National Arbitration Forum




Town of Easton Connecticut v. Lightning PC Inc.

Claim Number: FA0808001220202



Complainant is Town of Easton, Connecticut (“Complainant”), represented by Thomas A. Herrmann, of Town of Easton, Connecticut, Connecticut, USA.  Respondent is Lightning PC Inc. (“Respondent”), represented by Mark Wither of Lightning PC Inc., Connecticut, USA.



The domain name at issue is <> (the “Domain Name”), registered with Network Solutions LLC.



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 H. Bernstein as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2008.


On August 13, 2008, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Network Solutions LLC and that the Respondent is the current registrant of the name.  Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC 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 August 18, 2008, the National Arbitration Forum notified Complainant of certain deficiencies in its Complaint.  On August 21, 2008, Complainant supplemented its Complaint to address those deficiencies and provided additional documentary evidence, including information about events that transpired with respect to the Domain Name following the filing of the initial Complaint.


On August 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2008 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 by e-mail.  The Commencement Notification clearly stated:  “Your Response and exhibits must by received by the Forum by 9/11/2008” (both emphases in original).


A Response was received on September 15, 2008 and was deemed deficient by the National Arbitration Forum because it was received four days after the Response deadline.


An Additional Submission was received from Complainant on September 22, 2008.  This Submission was filed within the five day period provided by the National Arbitration Forum’s Supplemental Rule 7.


On September 24, 2008, pursuant to the parties’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David H. Bernstein.


An Additional Submission was received from Respondent on September 25, 2008.  This Submission was filed within the five day period provided by the National Arbitration Forum’s Supplemental Rule 7.



Complainant requests that the Domain Name be transferred from Respondent to Complainant.



A. Complainant

In summary, Complainant makes the following arguments in support of its claim:


The Domain Name, <>, is identical to the EASTON CT service mark of the Town of Easton, Connecticut (the postal service abbreviation for Connecticut is CT).  Until recently, information about the Town of Easton could be accessed at the website to which the Domain Name resolved.  Respondent, which has provided web hosting services on the Town’s behalf, shut down access to the website in August 2008 after the Town was late in providing payment on Respondent’s invoices.  The Town subsequently registered a new domain name, <>, and moved the Town’s website to that new address.  However, considerable confusion remains among Town residents who associate the Domain Name <> with the Town and the services that it provides, and are used to accessing information about the Town of Easton at the website to which the Domain Name, <>, used to resolve.    


The Respondent has no rights or legitimate interests in the domain name.  The Town of Easton hired Respondent to maintain and host content on its behalf, and Respondent received compensation for those services.  There is no indication that Respondent has used or is preparing to use the domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name. Respondent is not known by the domain name, nor is it connected or affiliated with the Town of Easton in any way other than through the business relation described above. 


Respondent registered and used the Domain Name in bad faith. Its chief purpose was to profit from the transference of the domain name to the Town of Easton and thereby take undue advantage of its status as the sole provider and maintainer of Easton’s IT systems and website.  Respondent retained the domain name with the intention of disrupting town business and preventing Easton from switching to another service provider.  This prevents the Town from acting in the best interests of its residents.  In support of this contention, Complainant offers into evidence a letter serving notice to Complainant that it must withdraw its Complaint in order for Respondent to make the website accessible.  The letter claims that ICANN issues caused technical difficulties which prevented it from making any changes to the site.  Complainant argues that this letter was an attempt to force it to resume business with Respondent against the best interests of the Town.  Moreover, Complainant offers into evidence a letter from Network Solutions supporting its claim that any changes made to the website that prevented access were under the complete control of Respondent


B.  Respondent

As noted above, Respondent’s Response was received by the National Arbitration Forum four days late.  No reason or excuse was provided in the Response for the late submission. 


In the Response, Respondent states that the Domain Name is “a generic town name and State reference.”  Respondent states that it registered the Domain Name in good faith in connection with the web hosting services it has provided to the Town.  When the Town was late in paying outstanding invoices totaling approximately $1,300.00, Respondent, on or about August 13, 2008, turned off its services, thereby deactivating all access to the Town’s website.  Respondent claims that such deactivation is a “common practice when accounts are delinquent.”  Respondent concedes that it received payment on August 25, 2008, at which time, it states, service was restored.  The Panel, however, has been unable to access the Town’s website at the <> address; when the Panel attempts to access that website, it receives an error message indicating that the website is not available.


Respondent further claims that, on September 4, 2008, it registered EASTONCT.ORG as a service mark with the State of Connecticut.  Accordingly, Respondent contends, it owns rights in that service mark and any transfer of the Domain Name to the Town will result in an infringement of Respondent’s registered service mark. 


C.  Supplemental Submissions

In their supplemental submissions, the parties trade further allegations concerning their disputes over payment for web hosting services, ownership of the Domain Name and the content at the Town’s website, ownership of the copyrighted content of the Town’s website, and the validity of Respondent’s State of Connecticut service mark registration for EASTONCT.ORG.



As an initial matter, the Panel must first determine whether to accept the late-filed Response and the parties’ supplemental submissions.


The deadline for submission of a Response is clearly articulated in the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and was highlighted in the National Arbitration Forum’s Commencement Notification.  As the panel held in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., D2003-0033 (WIPO Apr. 1, 2003), “it is important to apply the Rules as written, absent a good reason. Otherwise, parties will feel free to disregard deadlines and Respondents will regularly submit late responses.  Thus, absent good cause, the majority of the Panel holds that late-filed responses should be disregarded.”  See also Museum of Science v. Dare, D2004-0614 (WIPO Oct. 11, 2004) (“[m]any panels have disregarded late-filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses”); see also GmbH v. Olic, D2005-0994 (WIPO Dec. 8, 2005) (rejecting response filed two days late when only cause given was that respondent had “‘difficulties’ in obtaining evidence, without any explanation of what those ‘difficulties’ were”); see also Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006) (“absent exceptional circumstances supported by good cause, panels should not accept late-filed responses, even in the absence of prejudice”).  Because Respondent has made no showing whatsoever of any circumstances, exceptional or otherwise, justifying its late-filed Response, the Panel shall disregard the Response.


Complainant’s supplemental submission largely consists of a re-arguing of the issues in the Complaint.  Although the National Arbitration Forum’s Supplemental Rules provide a mechanism for filing Supplemental Submissions, the National Arbitration Forum’s Supplemental Rule 7 cannot trump the ICANN Rules and Policy, which grant the Panel the sole discretion on whether to accept a supplemental submission.  See Elec.Commerce Media, Inc. v. Taos Mountain, FA 95344 (National Arbitration Forum Oct. 11, 2000); see also Bar, Inc. v., FA 829161 (National Arbitration Forum Jan. 9, 2007).  It thus is within the Panel’s discretion to decide whether to accept all or part of the parties’ supplemental submissions.


To the extent Complainant’s Supplemental Submission simply reargues its case or discusses issues it should have anticipated in its Complaint, those aspects of the Supplemental Submission will also be disregarded.  Id. (“Because the Reply does not add any new facts or arguments that were not available to Complainant at the time of its Complaint, and because the Reply does not address any arguments of Respondent that could not have been anticipated by the Complainant, the Panel declines to consider Complainant’s Reply.”).  There are, however, several aspects of Complainant’s Supplemental Submission that could not have been addressed in the Complaint.  For example, Respondent’s registration of the EASTONCT.ORG service mark with the State of Connecticut occurred after Complainant filed its Complaint; that is a new fact and Complainant is entitled to submit a further submission addressing that factual development.  See Top Driver, Inc. v. Schaengold, D2002-0972 (WIPO Jan. 7, 2003) (submitting new, pertinent facts that did not arise until after submission of Complaint).  Similarly, Complainant has submitted additional evidence reflecting correspondence with Respondent subsequent to Complainant’s August 21, 2008 amended Complaint.  Accordingly, the Panel will accept Complainant’s Supplemental Submission to the extent it addresses these issues.  In the interest of fairness, and in recognition of the obligations imposed by Rule 10(b), the Panel deems it appropriate to allow Respondent an opportunity to respond to these aspects of Complainant’s Supplemental Submission, and thus the Panel will accept Respondent’s Supplemental Submission to the extent it addresses these issues.  Id.; see also Pac. Fence & Wire Co. v. Pac. Fence, D2001-0237 (WIPO June 11, 2001).


Turning to the merits of this dispute, Paragraph 15(a) of 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.


As the recitation of the facts above makes clear, this is hardly a typical cybersquatting case.  In fact, it is not a cybersquatting case at all.  Rather, as was the case in, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), this dispute is essentially a contract dispute.  As the panel in held:


This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. . . .  To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.  Latent Technology Group, Inc. v. Bryan Fitchie, NAF File No. 95285 (Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).


That Complainant has failed to satisfy the requirements of the Policy is all the more apparent when one applies the relevant law to the facts of this dispute.  Most obviously, Complainant cannot satisfy the first element of the Policy because it cannot show service mark rights in the words EASTON CT.


Despite the parties’ apparent agreement that EASTON CT can serve as a service mark for services related to the Town of Easton, Connecticut, trademark law is to the contrary.  As numerous courts and UDRP panels have held in other cases, geographical terms generally cannot be registered as trademarks or service marks for goods and services related to the areas to which they refer because their function is purely descriptive.  See, e.g.,, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617, 629 (4th Cir. 2003) (“Under the Lanham Act, and apparently even under Spanish law, the City Council could not obtain a trademark interest in a purely descriptive geographical designation that refers only to the City of Barcelona.”); see also City of Lake Worth v. John C. Becker, Inc., D2003-0576 (WIPO Sept. 18, 2003) (provision of customary municipal services such as tourism promotion under the name “City of Lake Worth” is insufficient to establish trademark rights).  For this reason, geographical terms are typically not protected under the Policy either.  See Empresa Mun. Promociòn Madrid S.A. v. Easylink Services Corp., D2002-1110 (WIPO Feb. 26, 2003); see also Land Sachsen-Anhalt v. Skander Bouhaouala, 2002-0273 (WIPO July 8, 2002).  


It is possible, however, to acquire trademark rights in a geographical term if the term is used as a mark for goods and services unrelated to the geographic location and if the term has acquired a secondary meaning that connects it in consumers’ minds to a source other than the geographic location. See e.g., Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, D2007-1318 (WIPO Oct. 29, 2007) (“ZERMATT is inherently distinctive when used in connection with goods and services that lack a goods-place association to Zermatt”); see also BAA plc v. Larkin, D2004-0555 (WIPO Nov. 11, 2004) (GATWICK has acquired distinctiveness with respect to airport services as opposed to merely identifying a geographical region); see also Kur-und Verkehrsverein St. Moritz v., D2000-0617 (WIPO Aug. 17, 2000) (trademark rights shown when ST. MORITZ was registered in 27 countries in connection a wide range of goods and services ); see generally WIPO Overview of WIPO Panel View on Selected UDRP Questions (the “WIPO Decision Overview”) Sec. 1.5 (“The report of the Second WIPO Internet Domain Name Process declined to specifically extend protection to geographical terms under the UDRP.  Some geographical terms however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark.”).


In this case, the term EASTON CT  is being used solely in connection with a website that disseminates information about the Town of Easton, Connecticut, and in connection with other services all of which are related to the Town of Easton, Connecticut.  As such, EASTON CT is merely descriptive, cannot serve as a trademark, and is not a term that is protected under the Policy. 


Ironically, Respondent has taken the position that EASTONCT.ORG can serve as a trademark.  In fact, Respondent has registered EASTONCT.ORG as a service mark in the State of Connecticut.  Normally, a trademark registration is entitled to a presumption of validity and to deference by a UDRP Panel.  However, where the mark has been registered only in a State, and not with the United States Patent and Trademark Office (or a comparable foreign trademark office), no such deference is due because State registrations, which are usually granted automatically or only after a cursory review for exact matches on the State’s trademark registry, are unexamined and thus are not deserving of any presumption of validity.  See Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006); see also Randan Corp. v. Rapazzini Winery, D2003-0353 (WIPO July 28, 2003) at n.1; see also WIPO Decision Overview § 1.1.  In any event, given that EASTONCT.ORG is merely descriptive when used in connection services related to the Town of Easton, Connecticut, it appears that Respondent’s state trademark registration is invalid, which constitutes “compelling evidence” that justifies a decision to disregard the trademark registration.  See Elec. Commerce Media, Inc. v. Taos Mountain, FA 95344 (National Arbitration Forum Oct. 11, 2000)


Because the Panel has determined that Complainant has failed to meet its burden under Paragraph 4(a)(1), it is not necessary to discuss whether Respondent has rights or legitimate interests in the mark or whether it registered and used the mark in bad faith.  The Panel notes, though, that this decision, which turns in part on the technical issue of whether EASTON CT can function as a trademark, should not be seen as validation of either party’s position in connection with their business dispute.  Whether Complainant was within its right to withhold payment to Respondent, which party owns the copyrighted content displayed on the Town’s website, whether Respondent’s state trademark registration for EASTONCT.ORG should be cancelled, and whether Respondent was within its right to deactivate Complainant’s website as a way of pressuring Complainant to make payment, are issues that will have to be addressed in another forum.   Better yet, these business disputes likely can (and should) more efficiently be resolved through direct, good faith discussions between the parties rather than by expanding this legal dispute into new fora.



For all the foregoing reasons, the Panel concludes that relief shall be DENIED.



David H. Bernstein, Panelist
Dated: October 12, 2008







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