City of
Claim Number: FA0902001247548
PARTIES
Complainant is City of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cityofeagan.org>,
registered with 1 & 1 Internet AG.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 13, 2009; the National Arbitration Forum received a
hard copy of the Complaint on February 13, 2009.
On February 16, 2009, 1 & 1 Internet AG confirmed by e-mail to the
National Arbitration Forum that the <cityofeagan.org>
domain name is registered with 1 & 1 Internet AG and that the Respondent is
the current registrant of the name. 1
& 1 Internet AG has verified that Respondent is bound by the 1 & 1
Internet AG 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 February 24, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 16, 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@cityofeagan.org by e-mail.
A timely Response was received and determined to be complete on March
9, 2009.
Complainant submitted a timely Additional Submission to the National
Arbitration Forum on March 16, 2009, in accordance with the National
Arbitration Forum’s Supplemental Rule 7.
Respondent submitted a timely Additional Submission to the National
Arbitration Forum on March 19, 2009, also in accordance with Supplemental Rule
7.
On March 19, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a municipal corporation in
B. Respondent
Respondent denies that the disputed domain name is identical or
confusingly similar to a mark in which Complainant has rights. Respondent notes that Complainant’s service
mark registration mark disclaims any exclusive right to use CITY OF
C. Additional Submissions
The parties’ unsolicited Additional Submissions largely reiterate
arguments made in the initial submissions, and neither party has identified any
exceptional circumstances that might warrant consideration of additional material. The Panel therefore declines to exercise its
discretion to consider the Additional Submissions. (Respondent’s Additional Submission invites
that Panel to enter a finding of reverse domain name hijacking, on the ground
that Complainant should have known it could not prove the elements required
under the Policy. The Panel declines to enter
such a finding under the circumstances presented in this case.)
FINDINGS
The Panel finds that Complainant has failed
to prove the disputed domain name is identical or confusingly similar to a mark
in which it has rights.
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.
Complainant contends that the disputed domain
name is identical and confusingly similar to its registered service mark. The registered mark consists of a logo representing
a tree accompanied by the words “city of
Because the disputed domain name corresponds to
only that part of the registered mark to which Complainant disclaims any exclusive
right, the Panel holds that Complainant cannot rely upon its registered mark to
satisfy Paragraph 4(a)(i) of the Policy. See,
e.g., Cont’l Casualty
Complainant also claims to possess common-law
service mark rights as a basis for its claim of identicality and confusing
similarity under Paragraph 4(a)(i). However, Complainant has failed to present evidence
of acquired secondary meaning, as required for a claim of common-law rights
under the Policy. See, e.g.,
LogoDesignGuru.com, Inc. v. Oliver, FA 1181507 (Nat. Arb. Forum June 27,
2008). (Furthermore, in light of the
geographic descriptiveness of the phrase as well as the disclaimer in Complainant’s
service mark registration, it appears quite doubtful to this Panel that
Complainant could make such a showing, at least for the phrase CITY OF
The Panel therefore finds that Complainant
has failed to meet its burden of proving that the disputed domain name is
identical or confusingly similar to a mark in which it has rights, as required
by Paragraph 4(a)(i) of the Policy.
In light of the Panel’s dispositive finding
on the first element, the Panel declines to address the question of rights or
legitimate interests.
In light of the Panel’s dispositive finding
on the first element, the Panel declines to address the question of
registration and use in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: March 24, 2009
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