Claim Number: FA0902001247925
Complainant is Santa Monica Convention & Visitors
Bureau (“Complainant”), represented by Michael
A. DiNardo, of Kelly Lowry & Kelley, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <iamsantamonica.com> and <iamsantamonica.net>, registered with Godaddy.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Professor David E. Sorkin, Paul M. DeCicco, and David P. Miranda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2009.
On February 17, 2009, Godaddy confirmed by e-mail to the National Arbitration Forum that the <iamsantamonica.com> and <iamsantamonica.net> domain names are registered with Godaddy and that the Respondent is the current registrant of the name. Godaddy has verified that Respondent is bound by the Godaddy 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 and email@example.com by e-mail.
A timely Response was received and determined to be complete on March 13, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on March 18, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National Arbitration Forum on March 26, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On March 24, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Professor David E. Sorkin, Paul M. DeCicco, and David P. Miranda, Chair, as Panelists.
Complainant requests that the domain names <iamsantamonica.com> and <iamsantamonica.net> be transferred from Respondent to Complainant.
Santa Monica Convention & Visitors Bureau of Santa Monica, California (“Complainant”), seeks the transfer of domain names <iamsantamonica.com> and <iamsantamonica.net> (“domain names”) from Respondent WeAre LLC of Mount Pleasant, South Carolina (“Respondent”).
Complainant contends that the subject domain names, <iamsantamonica.com> and <iamsantamonica.net> are confusingly similar to or wholly incorporate Complainant’s registered trademarks, inter alia, SANTA MONICA (Stylized) (2,182,952), SANTA MONICA (2,214,325), SANTA MONICA VISITOR CENTER I (Stylized) and Design (3,025,700), SANTA MONICA (Stylized) (3,433,934), SANTA MONICA (Stylized) (3,443,137), SANTA MONICA (Stylized) (3,443,138), SANTA MONICA (Stylized) (3,371,057), and SANTA MONICA (Stylized) (3,367,369).
Complainant contends that it has
several federal trademark applications for the mark IAMSANTAMONICA (stylized
and design). These applications are
pending, and there is no claim that the USPTO has made any final determination
regarding these applications.
Complainant also contends that it began using the mark that is the
subject of these applications as early as December 1, 2007. Complainant contends that its use of the
IAMSANTAMONICA mark has been for and continues to be for goods and services
similar to those provided under its
Complainant owns the domain name registration <santamonica.com>, which it has registered and used since April 1995.
Complainant contends that Respondent has no rights or legitimate interests in the domain names because Respondent registered the subject domain names long after Complainant began using its trademarks, such trademarks acquired secondary meaning, and, in some cases, obtained its trademark registrations. Further, Respondent registered the subject domain names long after Complainant had registered and began using its own <santamonica.com>domain name. Respondent registered the subject domain names solely for the purpose of offering the subject domain names for sale. Complainant cites to Respondent’s business model as stated on its website (<iamdomainnames.com>).
Complainant also contends that it previously licensed one of the subject domain names from Respondent. The licensor/licensee arrangement was memorialized in a signed contract dated December 12, 2007. In paragraph 5 of the License Agreement to use <iamsantamontica.com>, Complainant Licensee acknowledges that Respondent Licensor “owns the Domain Name. LICENSEE acknowledges that any goodwill generated by its use of the Domain Name pursuant to this Agreement inures to the benefit of LICENSOR, and does not create in LICENSEE any right to the Domain Name, including any trademark rights.” Beginning in or about December 2008, instead of a license, Respondent communicated an offer to sell the subject domain name to Complainant for $50,000. The price that Respondent is asking is in excess of Respondent’s out-of-pocket expenses associated with registering and maintaining the domain name registrations.
Complainant contends that its use of the <iamsantamonica.com> domain name via the License Agreement ended on January 23, 2009, and at that time Respondent replaced Complainant’s website with its own website offering <iamsantamonica.com> domain name for sale, and that Respondent also maintains a similar website for <iamsantamonica.net> domain name, which was not subject to the License Agreement. Complainant further contends that any trademark rights that have been created in the subject domain names were abandoned by Respondent with the intent not to resume as a trademark. Complainant contends that the registration and use of the subject domain names is in bad faith, based upon the admissions of the Respondent, that Respondent intended to profit from the resale of the subject domains.
Respondent contends that Complainant has no trademark or service mark
rights in the term “
Respondent contends that it has rights and legitimate interests in the domain names, and submits an agreement signed by Complainant to lease the domain name <iamsantamonica.com> dated December 12, 2007, pointing out provision 5 of the Agreement in which Complainant agrees that Respondent “owns the domain name … and that any goodwill generated by the use of the domain name does not create any rights in the domain name, including any trademark rights.” Respondent contends that Complainant leased the domain name for two years and then failed to reach an agreement for continuing a lease arrangement or sale from Respondent. Respondent contends that it offers a legitimate service of creating unique domain names by combining the phrase “WE ARE” or “I AM” with a geographically descriptive name. Respondent contends that it did not register the domain in bad faith because it did not register the domain primarily for the purpose of selling or renting the domain name to Complainant, and that Complainant only began using the term “I AM SANTA MONICA” upon discovering Respondent’s registered domain name and realizing the value of the phrase as a marketing tool. Respondent contends that its business does not compete with any business using the phrase, “iamsantamonica.com” or “iamsantamonica.net”, and it has not intended to attract Internet users to its website in order to create a likelihood of confusion with Complainant’s trademark, but rather intended to lease or sell the domain names to one of many businesses that use the geographic name “SANTA MONICA” to identify their business.
Respondent requests that the transfer sought by Complainant be denied, and also contends that Complainant is engaging in reverse domain name hijacking in a bad faith attempt to deprive registered domain name holder of a legitimately obtained domain name, but submits no further proof or evidence with respect to this serious allegation.
C. Additional Submissions (Complainant)
In Complainant’s Additional Submission, Complainant contends that the
domain name registrations are confusingly similar to Complainant’s registered
trademarks, and that Complainant’s trademark registrations in both block text
and various stylized forms, registered with the United States Patent and
Trademark Office provide a presumption of ownership of a valid and protectable
trademark to the Complainant.
Complainant also contends that its use of
With respect to Respondent’s claim of reverse domain name hijacking, Complainant contends that the claim under the UDRP was made in good faith and based upon the facts and law set forth by Complainant, and requests that the finding of a reverse domain name hijacking be denied.
D. Additional Submissions (Respondent)
Respondent contends that it did not register and maintain the subject domains in
bad faith, as the domains were registered more than a year prior to
Complainant’s use of the phrase IAMSANTAMONICA.
contends that although Complainant may have demonstrated rights in its
1). The full Panel finds that Complainant has established ownership of trademark rights to the mark SANTAMONICA and that domain names <iamsantamonica.com> and <iamsantamonica.net> are confusingly similar to Complainant’s mark; 2). a majority of the Panel finds that Complainant has failed to meet its burden of establishing that Respondent has no rights or legitimate interests in the domain names, and 3). a majority of the Panel finds that the domain names were not registered and used in bad faith by Respondent. Thus, the request for transfer is denied. Respondent’s request for a finding of a reverse domain name hijacking is denied.
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, in its Complaint and Additional Submission, asserts its
rights in the
Respondent contends that the domain names are comprised of common, generic, and geographic terms and as such cannot be found to be confusingly similar to Complainant’s mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007). The USPTO has found the Complainant’s mark is registerable and the federal registration provides Complainant with a presumption of rights.
Complainant contends that Respondent’s <iamsantamonica.com> and <iamsantamonica.net>
domain names are confusingly similar to Complainant’s
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of production shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant admits that it previously licensed the disputed <iamsantamonica.com> domain name from Respondent prior to the instant dispute, in which it agreed that all goodwill in that domain name inured to the benefit of Respondent. Upon termination of this relationship, Complainant contends that Respondent simply used the disputed domain name to host a website advertising the disputed domain name for sale.
A majority of the Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
A majority of the Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
claims that it registered the domain names because they incorporate the
geographically descriptive term “
The Chair of the Panel agrees with the finding of Complainant’s trademark rights and that the domains are confusingly similar, and disagrees with the analysis set forth by the majority on the issue of rights and legitimate interests, and registration and use in bad faith under the UDRP. The Chair of the panel concurs with the result based upon the admissions of Complainant in the License Agreement.
unanimously agree that Complainant has not engaged in a reverse domain name
hijacking. Respondent fails to submit sufficient
proof to satisfy its burden of this serious allegation. Even if
Complainant has failed to satisfy its burden under the Policy, this does not
necessarily support a finding of reverse domain name hijacking on behalf of
Having failed to establish at least one of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <iamsantamonica.com> and <iamsantamonica.net> domain names REMAIN with Respondent.
Panelists Professor David E. Sorkin, Paul M.
and David P. Miranda, Chair, concurring.
Dated: April 14, 2009
National Arbitration Forum