National Arbitration Forum

 

DECISION

 

Robert Zimmer v. Conveyor Group c/o Aaron Popejoy

Claim Number: FA0812001240484

 

PARTIES

Complainant is Robert Zimmer (“Complainant”), represented by Steven L. Rinehart, Utah, USA.  Respondent is Conveyor Group c/o Aaron Popejoy (“Respondent”), represented by Richard Pray, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <imperialvalley.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

James Bridgeman, G. Gervaise Davis, III and Bruce E. Meyerson as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 31, 2008.

 

On January 2, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <imperialvalley.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 27, 2009 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@imperialvalley.com by e-mail.

 

On January 27, 2009, the National Arbitration Forum granted Respondent’s January 26, 2009 Request for Extension of Time to Respond to Complaint with Complainant’s Consent, thereby setting a deadline of February 2, 2009 by which Respondent could file a Response to the Complaint.

 

A timely Response was received and determined to be complete on February 2, 2009.

 

An Additional Submission was received from Complainant on February 9, 2009, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.

 

On February 11, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed James Bridgeman, G. Gervaise Davis, III and Bruce E. Meyerson as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant began doing business in 1989 as Spectrum Advertising located in El Centro, California, in the Imperial Valley.  It registered the disputed domain name in 1996.  Complainant contends that some time in 2003 the domain name was “fraudulently converted” by Respondent.

 

After attempting to unsuccessfully negotiate with Respondent to reclaim the domain name, Complainant sued Respondent in the Small Claims Division of the California Superior Court in Imperial County.  Although Complainant prevailed in court, the Registrar, Network Solutions, refused to transfer the domain name.  Respondent petitioned the Superior Court for a trial de novo.  The Superior Court referred the matter to this arbitration and stayed the proceedings pending the outcome of this dispute. 

 

Complainant states that it has been using the words IMPERIAL VALLEY “online since 1996” and that others “have come to recognize Complainant’s Mark as the distinctive identifier that it is.”  Complainant contends that Respondent lacks rights or any legitimate interest in the disputed domain name as it is “intentionally using stolen property from another.”  Complainant contends that Respondent registered the domain name in bad faith because it “illicitly registered the Disputed Domain through theft.”

 

B.     Respondent

 

Respondent contends that the domain name was lawfully transferred to it by the Imperial County.  Respondent’s representative, Aaron Lovejoy, states that in 2002 Respondent was hired by the county to provide, among other things, web development services.  According to Mr. Lovejoy, until 2003 the disputed domain name had been “administered” by Complainant.  In March 2003 when the county was experiencing budget problems, the county transferred the website to Respondent to be used as a “free access public website” in order to support the goals of the county’s Community and Economic Development office. 

 

Respondent disputes the assertion that Complainant has been using the words IMPERIAL VALLEY as a trade or service mark.  Thus, Respondent denies that Complainant has “rights” in the mark IMPERIAL VALLEY.   Respondent denies that Complainant was ever the registered owner of the domain name; according to Respondent he was an “administrative/billing contact.” 

 

C.     Additional Submissions

 

In its Additional Submission, Complainant offers the letter of a former county Administrative Officer of Imperial County who states that while he worked for the county from 1986 to 2000 Complainant owned the domain name and the county used it under the “control” of Complainant.

 

Complainant also presented the Declaration of the county’s Information Systems Manager who stated that as of the time he left employment with the county in 2007, Complainant owned the domain name and that the name was never owned by Imperial County.

 

FINDINGS

Complainant began doing business in 1989 as Spectrum Advertising located in El Centro, California, in the Imperial Valley.  Complainant holds no trademarks or service marks with the term “Imperial Valley.”  There is no evidence that the term “Imperial Valley” has acquired secondary meaning with respect to any activity or business conducted by Complainant.

 

DISCUSSION

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.

 

Preliminary Issue: Jurisdiction

 

Although the Panel does not believe it is necessary to recite the entire history of the parties’ dispute over the ownership of the domain name, it is appropriate to observe that there is a related proceeding pending in the California superior court.  Because the court has stayed the proceeding pending this arbitration and because neither party has objected to this Panel’s jurisdiction on the grounds that a corollary proceeding is pending in court, the Panel concludes that it is appropriate to resolve the issues before it.  See, e.g., Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court). 

 

Identical and/or Confusingly Similar

 

Despite the relatively modest showing that must be made by a complaining party to establish rights in a domain name, in this case, the Panel concludes that Complainant has not passed that threshold.

The general rule, adopted in the Report of the Second WIPO Internet Domain Name Process (Sept. 3, 2001), is that geographical names are not ordinarily entitled to protection under the UDRP.  See generally Robert A. Badgley, Domain Name Disputes § 6.06 (2002).  It is possible, however, for a geographic term to be protected under the UDRP, but the complainant must show that it has rights in the mark and that the term is being used as a trademark.

For example, in Puerto Rico Tourism Co. v. Virtual Countries, Inc., D2003-1129 (WIPO Apr. 14, 2003), the panel refused to transfer the domain name <puertorico.com> to the complainant even though it owned a number of registered marks that contained the words “Puerto Rico.”  The panel reasoned that although the complainant had used the words “Puerto Rico” as a descriptive geographic place name in trademarks comprising jingles and phrases, the complainant failed to show that the words had acquired any secondary meaning.

In Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.com Limited, D2006-0749 (Oct. 13, 2006), relied upon by Complainant, the panel acknowledged that the complainant in that case had valid service marks issued by Spanish trademark authorities which included the word “Andalucia.”  The panel concluded that “Andalucia” was the “dominant feature” in at least one of the marks and found that the domain name <andalucia.com> was confusingly similar to a mark in which the complainant had rights.

 

Because Complainant has no registered trademark incorporating the words “Imperial Valley,” he offers the following in his Declaration as the basis on which to establish his “rights” in the term:

 

            I have been using the IMPERIAL VALLEY mark online since 1996.

 

            From 1996 through 2003, thousands of unique visitors visited [the] Disputed Domain.  Individuals and other entities have come to recognize my Mark as the distinctive identifier that it is.  Imperial County knew and associated the Disputed Domain with Complainant.  I associated the Disputed Domain with my services by placing links to its other professional domains on the Disputed Domains.

 

This evidence is insufficient to overcome the general rule described above.  Unlike Junta de Andalucia Consejeria de Turism, Comercio y Deporte, Turismo Andaluz, S.A., Complainant here holds no trade or service marks using the term “Imperial Valley.”  And like Puerto Rico Tourism Co., Complainant’s generalized statement is insufficient to show that “Imperial Valley” had acquired any secondary meaning.

 

For these reasons, Complainant has failed to show that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which he has rights.

 

Because the Panel concludes that Complainant has not established that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Panel finds it unnecessary to consider the remaining two elements of Paragraph 4(a) of the Policy.  See Dreamgirls, Inc. v. Dreamgirls Entm’t, D2006-0609 (WIPO Aug. 10, 2006).

 

Accordingly, the Panel concludes that the Complaint should be denied.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is ordered that the Complaint is dismissed.

 

 

James Bridgeman, G. Gervaise Davis, III and Bruce E. Meyerson as Panelists.

Dated: February 25, 2009

 

 

 

 

 

 

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