national arbitration forum
Maricopa County v. Jason Samuelson
Claim Number: FA1201001422732
Complainant is Maricopa County (“Complainant”), represented by Colleen Connor of Maricopa County Attorney’s Office, Arizona, USA. Respondent is Jason Samuelson (“Respondent”), represented by Nathan Suedmeyer of Larson & Larson, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maricopa.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2012; the National Arbitration Forum received payment on January 5, 2012.
On January 5, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <maricopa.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@maricopa.com. Also on January 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 30, 2012.
On February 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, that:
Complainant, Maricopa County, Arizona, was established on February 17, 1871, as the first of the original four counties of Territorial Arizona.
Complainant has common law rights in the MARICOPA service mark that pre-date Respondent’s registration of the disputed domain name.
The service mark MARICOPA has been used by Complainant in its domain name, <maricopa.gov>, since October 7, 1997, and that domain name has been used continuously and extensively to provide information to members of the public regarding Complainant’s governmental services.
Respondent is an individual with no link to Maricopa County government.
Prior to September 22, 2011, Respondent redirected the website resolving from the contested domain name to Complainant’s website and home page, so that members of the public, believing that they were viewing Complainant’s website, would actually be viewing Respondent’s website.
After September 22, 2011, Respondent altered the webpage resolving from the disputed domain name to display a notice that the domain name was available for sale for at least one hundred thousand dollars ($100,000.00).
Respondent’s primary intention is now to sell the disputed domain name.
The domain name is identical to Complainant’s MARICOPA trademark.
Respondent is not commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the domain name.
The disputed domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent contends, among other things, that:
Complainant’s claimed Maricopa service mark is geographically descriptive because it represents a county located in the U.S. state of Arizona.
Complainant does not have a registered trademark, and instead relies on a claim of common law trademark rights for the supposed Maricopa mark.
To obtain trademark protection, and therefore protection under the Policy, a geographic designation must acquire secondary meaning.
The claimed Maricopa service mark has not acquired secondary meaning.
Complainant has provided no proof that the public associates the term Maricopa with anything other than a geographic area in Arizona.
The U.S. Patent and Trademark Office currently lists eleven (11) registered trademarks containing the word “Maricopa,” which marks are applicable to goods and services ranging from wine to bathroom accessories.
Complainant does not allege that it has spent money to advertise the claimed MARICOPA mark, nor does it allege that it has ever sold goods or services under that mark.
Complainant has not produced a consumer survey or any other evidence showing that the public associates the claimed Maricopa mark with its services.
Respondent is a licensed real estate agent in the state of Arizona.
Respondent’s real estate practice is based in the metropolitan area of Phoenix, Maricopa County, Arizona.
Respondent intends to use the disputed <maricopa.com> domain name, which it purchased 11 - 12 years ago, to market real estate brokerage services for resi-dents of Maricopa County, Arizona.
Respondent has never hosted any advertising, keywords, blind pages, panes, links, popups or any other information-gathering tools on the website resolving from <maricopa.com>.
Respondent has never tracked, monitored or collected any data from visitors to the website resolving from <maricopa.com>.
Respondent has never received compensation from the placement of adver-tisements or otherwise related to the visits of Internet users to the website resolving from <maricopa.com>.
Complainant has failed to show that it has rights in a trademark or service mark which are recognizable under Policy ¶ 4(a)(i).
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The threshold question in this proceeding is whether Complainant has rights in a trademark or service mark sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
The claimed mark is MARICOPA, which the parties agree is the name of a county in the U.S. state of Arizona. Complainant is the duly constituted government of that county.
It is well-established that:
as a general rule, place names per se are not trademarks for the purposes of the Policy.
See Brisbane City Council v. Warren Bolton Consulting Pty. Ltd., D2001-0047 (WIPO May 7, 2001).
Nonetheless, it is possible that a UDRP complainant can demonstrate trademark or service mark rights in a place name under the Policy if it can show that it has rights in a geographic term and that that term is being used as a trademark or service mark. Normally this requires the registration of the term with a competent trademark authority. Here Complainant concedes that it has not registered the claimed MARICOPA service mark with a trademark authority. Instead it relies upon a claim of common law rights in the mark based on an assertion of acquired secondary meaning. However,
it is very difficult for the legal authority of a geographical area to show unregistered trademark rights in that geographical term on the basis of secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2005), citing relevant decisions.
In its submission in support of its Complaint against Respondent, Complainant offers proof that it is, and has for long been, the duly constituted government of Maricopa County, Arizona, and that it provides a wide range of useful govern-mental services to its citizens under the name of Maricopa County. This is not enough to demonstrate the acquisition of secondary meaning in the claimed MARICOPA service mark. In particular, Complainant has failed to prove that its claimed unregistered mark distinguishes its services from those of any other provider in the marketplace. This is normally done by reference to evidence of market surveys. See, e.g., Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO February 12, 2000):
In view of … the fact that no market research or similar evidence has been submitted by Complainant to prove establishment on the market in the sense of the trademark law, the Panel cannot make a finding that trademark rights exist in the …[claimed mark]….
The reason that such proof is necessary is that there may be other providers of services within or relating to the geographic territory of a unit of local government who have a bona fide interest in using the pertinent geographic term in relation to their marketing of those services. In the absence of such proof, therefore, an unregistered mark such as that claimed here cannot be found to perform the function of a trademark or service mark, and so is not a trademark or service mark for purposes of the Policy. See Brisbane City Council v. Warren Bolton Consulting Pty. Ltd., D2001-0047 (WIPO May 7, 2001)..
For these reasons, we find that Complainant has failed to satisfy its obligation to show that it has rights in a trademark or service mark for the term MARICOPA sufficient to satisfy the requirements of Policy ¶ 4(a)(i).
Complainant has submitted arguments and materials intended to show that Respondent may not have a legitimate interest in the <maricopa.com> domain name and that Respondent may have proceeded in bad faith in the registration and use of the domain. However, in order to succeed on its claim for transfer to it of the disputed domain name, Complainant must prevail on its proofs under all three elements of Policy ¶ 4(a). Because Complainant has failed to satisfy its obligations of proof under Policy ¶ 4(a)(i), it is therefore unnecessary for us to consider Complainant’s proofs under Policy ¶ 4(a)(ii) [respondent’s rights to or legitimate interests in the contested domain name] and (iii) [registration and use of the domain name in bad faith]. See, e.g., Land Sachsen-Anhalt v. Skander Bouhaouala, D2002-0273 (WIPO July 8, 2002):
Bad faith and an absence of a legitimate interest are not alone enough to justify transfer under the Policy. A complainant must also show that it owns trademark rights that are being cybersquatted. [citation omitted] It is on this first, threshold factor that the Complainant has failed to carry its burden.
See also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that, because a complainant must prove all three elements under ¶ 4(a) of the Policy, failure to prove one of those elements makes inquiry into the remaining two unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into a respondent’s rights to or legitimate interests in a disputed domain name, or its registration and use in bad faith, where a complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Complainant having failed to establish one of the essential elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED, and the Complaint filed herein is, therefore, DISMISSED.
Terry F. Peppard, Panelist
Dated: February 13, 2012
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