Broward County v. Travel411.com
Claim Number: FA1203001437387
Complainant is Broward County (“Complainant”), represented by Mark Gatley, Florida, USA. Respondent is Travel411.com (“Respondent”), represented by Jacqueline Tadros, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fortlauderdaleconvention.com>, <ftlauderdaleconvention.com>, and <browardconventioncenter.com>, registered with DirectNIC, Ltd.
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.
Calvin A. Hamilton, The Hon. Neil Anthony Brown QC and Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2012; the National Arbitration Forum received payment on April 5, 2012.
On March 30, 2012, DirectNIC, Ltd confirmed by e-mail to the National Arbitration Forum that the <fortlauderdaleconvention.com>, <ftlauderdaleconvention.com>, and <browardconventioncenter.com> domain name is registered with DirectNIC, Ltd and that Respondent is the current registrant of the names. DirectNIC, Ltd has verified that Respondent is bound by the DirectNIC, Ltd 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 April 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@fortlauderdaleconvention.com, postmaster@ftlauderdaleconvention.com, postmaster@browardconventioncenter.com. Also on April 9, 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 April 30, 2012.
On May 9, 2012 pursuant to Respondent's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton, The Hon. Neil Anthony Brown QC and Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
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.
Complainant asserts that it has established its rights in the GREATER FORT LAUDERDALE mark by registering it with the USPTO (Reg. No. 2,642,822 filed February 6, 2002 registered October 29, 2002). Complainant submits a printout from the USPTO website to verify its assertion.
Based upon the registration provided, the Panel finds that Complainant has established its rights in the GREATER FORT LAUDERDALE mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant also asserts that the disputed domain names are confusingly similar to its GREATER FORT LAUDERDALE mark. The Panel notes that the <fortlauderdaleconvention.com> and <ftlauderdaleconvention.com> domain names include the geographic terms of the mark, while adding the descriptive term “convention” and the generic top-level domain (“gTLD”) “.com.” The Panel also notes that the <ftlauderdaleconvention.com> domain name abbreviates the term “fort” in the mark and removes the spaces. The Panel acknowledges that the <browardconventioncenter.com> domain name does not contain any shared elements or terms when compared to Complainant’s GREATER FORT LAUDERDALE mark. The Panel is cognizant that the term “greater” is omitted from the <fortlauderdaleconvention.com> and <ftlauderdaleconvention.com> domain names.
The Panel concludes that Respondent’s disputed domain names are not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). That is so because in each case the domain name is not sufficiently similar to the trademark to create any confusion. In particular, Internet users would assume that the domain names <fortlauderdaleconvention.com> and <ftlauderdaleconvention.com> related specifically to a convention or convention center in Fort Lauderdale, but that the GREATER FORT LAUDERDALE mark related to an entirely different concept of the geographic area or region of Greater Fort Lauderdale. They would also assume that the <browardconventioncenter.com> domain name related to a convention center in Broward County, but that the GREATER FORT LAUDERDALE mark related to an entirely different concept of the geographic area or region of Greater Fort Lauderdale. See Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14, 2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”); see also Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the complainant because the use of the complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the respondent's business, and the domain name is unlikely to cause confusion with the complainant's business).
Rights and Legitimate Interest
In light of the Panel’s conclusion that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain names are not confusingly similar to the mark, it is not necessary for the Panel to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Notwithstanding, the Panel will address whether Respondent has rights and legitimate interests in the domain names.
The Panel is of the view that Claimant failed to make the prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) which would then have shifted the burden 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.”).The reasons why Complainant has not made out the prima facie case are as follows.
First, Complainant claims that Respondent is not commonly known by the disputed domain names. Complainant states that the WHOIS information identifies the registrant of the disputed domain names as “Travel411.com.” The Panel notes that Respondent does not claim to be commonly known by the disputed domain names. As a result, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Secondly, Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant states that the disputed domain names resolve to websites offering links to Complainant’s competitors. The Panel notes that the screenshots provided appear to indicate that the websites actually offer information about travel and tourism in the Fort Lauderdale area and even promotes Complainant’s business interests.
Thirdly, Complainant argues that Respondent has engaged in typosquatting. The Panel notes that Respondent does not make specific allegations related to one, or all, of the disputed domain names. The Panel also notes that the disputed domain names all include an additional term and remove a term from Complainant’s alleged mark.
The Panel determines that the disputed domain names fall outside the general definition of what qualifies as typosquatting under the UDRP.
Fourthly, Respondent claims that it is making a bona fide offering of tourism and travel services through its disputed domain names. The Panel notes that Complainant’s submissions appear to indicate that the websites do in fact offer information about the Fort Lauderdale area and tourist attractions for the area. Respondent states that it has been operating in this particular arena for over ten years and has used the disputed domain names to support and promote its business the entire time.
Previous panels have held that this use can give rise to rights and legitimate interests in disputed domain names due to the bona fide nature of the services offered. See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes); see also Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights or legitimate interests in the <portofhelsinki.com> domain name because the respondent was using the disputed domain name in order to provide information about services available in different ports around the world).
Accordingly, the Panel finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the dispute domain names under Policy ¶ 4(c)(iii).
Finally, Respondent also argues that the terms of the <fortlauderdaleconvention.com>, <ftlauderdaleconvention.com>, and <browardconventioncenter.com> domain names are common, generic, and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent states that the disputed domain names all identify a geographical area, for which the corresponding websites provide information.
The Panel agrees with Respondent and finds that Respondent can establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii) by that means. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
Registration and Use in Bad Faith
In light of the Panel’s findings in favor of Respondent with respect to the identical or confusingly similar and rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(i) and (ii), there is no need to reach an analysis of the third element. See Lockheed Martin Corp. v. 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).
The Panel nevertheless finds that Complainant failed to meet its burden of proving 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).
Because Respondent has rights or legitimate interests in the <browardconventioncenter.com> , <fortlauderdaleconvention.com> and <ftlauderdaleconvention.com> domain names pursuant to Policy ¶ 4(a)(ii), it is axiomatic that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The fact that the registration of the domain names predates the registration of Complainant's mark is further evidence that Respondent did not register the domain names in bad faith.
Accordingly, the Panel finds that Respondent did not register the <browardconventioncenter.com> , <fortlauderdaleconvention.com> and <ftlauderdaleconvention.com> domain names in bad faith under Policy ¶ 4(a)(iii).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <fortlauderdaleconvention.com>, <ftlauderdaleconvention.com>, and <browardconventioncenter.com> domain name REMAIN with RESPONDENT.
Calvin A. Hamilton,
The Hon. Neil Anthony Brown QC and Sandra J. Franklin
as Panelists
Dated: May 24, 2012
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