Claim Number: FA0707001025866
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southernhighlandscrossroads.com>, registered with Enom, Inc.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2007.
On July 2, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <southernhighlandscrossroads.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 July 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 26, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on July 26, 2007.
A timely Additional Submission and the requisite panel fee were received prior to the deadline of July 31, 2007.
On July 31, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
On August 6, 2007, Respondent filed a Response to Complainant’s Additional Submission. However, because the document was received after the decision was written and since the decision was in favor of Respondent, this Response has not been considered.
On August 6, 2007, Complainant filed an Objection to Respondent’s Response of that same day. However, since, as noted above, Respondent’s Response was not considered, neither was Complainant’s Objection thereto.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the <southernhighlandscrossroads.com> domain is confusingly similar to federally registered trademarks owned by it, several of which have incontestible status. Complainant also states that the <southernhighlandscrossroads.com> domain name was registered in bad faith because it was adopted with knowledge of Complainant’s trademarks and is being used in bad faith because Respondent has attempted to mitigate potential confusion via a disclaimer on the website to which the domain resolves, and asserts that Respondent is using the <southernhighlandscrossroads.com> domain to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s trademarks. Complainant further contends that an offer to sell advertising space on Respondent’s website reached by the <southernhighlandscrossroads.com> domain is additional evidence of bad faith.
Respondent contends that due to the number of businesses associated with the name Southern Highlands and the fact that it is a geographic location, that Complainant’s rights are limited to the specific goods and services covered by its registrations, and that Respondent’s use of the Southern Highlands name as part of the Complainant’s <southernhighlandscrossroads.com> domain is a legitimate generic use of that name. Respondent further contends that it has rights and legitimate interests in the <southernhighlandscrossroads.com> domain since it is using the domain with a respect to a website directed to providing the residents of the Southern Highlands, Nevada community with useful information none of which is competitive with any goods or services offered by Complainant.
C. Additional Submissions
In its additional submissions the Complaint reiterates some of the contentions noted above and also asserts that Complainant could not have any rights or legitimate interests in the the <southernhighlandscrossroads.com> domain because it does not have its permission to incorporate Complainant’s trademarks into its domain and because it is not being used with a bona fide offering of goods and services nor is being used for noncommercial purposes.
The Panel finds that Southern Highlands is a
geographic designator that forms part of numerous businesses in the Southern
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.
Respondent alleges that the words
“southern highlands are used in its <southernhighlandscrossroads.com>
domain name in a geographically descriptive sense of a much larger
master-planned community.” Respondent
notes that the words “southern highlands” are used in its geographic sense by
numerous parties that are unaffiliated with Complainant and the Panel has taken
notice of the existence of the Southern Highlands Homeowners, Southern Highland
Ace Ware, Southern Highlands Preparatory, Southern Highlands Cleaning, Southern
Highlands Medical Transcription, among others.
Thus, the Panel finds that Respondent’s domain name is not confusingly
similar pursuant to Policy ¶ 4(a)(i). See
Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001)
(“Respondent has shown that
Respondent claims that despite Complainant’s trademark registration for the SOUTHERN HIGHLANDS mark, Respondent has used the terms of the mark in the <southernhighlandscrossroads.com> domain name in a geographically descriptive manner, referencing a “large, public, geographic location in Clark County, Nevada.” Respondent argues that Complainant’s property makes up less than 10% of the entire master-planned community on which it alleges to hold exclusive rights. As noted above, numerous unaffiliated businesses use the name “southern highlands” in its descriptive sense as part of their tradename or trademark. Thus, the Panel finds that Respondent can establish rights or legitimate interests in the <southernhighlandscrossroads.com> domain name under Policy ¶ 4(a)(ii) based on the geographically descriptive nature of the terms. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).
Respondent further contends that it registered
domain name to operate an informational website directed toward current and
prospective residents of the
The Panel holds that Respondent did not deliberately register the <southernhighlandscrossroads.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii), because the domain name is primarily made up of common terms and Respondent did not intend to misleadingly divert Internet users, including consumers seeking information on Complainant, to its website. See Paigen v. Research & Design, FA 791739 (Nat. Arb. Forum Oct. 25, 2006) (finding no bad faith registration and use of the <chaco.com> domain name where the respondent registered it to provide information on the “Chaco Canyon” and Internet users did not exclusively associate the CHACO mark with the complainant); see also Deer Valley Resort Co. v. Intermountain Lodging & Reservation Ctr., FA 474344 (June 27, 2005) (concluding that the respondent did not register the <deervalleylodging.info> domain name in bad faith because it was geographically descriptive).
Respondent also claims that it has put a disclaimer on its website at the <southernhighlandscrossroads.com> domain name. The Panel finds that Respondent’s use of a disclaimer suggests that it did not register and is not using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that because the respondent’s website contained an express disclaimer of any affiliation with the complainant, the respondent has rights or legitimate interests in the <best-of-vanguard.com> domain name and did not register it in bad faith); see also Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith when the respondent put a very visible disclaimer on its website located at <catparts.com> , because the disclaimer eliminated any possibility that the respondent was attempting to imply an affiliation with the complainant and the complainant’s CATERPILLAR mark).
Having failed to establish any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <southernhighlandscrossroads.com> domain name shall be retained by Respondent.
David S. Safran Panelist
Dated: August 14, 2007
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