Robert Norcross, Jr. Norcross Corporation v. Marchex Sales, Inc. / Brendhan Hight
Claim Number: FA1203001437030
Complainants are Robert Norcross, Jr. and Norcross Corporation (“Complainants”), represented by Theodore Wolski, Massachusetts, USA. Respondent is Marchex Sales, Inc. / Brendhan Hight (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norcross.com>, registered with ENOM, INC.
The undersigned certify 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.
Jeffrey M. Samuels, David H. Bernstein, and Debrett Lyons, as Panelists.
Complainants submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 29, 2012.
On March 29, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <norcross.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 March 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@norcross.com. Also on March 30, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 April 19, 2012.
On April 26, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels, David H. Bernstein, and Debrett Lyons as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants
The Complaint states that Austin S. Norcross started the Norcross Corporation in 1946 and that the mark NORCROSS was registered (No. 864,398) on the Supplemental Register with the United States Patent Office in 1969. See Complaint, Exhibit 1. The mark was registered (No. 1,007,819) on the Principal Register in 1975. See Complaint, Exhibit 6. The mark has been in use since 1964 on viscometers for measuring viscosity and for related products.
The Complaint further alleges that, as of March 28, 2012, the domain name <norcross.com> was not being used for legitimate business purposes. Complainants indicate that, when Respondent was contacted regarding the transfer of the domain name, Respondent replied that it “does not entertain offers for less than $30,000.” According to the Complaint, the $30,000 price tag far exceeds any reasonable out-of-pocket costs incurred by Respondent in regards the domain name.
B. Respondent
Respondent first points out that the Principal Register registration for the NORCROSS mark is owned by the Norcross Corporation and not by Complainant Robert Norcross, Jr. and that, while the Norcross Corporation is noted in the caption of the Complaint, it is not set forth in the body of the Complaint as a Complainant. “Accordingly, the Complainant in this Proceeding, Mr. Norcross, has not established he is the owner of any relevant trade or service mark in which he has rights.”
Respondent notes that the disputed domain name was originally registered by Ultimate Search in 2000, and acquired by Respondent in late 2004. Respondent further indicates that the domain name in issue corresponds to a prominent beltway municipality of the Atlanta area and that the links on the page correspond to hotels, airports, new homes, and car rentals in Atlanta, as well as to hotels in Savannah and Athens, Georgia. See Response, Exhibit D. Respondent asserts that the use of a geographical term in connection with subject matter relevant to that term constitutes a legitimate use of the domain name. According to Respondent:
“The Complainant here makes no allegation that the Respondent’s use of the domain name for these several years has in any way targeted, harmed, or disrupted the Complainant’s business. Moreover, the Complainant shows clearly that the domain name is used for such advertising subjects as travel, lodging, and in particular relation to Georgia, where Norcross is located. This is classic descriptive use of a domain name under the Policy.”
With respect to the issue of bad faith registration and use, Respondent contends that the Policy does not proscribe the general trade in domain names on the secondary market. What the Policy does proscribe, Respondent asserts, is the registration of a domain name primarily for the purpose of extorting the owner of a mark, i.e., with an intention arising from knowledge of its value as nothing other than a trade or service mark associated with one party. The domain name in issue in this proceeding, Respondent contends, is a non-exclusive geographic term. Respondent also notes that it owns many domain names and receives many purchase inquiries and that $30,000 is certainly an appropriate secondary market value for a generic geographical place name.
The Panel finds that the disputed domain name is identical or confusingly similar to Complainant Norcross Corporation’s NORCROSS mark, that Respondent has rights or legitimate interests in the disputed domain name, and that the domain name was not registered and is not being used in bad faith.
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 a 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 Panel concludes the disputed domain name, <norcross.com>, is identical or confusingly similar to the NORCROSS mark. The domain name incorporates the NORCROSS mark in its entirety while merely adding the generic top-level domain “.com.” See Pomellato S.p.A. v. Tonetti, (WIPO Case No. D2000-0493) (finding pomellato.com identical to complainant’s mark because the generic top-level domain “com” after the name POMELLATO is not relevant).
The Policy further requires that Complainants have rights in the mark. Respondent notes that the registration for the NORCROSS mark is owned by Complainant Norcross Corporation and not by Complainant Robert Norcross, Jr., and that while the Norcross Corporation is noted in the caption of the Complaint, it is not set forth in the body of the Complaint as a Complainant. While it is not clear to the Panel whether Norcross Corporation is formally a Complainant in this proceeding, it appears that Robert Norcross, Jr. is at least an authorized representative of the company.[1]
The Panel concludes that Complainants have not sustained their burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. Rather, the evidence establishes that Respondent’s use of the domain name constitutes a fair use under the Policy.
As noted by Respondent, Norcross is a municipality in the Atlanta, Georgia metropolitan area. The links on the <norcross.com> home page refer to hotels, airports, new homes, and car rentals in Atlanta, Savannah and Athens, Georgia, as well as to other travel-related services. The links and material on <norcross.com> make no reference to viscosity equipment or other goods or services associated with the NORCROSS mark. Thus, the Panel finds that Respondent uses the term “norcross” in its domain name in a descriptive manner, i.e., to provide useful travel-related information to those traveling to Norcross, Georgia or the surrounding area . See, e.g., Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”). Cf. Hayward Industries, Inc. v. WebQuest.com, Inc., (WIPO Case No. D2009-1493), in which the links were not all to the geographic location but rather to pool supply companies that competed with complainant. See also mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., (WIPO Case No. D2007-1141) (“Respondent's domain names appear to be used for their trademark value and not for any descriptive value in the names.”).
In view of the Panel’s determination on the issue of “rights or legitimate interests,” the Panel need not discuss this issue in great detail. See Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). Briefly, though, it appears that the domain name was not registered or used in bad faith. Rather, Respondent appears to have registered this domain name for the purposes of advertising links related to the descriptive value of the Norcross geographic locale, and appears to have used it for that purpose. The fact that Respondent was only willing to sell the domain name to Complainants for a sum far in excess of its out-of-pocket expenses directly related to the domain name does not establish the requisite bad faith since the Respondent had a legitimate interest in the domain name. A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner. See Etam, plc v. Alberta Hot Rods (WIPO Case No. D2000-1654) (“Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name. The Panel does not rely on the circumstance that Complainant initiated the negotiations, since a bad-faith cybersquatter may also wait for a trademark owner to act before making demands. Because of Respondent’s legitimate interest in using the domain name for goods or services, the domain name is a business asset, and the negotiations between the parties simply do not show bad faith.”).
Having failed to establish the second and third elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <norcross.com> domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, David H. Bernstein, and Debrett Lyons, as Panelists
Dated: May 8, 2012
[1] In view of the Panel’s determination on the issues of “rights or legitimate interests” and “bad faith” registration and use, the issue of whether the Norcross Corporation is a named Complainant need not be definitively resolved.
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