15 U.S.C. § 1125 of the Latham Act, which provides for the civil liability of any person who uses in commerce any false, misleading or representation of "any word, term, name, symbol, or device or any combination thereof." Respondent's conduct also constitutes dilution in violation of Section 43(c) of the Latham Act, 15 U.S.C. § 1125(c).

3.Complainant advertises and promotes THE TOTAL PACKAGE mark exclusively throughout the United States. THE TOTAL PACKAGE mark is advertised and recognized by consumers internationally and Complainant's valuable goodwill extends throughout the United States and, apparently, the rest of the world.  As a result, Respondent's domain name which is confusingly similar to Complainant's mark, is misleading the consuming public as to the source and origin of the services it is selling and suggests affiliation with Complainant that it does not have. Respondent does not have any rights or legitimate interests in THETOTALPACKAGE.COM domain name. 

4.The domain name THETOTALPACKAGE.COM has been registered and is being used in bad faith. In this regard, there is evidence of Respondent's bad faith in registering the domain name THETOTALPACKAGE.COM in that by using said domain name Respondent has intentionally attempted to attract for commercial gain internet users to Respondent's website or other on-line location by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or location or of a product of service on Respondent's website or location. 

Complainant demands that Respondent immediately relinquish and transfer ownership of the domain name THETOTALPACKAGE.COM and cease and resist from any and all use of The Total Package mark and from engaging in any other activity that fringes on Complainant's mark.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial and neutral, the undersigned makes the following findings and conclusions:

1.The domain name THETOTALPACKAGE.COM registered by Respondent is so close as to be identical or confusingly similar to Complainant's registered service mark The Total Package, U.S. Trademark Registration No. 2052134.

2.The Respondent does not have any right or legitimate interest in respect to the domain name and that the domain name THETOTALPACKAGE.COM has been registered and is being used in bad faith.

DECISION

Based upon the above findings and conclusions and pursuant to Rule 4(i), it is hereby Ordered that:

1.The domain name THETOTALPACKAGE.COM registered by Respondent Semenik Systems, Inc. shall be relinquished and transferred forthwith to Complainant Lawrence W. Pfohl and,

2.Respondent shall cease and desist from any and all use of THE TOTAL PACKAGE mark and from engaging in any activity that infringes on Complainant's said mark.

Herman D. Michels
Arbitrator
Dated: April 10, 2000

Domain Name Transferred