CV Underground, LLC v. Gulf South Limited
Claim Number: FA0207000116732
The Complainant is CV Underground, LLC, Marietta, GA (“Complainant”) represented by Janet H. Wiles, of Wiles & Wiles. The Respondent is Gulf South Limited, Roswell, GA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <undergroundatlanta.com> and <atlantaunderground.com>, registered with Stargate Communications.
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.
Edward C. Chiasson, Q.C. as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 17, 2002; the Forum received a hard copy of the Complaint on July 22, 2002.
On July 18, 2002, Stargate Communications confirmed by e-mail to the Forum that the domain names <undergroundatlanta.com> and <atlantaunderground.com> are registered with Stargate Communications and that the Respondent is the current registrant of the names. Stargate Communications has verified that the Respondent is bound by the Stargate Communications 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 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 12, 2002.
A timely Additional Submission from Complainant was received and determined to be complete on August 19, 2002.
Respondent objected to the timing of Complainant's Additional Submission, but delivered a reply to it, which the Administrative Panel has considered.
On August 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson, Q.C. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent requests that the Administrative Panel make a finding of Reverse Domain-Name Hijacking.
Underground Atlanta is a shopping and entertainment complex, owned and managed by Complainant, located in the heart of downtown Atlanta, Georgia.
As early as 1968, and continuously since 1989, this complex has marketed the services of various retail shops, restaurants, nightclubs and other businesses engaged in the shopping and entertainment industry, using the name "Underground Atlanta." This name, "Underground Atlanta", is a service mark of Complainant in that, through many years usage, it has come to be understood by the public as designating the business of this particular complex.
To the best of Complainant's knowledge and belief, Respondent is engaged in no business similar to that of Complainant. Respondent has made no use of, or demonstrable preparations to use, the subject domain names in connection with a bona fide offering of goods or services. Respondent does not currently operate a valid web site under either of these domain names.
To the best of Complainant's knowledge and belief, Respondent has never been known by the subject domain names.
On two previous occasions the Forum’s domain name dispute Panels have concluded that Respondent operated in bad faith under similar circumstances. In Ford's Fancy Fruits, Inc. v. Gulf South Limited, FA 95898 (Nat. Arb. Forum Dec. 14, 2000) and Emory Healthcare, Inc. v. Gulf South Ltd., FA 94892 (Nat. Arb. Forum July 5, 2000), the Panel concluded that Respondent's "conduct amounts to opportunistic bad faith" and that "its bad faith is affirmatively demonstrated by the evidence" under factual circumstances very similar to the present dispute.
Complainant has not provided evidence that a mark exists or that it has a superior right to the use of the generic words "Atlanta" or "underground" to the exclusion of Respondent or any other entity. Complainant has failed to prove that it is the owner of a mark, at common law or otherwise.
The words "Atlanta" and "underground" are descriptive and generic terms and used within thousands of other domain names not owned by Complainant.
A reasonable person viewing Respondent’s website would conclude that the subject domain names do not suggest that Complainant is the source, origin or sponsor of Respondent’s website. Complainant acknowledges in its Complaint that Respondent is engaged in no business similar to that of Complainant.
Respondent registered the subject domain name <undergroundatlanta.com> on January 4, 1999 and registered the subject domain name <atlantaunderground.com> on October 17, 1999.
Respondent has operated the website <undergroundatlanta.com> and has been commonly known by the domain name <undergroundatlanta.com> for several years without conflict. The domain name <undergroundatlanta.com> is an information publication for the greater Atlanta metropolitan area including such diverse activities as dining, entertainment, special events, local attractions, and travel information. Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
C. Additional Submissions
Complainant filed an Additional Submission.
A service mark has been defined as “[a] mark used in the sale or advertising of
services to identify and . . . distinguish them from the services of others . . .
mean[ing] any word, name, symbol, or device, or any combination thereof . . . .”
(Black’s Law Dictionary Sixth Edition, 1990). As stated in its Complaint,
Complainant has set forth that as early as 1968, and continuously since 1989, the
shopping and entertainment complex of Underground Atlanta has marketed the
services of various retail shops, restaurants, night clubs, and other businesses in
the shopping and entertainment industry, using the name “Underground Atlanta”,
which has become recognized as a service mark designating this complex as
Complainant’s rights in its service mark of UNDERGROUND ATLANTA are
entitled to protection as “the word or phrase [UNDERGROUND ATLANTA] has acquired a secondary meaning due to (1) its use in connection with the business or trade of the party seeking relief, and (2) the public’s understanding, through such use, that
the word or phrase designates the goods, services, or business of that party.”
See Future Professionals, Inc. v. Darby, 266 Ga. 690, 692, 470 S.E.2d 644
(1996)(citing Giant Mart Corp. v. Giant Disc. Foods, 247 Ga. 775, 279 S.E.
2d 683 (1981)).
Respondent has, at best, merely operated a website with the subject
domain names that currently states only the following:
The Atlanta information publication for dining, entertainment activities,
special events, local attractions, travel information and more. Contact us
at email@example.com or call 770-396-8172 to subscribe.”
Complainant reiterates that to the best of its knowledge and belief,
Respondent has never been known commonly by either of the subject domain names. A recorded greeting at Respondent’s listed XXX-396-8172 telephone number from both its Response and website as stated above only refers to Respondent as Gulf South and not as <undergroundatlanta.com>.
Respondent has prevented Complainant from using its service mark in the subject domain names, resulting in Complainant having to obtain the domain name of <underatl.com> instead of being able to use the subject domain names.
Respondent replied to Complainant’s additional material.
Complainant is a Georgia Limited Liability Company which was formed March 22,1999. The subject domain name <undergroundatlanta.com> was registered January 4, 1999, prior to Complainant’s existence and has been in use since that time. The <atlantaunderground.com> domain name was registered October 14, 1999 and was linked to the <undergroundatlanta.com> web site.
The alleged existence of a common-law mark is not sufficient to meet Complainant’s burden. Because Complainant has not demonstrated it owns a mark, common or otherwise, protected under the Policy, the subject domain names are not identical or confusingly similar. See City of Myrtle Beach v. Information Centers, Inc., FA 103367 (Nat. Arb. Forum Mar. 8, 2002); see also, e.g., City of Dearborn v. Dan Mekled d/b/a ID Solutions, FA 99602 (Nat. Arb. Forum Nov. 12, 2001) (finding insufficient evidence that “City of Dearborn” is a protected common law mark and, therefore, the request to transfer <cityofdearborn.com> was denied).
Before any notice to Respondent of the dispute, it had demonstrated preparations to use and made use of the subject domain names in connection with a bona fide offering of goods or services with no conflict or confusion with Complainant. Respondent has operated the web site <undergroundatlanta.com> since January 1999 prior to Complainant’s existence and prior to any notice of the dispute. Respondent is making a legitimate noncommercial or fair use of the subject domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s alleged mark at issue.
Respondent denies bad faith and says that Complainant has not provided any information to support a finding of bad faith.
Respondent asserts that Complainant has harassed Respondent and is attempting a reverse hijacking of the subject domain names.
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 parties rely on previous domain name dispute decisions and on decisions of domestic courts. While these are neither controlling nor binding on the Administrative Panel, often reference to them is of assistance.
DISCUSSION AND FINDINGS
Identical or Confusingly Similar
Complainant does not have a registered interest in the words "Atlanta" or "underground" either alone or in combination, but it has carried on business as Underground Atlanta for a considerable period of time. Respondent asserts that Complainant has been incorporated only since 1999, but that is not compelling in terms of its rights to the UNDERGROUND ATLANTA mark. It is that phrase and its use in commerce that is controlling, not the corporate name of the user.
The Administrative Panel is satisfied that Complainant has acquired a sufficient common-law interest in Underground Atlanta to meet the threshold requirement of the Policy.
The subject domain name <undergroundatlanta.com> differs from Complainant's rights only by the addition of “.com,” which is immaterial. The subject domain name <atlantaunderground.com> uses the same words, although in different order. Considered objectively, it is confusingly similar.
The Administrative Panel is satisfied that Complainant has met the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The words "Underground Atlanta" are the name of a shopping and entertainment complex in Atlanta, Georgia, that is, they are descriptive of a specific operation. Taken alone, it is questionable whether anyone could acquire rights in the words. "Atlanta" capitalized is the name of a city and is used by Complainant in that context. A strong case can be made for the contention that the word "underground" is generic. The uniqueness is in the use of the words in combination to describe Complainant's operation.
Respondent uses the subject domain names in the context of a different activity. It has no association with Complainant and does not seek to suggest any association. It cannot be said that its initiative is illegitimate or designed to denigrate Complainant or its operations.
The fact that Complainant has a legitimate interest in the words "Underground Atlanta" does not establish that Respondent does not have a legitimate interest in the subject domain names. Its lack of association with Complainant also does not assist Complainant in the context of this case.
Complainant's quotation from Respondent's web page confirms the use which Respondent is making of the words "Atlanta" and "underground". The fact that it does not use its corporate name in doing so does not undermine the legitimacy of the use or of Respondent's interest in the subject domain names.
Similarly, the fact that Respondent's telephone system uses Respondent's name rather than the subject domain names, does not suggest a lack of legitimate interest in the subject domain names in the context of this case.
The Administrative Panel is not satisfied that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant relies on the information it provides to support the other two heads of the Complaint to support its allegation of bad faith. There is no compelling information that does so.
Respondent has come forward to explain its registration and use of the subject domain names. It is using them in the context of a legitimate activity. That activity does not collide with Complainant's commercial interests. Complainant's rights are focused on a specific operation and cannot be used generally to foreclose others from the use of the words "Atlanta" and "underground".
The Administrative Panel is not satisfied that Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings, the Administrative Panel concludes that that Complainant has not established its case. It is dismissed.
The Administrative Panel has considered Respondent's contention that Complainant is guilty of reverse hijacking. Although, Complainant appears to have placed greater weight on its use of the words "Underground Atlanta" than is warranted legally, this appears to have been motivated more by an overzealous desire to protect its operations than an attempt to take away the legitimate rights of Respondent. Caution would be a wise course for the future.
The Administrative Panel is not satisfied that Complainant has attempted to reverse hijack the subject domain names.
Edward C. Chiasson, Q.C., Panelist
Dated: September 13, 2002
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