Claim Number: FA0808001220202
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastonct.org> (the “Domain Name”),
registered with Network Solutions LLC.
PANEL
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.
PROCEDURAL HISTORY
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 <eastonct.org> 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 postmaster@eastonct.org 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
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.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In summary, Complainant makes the following arguments in support of its
claim:
The Domain Name, <eastonct.org>,
is identical to the
The Respondent has no rights or legitimate interests in the domain
name. The Town of
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
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 <eastonct.org> 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
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.
DISCUSSION AND FINDINGS
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 Fashiontv.com 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.
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
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 Thread.com,
LLC v. Poploff, D2000-1470 (WIPO
Jan. 5, 2001), this dispute is essentially a contract dispute. As the panel in Thread.com 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
Despite the parties’ apparent agreement that
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
In this case, the term
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
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
DECISION
For all the foregoing reasons, the Panel concludes that relief shall be
DENIED.
Dated: October 12, 2008
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