National Arbitration Forum

 

DECISION

 

Greater Birmingham Convention and Visitors Bureau v. Acme Information Services

Claim Number: FA0410000356351

 

PARTIES

Complainant is Greater Birmingham Convention and Visitors Bureau (“Complainant”), 2200 9th Ave. North, Birmingham, AL 35203.  Respondent is Acme Information Services (“Respondent”), represented by Robert Watts, 140 Lucerne Blvd., Birmingham, AL 35209.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <birmingham.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Panelists are Jeffrey M. Samuels, Judge Bruce E. Meyerson (Ret.), and Judge Karl V. Fink (Ret.), as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2004.

 

On October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <birmingham.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 November 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 30, 2004 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 postmaster@birmingham.com by e-mail.

 

A timely Response was received and determined to be complete on November 30, 2004.

 

On December 15, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels and Judge Bruce E. Meyerson (Ret.) as Panelists and Judge Karl V. Fink (Ret.) as Chair.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Greater Birmingham Convention and Visitors Bureau is a non-profit agency chartered for the purpose of marketing and promoting the greater Birmingham, Alabama area as a premier destination for conventions, meetings, and tour and travel.  The domain name, Birmingham, is identical to the name which we wish to use for our marketing of the city of Birmingham.

 

The respondent should be considered as having no rights or legitimate interests in respect of the domain name of Birmingham as there is no active web page that is associated with this domain name, nor has there ever been an active web page associated with this domain name.

 

There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name.

 

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.  The domain name is not being used in good faith as there is no Birmingham trademark associated with the Respondent and no web site has been developed to promote Birmingham.

 

We have inquired as to the cost of purchasing the domain name and were told that “we were looking at around $25,000.00.”

 

 

B. Respondent

 

Complainant has no trademark or service mark rights in the geographical designation.  In order to prevail in a claim under the UDRP, Complainant must establish protectable rights in the trademark he seeks to enforce.  Complainant claims a trademark in the city name of “Birmingham.” Complainant has provided no evidence that it has registered any such mark with the United States Patent and Trademark Office or any state agency. As such, the Complainant must establish that it has common law rights to the word “Birmingham.” 

 

The word “Birmingham” is nothing more than a geographical designation. Complainant admits as much when it states that “the trademark on which the complaint is based is our city name, Birmingham.” Complaint § 4(c).  15 U.S.C. § 1052(e)(2) mandates that a geographically descriptive name is not eligible for trademark protection without proof that, through usage, it has become a unique source identifier.

 

Complainant has failed to provide any evidence, much less to prove, that the “Birmingham” mark has acquired secondary meaning such that it may claim the exclusive right to use “Birmingham” as a trademark. 

 

There is no evidence whatsoever that the mark “Birmingham” distinguishes the goods and services of the Birmingham Convention and Visitors Bureau from the goods and services of any other entity.  A search of the Bellsouth Yellow Pages – a popular regional phone book for businesses with names starting with “Birmingham” in the Birmingham Area returned 1236 results.  Since the word “Birmingham” is unable to, and does not, perform the functions of a unique source identifier, it does not qualify as a trademark in which Complainant has rights under the Policy.  Accordingly, the domain name <birmingham.com> cannot be identical or confusingly similar to a trademark or service mark in which the complainant has rights.

 

Respondent has rights and a legitimate interest in the domain name.  Prior to any notice of the dispute, Acme Information Services made use of the domain name and a name corresponding to the domain name in connection with a bona fide offering of services.  From October 1994 through August of 1998, Acme operated Birmingham Online, one of the largest online systems in the state of Alabama.  Respondent provided limited internet access to hundreds of subscribers.  All subscribers received the use of a Birmingham.com email address. Electronic mail was a fledgling endeavor in that day, and providing internet email accounts was a major aspect of the business.

 

Prior to any notice of this dispute, Acme Information Services made use of the domain name <birmingham.com> and the business name Birmingham Online.  The name Birmingham and the domain name <birmingham.com> were used in our advertising.

 

Complainant fails to allege any facts or circumstances which, if taken as true, would constitute bad faith on the part of the respondent.

 

Acme Information Services is the original registrant of the domain name <birmingham.com>. The domain has been held by one owner for more than ten years. The owner of this domain has never purchased another domain.  The owner of this domain used it extensively in commerce for a number of years without ever establishing a web presence. It has since made the decision to warehouse the domain until such time as the developer is ready to re-launch the original Birmingham Online enterprise via the World Wide Web.  The domain name <birmingham.com> is not, nor has it ever been, for sale.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant has not proven that the domain name should be transferred.

 

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.

 

Identical and/or Confusingly Similar

 

Respondent argues that the “word ‘Birmingham’ is nothing more than a geographical designation.”  Respondent notes that Complainant admits as much in stating that the “trademark on which the complaint is based is (sic) our city name, Birmingham (Alabama).”  Respondent further states that 15 U.S.C. § 1052(e)(2) “mandates that a geographically descriptive name is not eligible for trademark protection without proof that, through usage, it has become a unique source identifier.” 

 

15 U.S.C. § 1052 states:

 

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which . . . (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them [or] (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them...”

 

In the leading cases decided under the Policy, in the context of geographic terms, panels have cited Canal Co. v. Clark, 80 U.S. 311, 20 L.Ed. 581 (1872), which Respondent also cites, for the rationale behind the foregoing principle.

           

“[I]t is obvious that the same reasons which forbid the exclusive appropriation of generic names or of those merely descriptive of the article manufactured and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names, designating districts of country. Their nature is such that they cannot point to the origin (personal origin) or ownership of the articles of trade to which they may be applied. They point only at the place of production, not to the producer . . .”  Id. at 324.

 

See City of Salina v. Baughn, FA 97076 (Nat. Arb. Forum June 4, 2001); see also Glenwood Springs Chamber Resort Assoc., Inc. v. College Trans., Inc., FA 98825 (Nat. Arb. Forum Oct. 31, 2001).  The leading cases also cite McCarthy, which Respondent has similarly cited in its Response. 

 

“[D]escriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods.  Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain.” 1 McCarthy on Trademarks and Unfair Competition, § 14:1 at 14-4 (4th ed. 2001).

 

According to the Lanham Act, 15 U.S.C. § 1127, a service mark is:

 

“[A]ny word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services . . . from the services of others and to indicate the source of the services, even if that source is unknown.” (Emphasis added).

 

The Panel finds that the BIRMINGHAM mark fails to both identify the source of Complainant’s services and distinguish such services from those offered by others.  It is not uncommon for merchants to attempt to use the name of a geographic place, such as where their business is located, as a brand name for goods or services.  In this context, the public may regard such a mark not as an identifier of a particular source of goods or services, but rather as the geographic origin of such goods or services.  Therefore, there is an issue of whether the geographic term is actually functioning as a source identifier of goods or services, which is a requirement for trademark protection.  See 15 U.S.C. § 1127.  The source identifying function of a mark simply means that the consumer expects “all goods with the same mark to come from a single, but anonymous or indistinguishable source.”  1 McCarthy on Trademarks and Unfair Competition § 3:9 (4th ed. 2001).  The consumer need not be able to identify the source by its specific name.  As Judge Jerome Frank has stated, "[i]t matters not whether the customers know just who is the source.”  Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 105 U.S.P.Q. 160 (2d Cir. 1955).  Likewise, Respondent argues and the Panel finds that there “is no evidence whatsoever that the mark ‘Birmingham’ distinguishes the goods and services of [Complainant] from the goods and services of any other entity.”  Response at 3[a].  See City of Myrtle Beach v. Info. Centers, Inc., FA 103367 (Nat. Arb. Forum Mar. 8, 2002) (“The CITY OF MYRTLE BEACH [mark] does not serve as a unique source identifier and does not qualify as a trademark in which Complainant has rights under the policy.”); see also Glenwood Springs Chamber Resort Assoc. Inc. v. College Trans., Inc., FA 98825 (Nat. Arb. Forum Oct. 31, 2001) (finding that the term GLENWOOD SPRINGS failed to function as a trademark because it did not “serve as a unique source identifier”).

 

The Panel finds that Complainant has failed to provide any proof that it uses the BIRMINGHAM mark as a legitimate service mark.  In its argument pursuant to paragraph 4(a)(i) of the Policy, Complainant fails to allege that the name “Birmingham” is a trademark or service mark.  Rather, Complainant states that the “domain name, Birmingham, is identical to the name which we wish to use for our marketing of the city of Birmingham, Alabama.”  Complaint at 5[a.].  A concern for courts in granting trademark rights in a geographic term takes into account other merchants who happen to operate in the same market and who have as much desire to use the same geographic term for their own competing activities.  Therefore, such geographic terms are treated like any other descriptive mark.  A mark is primarily geographically descriptive if the primary significance of the term in the mind of the consumer is to indicate the geographic origin of the goods or services.  See In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982). 

 

The Panel finds the term “Birmingham” to be geographically descriptive. The Panel must also determine whether the mark has acquired distinctiveness through use, as is the case with any other descriptive mark.  In this regard, the Panel finds that Complainant has failed to provide sufficient evidence that the term “Birmingham” has acquired secondary meaning in the mind of the public.  See City of Dearborn v. Mekled, 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); see also Gardner's Super Mkts. Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14, 2002) (“In determining whether the Complainant's mark has acquired secondary meaning, one must consider a variety of factors, including, but not limited to, advertising, promotion, sales, media coverage and the length, manner and exclusivity of use of the mark by the Complainant.”); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services).

 

Complainant has not proven this element.

 

Rights or Legitimate Interests

For Complainant to prevail, it must prove all three elements.  Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this issue.

 

Registration and Use in Bad Faith

For Complainant to prevail, it must prove all three elements.  Because of the Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel makes no ruling on this issue.

 

DECISION

Complainant having failed to prove all three elements required under the ICANN Policy, the Panel concludes and orders that relief shall be DENIED.

 

 

 

Judge Karl V. Fink (Ret.), Chair

Judge Bruce E. Meyerson (Ret.) & Jeffrey M. Samuels, Panelists
Dated: December 29, 2004

 

 

 

 

 

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