Btex Limited v. Chad Noble dba Groundchalk Limited
Claim Number: FA0111000102464
Complainant is Btex Limited, ENGLAND (“Complainant”) represented by Tim Toomey, of v-lex Limited. Respondent is Chad Noble dba Groundchalk Limited, Chelmsford, Essex, ENGLAND (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <streetmap.info>, registered with SRS Plus.
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.
The Honorable Charles K. McCotter, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 19, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.
On November 20, 2001, SRS Plus confirmed by e-mail to the Forum that the domain name <streetmap.info> is registered with SRS Plus and that Respondent is the current registrant of the name. SRS Plus has verified that Respondent is bound by the SRS Plus 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 November 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 20, 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 firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on December 17, 2001.
Complainant’s additional response was received on December 17, 2001. Respondent’s additional response was received on December 18, 2001. These additional submissions were timely and were considered by the Panel.
On December 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant Btex Limited, challenges the use of the domain name <streetmap.info>
by Respondent, Chad Noble d/b/a Groundchalk Limited. Complainant contends that Respondent’s domain name <streetmap.info> is confusingly similar to its mark “streetmap,” since Complainant and Respondent offer similar services on their websites. Complainant claims to own common law rights in “streetmap”, “streetmap.co.uk” and “streetmap.com” through an established and strong reputation. Respondent has not been commonly known as “streetmap” and has acquired no reputation, branding, or registered or unregistered rights in that name. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. By using the domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website thereby creating a likelihood of confusion with Complainant’s mark. Finally, Complainant contends that Respondent was put on constructive notice of Complainant’s common law mark, as it had worked with Complainant before it launched the disputed domain name and was undoubtedly aware of Complainant’s other Internet sites.
Respondent contends that Complainant has no protectable interest in the domain name <streetmap.info> because the name is descriptive. Further, the disputed domain name is not confusingly similar with Complainant’s mark because there is no risk of confusion among Internet users. Respondent has rights or legitimate interests in the domain name.
C. Additional Submissions
In their additional submissions the parties respond to and challenge the other’s factual assertions.
1. The directors of Complainant are by background IT systems/software designers, developers and consultants. Complainant, Btex Limited, was incorporated as a private limited company in England and Wales on 24 November 1995. Btex Limited was created as a small company, primarily as a vehicle for IT contracting. The original aim of Btex Limited was to supply software, design programs and develop technology for the emerging Internet, and to provide consultant services.
2. In 1996 Complainant recognized the potential for publishing maps on the Internet using the name “streetmap.” Complainant developed its own street mapping technology. Complainant started with maps of London and then expanded to cover mainland UK. Complainant’s intention is to provide a global mapping service. Complainant’s core business now is in its Internet sites.
3. Complainant registered <streetmap.co.uk> on 9 January 1997. At first, <streetmap.co.uk> was offered as a free consumer service. In 1999 Complainant started expanding into a commercial business and into revenue generating services. Complainant has spent a great deal of time and effort on brand awareness and marketing. Several web portals use “streetmap” as their default location-finding service. As <streetmap.co.uk> grew in popularity and success, Complainant expanded to <streetmap.com> in order to launch its mapping services on a worldwide scale. Complainant purchased <streetmap.com> in July 2001 for $157,500.
4. The business of <streetmap.com> is to provide street mapping services throughout the world. It currently provides a comprehensive service of links to a host of street maps throughout the United States as well as links to complementary services such as travel guides, car rental services, currency converters, and journey planners/routers. Additionally, the website offers A-Z country-by-country links to websites containing both national and local maps. Complainant links to competitors as it currently does not provide its own coverage. Future plans for <streetmap.com> are that Complainant intends to provide its own coverage, in particular, to provide European, US and worldwide national and street level maps.
5. <Streetmap.co.uk> provides postcode and address searching and street map facilities for the UK. This service is offered free of charge. The website also offers the following chargeable business services: linked mapping, embedded mapping, commercial print license, store/venue locator, digital data sales, maps, aerial photography, “pocketstreetmap,” consultancy, and hardware sales. Future plans for <streetmap.co.uk>, <streetmap.com> and initial intentions regarding <streetmap.info> are to greatly expand business services to its customers.
6. <Streetmap.co.uk> and <streetmap.com> are popular websites.
7. Complainant does not own any registered trade or service mark in “streetmap”.
8. In October 2001 new, previously unavailable, Top Level Domains were made available for registration by ICANN, including .info, .biz and .pro. Complainant sought to register <streetmap.info> but was unsuccessful in securing the domain name, due to the random selection procedure used for all .info names.
9. Respondent registered <estreetmap.co.uk>. in March 2000 and began providing “streetmap” sites for the European mainland. Respondent does not own any registered trade or service mark in “streetmap;” however, Respondent has built up significant success through the use of “streetmap” as part of its service title and site description. Respondent has been using the single word “streetmap” as part of it service mark since March 2000. Respondent’s site has been the number one ranked site on Alta Vista for a search of “streetmap” and “Europe” for over 12 months and is also the number one site for a search of “streetmap Europe” on all the major worldwide search engines and many of the local European non-English language search engines.
10. In 1999 Complainant and Respondent had discussions about a project called Q60, an Internet restaurant guide and food order delivery service. Complainant was to develop the technology for map guides to get to restaurants and promote the business through the streetmap.co.uk website. The discussions failed and did not lead to a joint venture. According to Complainant, on 5 March 2000, the day after the Q60 discussions fell through, Respondent registered <estreetmap.co.uk>.
11. Respondent successfully registered <streetmap.info> on 17 September 2001 through the Afilias random selection process. Respondent first used the website on 23 October 2001. Respondent’s domain name <streetmap.info>contains links to mapping websites for five different countries in Europe, including England.
12. “Streetmap” is a descriptive term in wide usage by many companies across the Internet. The global and country based “streetmap” domains (plain and with generic prefixes) are owned by many different companies.
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
Complainant has failed to show proof of a registered trademark. Nor has Complainant shown proof of any common law trademark rights.
To have protectable common law trademark rights, Complainant must prove secondary meaning or inherent distinction. Complainant has failed to prove either. In Ford Motor Co. v. Summit Motor Products, Inc. 930 F. 2d 277, 292, n. 18 (3rd Cir. 1991), the Court noted that “distinctive marks include those which are arbitrary, fanciful or suggestive.” The phrase “streetmap” is not specific to or synonymous with the product but rather derives from two generic words. As such the name “streetmap” is descriptive, not distinctive.
Nor has Complainant shown secondary meaning. Secondary meaning is shown where in the mind of the public, the primary significance of a product feature or term is to identify the source of the product itself. Id. Complainant has failed to show that the relevant public perceives the phrase “streetmap” as a trademark rather than as a mere description of the goods or services. See 15 U.S.C. 1052 (f).
As Complainant has failed to establish a protectable interest in the “streetmap” name, it is unnecessary for the Panel to address the second and third elements.
Respondent alleges that Complainant is engaged in reverse domain name hijacking. Complainant has not engaged in reverse domain name hijacking.
Based upon the above findings and conclusions, I find in favor of Respondent. Therefore, the relief requested by Complainant pursuant to Paragraph 4.i of the Policy is Denied. Respondent shall not be required to transfer to Complainant the domain name <streetmap.info>.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: January 11, 2002
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