Claim Number: FA0902001247548
Complainant is City of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cityofeagan.org>, registered with 1 & 1 Internet AG.
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.
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 firstname.lastname@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a municipal corporation in
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.)
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.
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.
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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