CV Underground, LLC v. Gulf South Limited
Claim Number: FA0207000116732
PARTIES
The
Complainant is CV Underground, LLC,
Marietta, GA (“Complainant”) represented by Janet H. Wiles, of Wiles
& Wiles. The Respondent is Gulf South Limited, Roswell, GA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <undergroundatlanta.com>
and <atlantaunderground.com>, registered with Stargate Communications.
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.
Edward
C. Chiasson, Q.C. as Panelist.
PROCEDURAL HISTORY
The
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on July 17, 2002; the Forum received a hard copy of the
Complaint on July 22, 2002.
On
July 18, 2002, Stargate Communications confirmed by e-mail to the Forum that
the domain names <undergroundatlanta.com> and <atlantaunderground.com> are registered with Stargate
Communications and that the Respondent is the current registrant of the
names. Stargate Communications has
verified that the Respondent is bound by the Stargate Communications
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
July 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 12,
2002 by which the Respondent could file a Response to the Complaint, was
transmitted to the Respondent via e-mail, post and fax, to all entities and
persons listed on the Respondent’s registration as technical, administrative
and billing contacts, and to postmaster@undergroundatlanta.com and postmaster@atlantaunderground.com
by e-mail.
A
timely Response was received and determined to be complete on August 12, 2002.
A
timely Additional Submission from Complainant was received and determined to be
complete on August 19, 2002.
Respondent
objected to the timing of Complainant's Additional Submission, but delivered a
reply to it, which the Administrative Panel has considered.
On August 30, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Edward C.
Chiasson, Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
Respondent
requests that the Administrative Panel make a finding of Reverse
Domain-Name Hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
Underground Atlanta is a shopping and
entertainment complex, owned and managed by Complainant, located in the heart
of downtown Atlanta, Georgia.
As early as 1968, and continuously since
1989, this complex has marketed the services of various retail shops,
restaurants, nightclubs and other businesses engaged in the shopping and
entertainment industry, using the name "Underground Atlanta." This name, "Underground Atlanta",
is a service mark of Complainant in that, through many years usage, it has come
to be understood by the public as designating the business of this particular
complex.
To the best of
Complainant's knowledge and belief, Respondent is engaged in no business
similar to that of Complainant. Respondent has made no use of, or demonstrable
preparations to use, the subject domain names in connection with a bona fide offering of goods or
services. Respondent does not currently
operate a valid web site under either of these domain names.
To the best of
Complainant's knowledge and belief, Respondent has never been known by the
subject domain names.
On two
previous occasions the Forum’s domain name dispute Panels have concluded that Respondent
operated in bad faith under similar circumstances. In Ford's Fancy Fruits, Inc. v. Gulf South Limited, FA 95898 (Nat. Arb.
Forum Dec. 14, 2000) and Emory Healthcare, Inc. v. Gulf South Ltd., FA 94892 (Nat. Arb.
Forum July 5, 2000), the Panel concluded that Respondent's "conduct
amounts to opportunistic bad faith" and that "its bad faith is
affirmatively demonstrated by the evidence" under factual circumstances
very similar to the present dispute.
B.
Respondent
Complainant
has not provided evidence that a mark exists or that it has a superior right to
the use of the generic words "Atlanta" or "underground" to
the exclusion of Respondent or any other entity. Complainant has failed to prove that it is the owner of a mark,
at common law or otherwise.
The
words "Atlanta" and "underground" are descriptive and
generic terms and used within thousands of other domain names not owned by
Complainant.
A
reasonable person viewing Respondent’s website would conclude that the subject
domain names do not suggest that Complainant is the source, origin or sponsor
of Respondent’s website. Complainant
acknowledges in its Complaint that Respondent is engaged in no business similar
to that of Complainant.
Respondent
registered the subject domain name <undergroundatlanta.com> on
January 4, 1999 and registered the subject domain name <atlantaunderground.com>
on October 17, 1999.
Respondent
has operated the website <undergroundatlanta.com> and has been
commonly known by the domain name <undergroundatlanta.com>
for several years without conflict. The
domain name <undergroundatlanta.com> is an information publication
for the greater Atlanta metropolitan area including such diverse activities as
dining, entertainment, special events, local attractions, and travel
information. Respondent is making a
legitimate noncommercial or fair use of the domain names, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.
C.
Additional Submissions
Complainant
filed an Additional Submission.
A
service mark has been defined as “[a] mark used in the sale or advertising of
services
to identify and . . . distinguish them from the services of others . . .
mean[ing]
any word, name, symbol, or device, or any combination thereof . . . .”
(Black’s
Law Dictionary Sixth Edition, 1990).
As stated in its Complaint,
Complainant
has set forth that as early as 1968, and continuously since 1989, the
shopping
and entertainment complex of Underground Atlanta has marketed the
services
of various retail shops, restaurants, night clubs, and other businesses in
the
shopping and entertainment industry, using the name “Underground Atlanta”,
which
has become recognized as a service mark designating this complex as
Underground Atlanta.
Complainant’s
rights in its service mark of UNDERGROUND ATLANTA are
entitled
to protection as “the word or phrase [UNDERGROUND ATLANTA] has acquired a
secondary meaning due to (1) its use in connection with the business or trade
of the party seeking relief, and (2) the public’s understanding, through such
use, that
the
word or phrase designates the goods, services, or business of that party.”
See
Future Professionals, Inc. v. Darby,
266 Ga. 690, 692, 470 S.E.2d 644
(1996)(citing
Giant Mart Corp. v. Giant Disc. Foods, 247 Ga. 775, 279 S.E.
2d
683 (1981)).
Respondent has, at best, merely operated a website
with the subject
domain names that currently states only the
following:
“UNDERGOUNDATLANTA.COM
The Atlanta information publication for dining,
entertainment activities,
special events, local attractions, travel
information and more. Contact us
at info@undergroundatlanta.com or call
770-396-8172 to subscribe.”
Complainant reiterates
that to the best of its knowledge and belief,
Respondent has never been known commonly by either of the subject
domain names. A recorded greeting at
Respondent’s listed XXX-396-8172 telephone number from both its Response and
website as stated above only refers to Respondent as Gulf South and not as <undergroundatlanta.com>.
Respondent has prevented Complainant from using its service mark in the
subject domain names, resulting in
Complainant having to obtain the domain name of <underatl.com> instead of
being able to use the subject domain names.
Respondent replied to Complainant’s additional material.
Complainant is a Georgia Limited Liability Company which was
formed March 22,1999. The subject domain name <undergroundatlanta.com>
was registered January 4, 1999, prior to Complainant’s existence and has been
in use since that time. The <atlantaunderground.com>
domain name was registered October 14, 1999 and was linked to the <undergroundatlanta.com>
web site.
The alleged existence of a common-law mark is not sufficient to
meet Complainant’s burden. Because
Complainant has not demonstrated it owns a mark, common or otherwise, protected
under the Policy, the subject domain names are not identical or confusingly
similar. See City of Myrtle Beach v. Information Centers, Inc., FA
103367 (Nat. Arb. Forum Mar. 8, 2002); see
also, e.g., City of Dearborn v. Dan Mekled d/b/a ID Solutions, FA 99602
(Nat. Arb. Forum Nov. 12, 2001) (finding insufficient evidence that “City of
Dearborn” is a protected common law mark and, therefore, the request to
transfer <cityofdearborn.com> was denied).
Before any notice to Respondent of the dispute, it had
demonstrated preparations to use and made use of the subject domain names in
connection with a bona fide offering of goods or services with no
conflict or confusion with Complainant.
Respondent has operated the web site <undergroundatlanta.com>
since January 1999 prior to Complainant’s existence and prior to any notice of
the dispute. Respondent is making a
legitimate noncommercial or fair use of the subject domain names, without
intent for commercial gain to misleadingly divert consumers or to tarnish
Complainant’s alleged mark at issue.
Respondent denies bad faith and says that Complainant has not
provided any information to support a finding of bad faith.
Respondent asserts that Complainant has harassed Respondent and is
attempting a reverse hijacking of the subject domain names.
DISCUSSION
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.
The
parties rely on previous domain name dispute decisions and on decisions of
domestic courts. While these are
neither controlling nor binding on the Administrative Panel, often reference to
them is of assistance.
DISCUSSION
AND FINDINGS
Identical or Confusingly Similar
Complainant does not have a registered
interest in the words "Atlanta" or "underground" either
alone or in combination, but it has carried on business as Underground Atlanta
for a considerable period of time.
Respondent asserts that Complainant has been incorporated only since
1999, but that is not compelling in terms of its rights to the UNDERGROUND
ATLANTA mark. It is that phrase and its
use in commerce that is controlling, not the corporate name of the user.
The Administrative Panel is satisfied
that Complainant has acquired a sufficient common-law interest in Underground
Atlanta to meet the threshold requirement of the Policy.
The subject domain name <undergroundatlanta.com>
differs from Complainant's rights only by the addition of “.com,” which is
immaterial. The subject domain name <atlantaunderground.com>
uses the same words, although in different order. Considered objectively, it is confusingly similar.
The Administrative Panel is satisfied
that Complainant has met the requirements of Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The words "Underground Atlanta"
are the name of a shopping and entertainment complex in Atlanta, Georgia, that
is, they are descriptive of a specific operation. Taken alone, it is questionable whether anyone could acquire
rights in the words.
"Atlanta" capitalized is the name of a city and is used by
Complainant in that context. A strong
case can be made for the contention that the word "underground" is
generic. The uniqueness is in the use
of the words in combination to describe Complainant's operation.
Respondent uses the subject domain names
in the context of a different activity.
It has no association with Complainant and does not seek to suggest any
association. It cannot be said that its
initiative is illegitimate or designed to denigrate Complainant or its
operations.
The fact that Complainant has a
legitimate interest in the words "Underground Atlanta" does not
establish that Respondent does not have a legitimate interest in the subject
domain names. Its lack of association
with Complainant also does not assist Complainant in the context of this case.
Complainant's quotation from Respondent's
web page confirms the use which Respondent is making of the words
"Atlanta" and "underground". The fact that it does not use its corporate name in doing so does
not undermine the legitimacy of the use or of Respondent's interest in the
subject domain names.
Similarly, the fact that Respondent's
telephone system uses Respondent's name rather than the subject domain names,
does not suggest a lack of legitimate interest in the subject domain names in
the context of this case.
The Administrative Panel is not satisfied
that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant relies on the information it
provides to support the other two heads of the Complaint to support its
allegation of bad faith. There is no
compelling information that does so.
Respondent has come forward to explain
its registration and use of the subject domain names. It is using them in the context of a legitimate activity. That activity does not collide with
Complainant's commercial interests. Complainant's
rights are focused on a specific operation and cannot be used generally to
foreclose others from the use of the words "Atlanta" and
"underground".
The Administrative Panel is not satisfied
that Complainant has met the requirements of paragraph 4(a)(iii).
DECISION
Based on the information provided to it
and on its findings, the Administrative Panel concludes that that Complainant
has not established its case. It is
dismissed.
The Administrative Panel has considered
Respondent's contention that Complainant is guilty of reverse hijacking. Although, Complainant appears to have placed
greater weight on its use of the words "Underground Atlanta" than is
warranted legally, this appears to have been motivated more by an overzealous
desire to protect its operations than an attempt to take away the legitimate
rights of Respondent. Caution would be
a wise course for the future.
The Administrative Panel is not satisfied
that Complainant has attempted to reverse hijack the subject domain names.
Edward C. Chiasson, Q.C., Panelist
Dated: September 13, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
.