National Arbitration Forum

 

DECISION

 

Enfinger Development, Inc. v. Roderick Montgomery

Claim Number: FA0411000370918

 

PARTIES

Complainant is Enfinger Development, Inc. (“Complainant”), represented by Frank M. Caprio, of Lanier Ford Shaver & Payne, P.C., 200 West Side Square, PO Box 2087, Huntsville, AL 35804.  Respondent is Roderick Montgomery (“Respondent”), 102 Dunhill Drive, Huntsville, AL 35824.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mcmullencove.com>, <mcmullencove.org> and <mcmullencove.net>, registered with Tucows Inc.

 

PANEL

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

 

Robert T. Pfeuffer as Chair, Todd Dickinson as Panelist and Diane Cabell as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2004.

 

On November 24, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <mcmullencove.com>, <mcmullencove.org> and <mcmullencove.net> are registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 December 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 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@mcmullencove.com, postmaster@ mcmullencove.org and postmaster@mcmullencove.net by e-mail.

 

A timely Response was received and determined to be complete on December 22, 2004.

 

An Additional Submission was received from Complainant and it has been fully considered by the Panel.  In addition, upon request of the Panel, Complainant submitted additional evidence and Respondent signed and verified his pleadings under oath.  The Additional Submission complies with Supplemental Rule 7.

 

On December 30, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer as Chair, Todd Dickinson and Diane Cabell as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

Complainant is in the land development business and has undertaken the development of a new subdivision in Huntsville, Alabama to be called “McMullen Cove.”  It claims that it has rights to the McMULLEN COVE mark through filing an application for a service mark registration with the United States Patent and Trademark Office (“USPTO”) and that it has established common law rights to the mark.  It therefore contends that Respondent should be ordered to transfer the disputed domain names to Complainant.

 

B.     Respondent

Respondent has asserted that it has established rights and legitimate interests in the service mark to be used in connection with its business offering communication services to the new McMullen Cove community.  He argues that his registration of the domain names occured prior to Complainant’s filing its application for registration of the service mark and that he has done so in good faith in respect to a business he intends to establish, but which he has yet to accomplish.

 

C.     Additional Submissions

In addition to its original complaint, Complainant has timely filed an Additional Submission in which it asserts that its McMULLEN COVE mark is neither generic nor geographically descriptive in nature and further alleges that this mark is “the unique name of unique services proffered…and a name that the Respondent chose to hijack for his own dubious purposes.”

 

FINDINGS

Panelists Pfeuffer and Dickinson find from the evidence as follows, Panelist Cabell has decided as indicated in her Dissent attached hereto and does not join in these findings:

 

1.      The majority of the Panel finds that the mark registered by Respondent is identical or confusingly similar to that of Complainant.

2.      That Complainant has established rights and legitimate interests in McMULLEN COVE mark and that Respondent lacks such rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).

3.      The majority of the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).

 

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 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 the Complainant has rights;

(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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has common law rights in the mark, which satisfies the requirements of Policy ¶ 4(a)(i).  Complainant submitted detailed development plans to the City of Huntsville through its Planning and Zoning Department clearly specifying the use of the McMULLEN COVE service mark.  In addition, items of correspondence between Complainant and the officials of the City of Huntsville clearly reflect Complainant had adopted use of this service mark.  Further, a prominent newspaper article describing the new development and utilizing the McMULLEN COVE service mark was presented to the public in the leading local newspaper.  The very next day, Respondent registered the domain names.

 

The Panel finds that Complainant’s registration of the mark after Respondent registered the domain names on June 7, 2004 is not a prerequisite to Complainant establishing rights in the McMULLEN COVE mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).

 

The Panel finds that Complainant has established common law rights in the mark through its work with the various departments of Huntsville, Alabama to meet its regulatory requirements for new subdivisions. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).

 

Rights or Legitimate Interests

 

The evidence does not indicate that Respondent has ever been commonly known by the domain names which he has registered.  Respondent asserts that it is intending to use the registered names to operate a website “offering voice, video and data services for the new McMullen Cove Community”.  The Panel concludes from the evidence that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant’s prior rights in the mark precede respondent’s registration; (3) respondent is not commonly known by the domain name in question).

 

The Panel finds that Respondent could possibly have registered the domain name with the intent to possibly protest or complain about Complainant’s plans to extend Edgewater Drive into the new residential area (McMullen Cove) being planned by Complainant, although Complainant failed to make this argument in his pleadings.  The Panel would note that the evidence reflects that Respondent originally used the disputed domain names to direct Internet users to this protest website.  Accordingly, the Panel finds that Respondent’s use of Complainant’s mark to protest and complain is further evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant…is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

 

Complainant points out that Respondent’s stated intention to use the domain names to operate a website “offering voice, video, and data services for the new McMullen Cove Community” is merely a ruse and does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate non-commercial use pursuant to Policy ¶ 4(c)(iii).  See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving complainant’s “cease and desist” notice).  The Panel finds that these assertions by Complainant are supported by the evidence.

 

Registration and Use in Bad Faith

 

Complainant argues and the Panel so finds that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent had actual or constructive knowledge of Complainant’s mark when Respondent chose to register the domain names by virtue of the fact that Complainant’s mark was prominently featured in a newspaper article in the local Huntsville paper before Respondent registered the disputed domain names.  The majority of the Panel finds that registration of a domain name confusingly similar to another’s mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

The Panel finds that Respondent’s use of the domain names to possibly criticize or protest Complainant’s plans to extend a certain street and diverting Internet users from the disputed domain names to another website entirely dedicated to the political purposes of defeating the extension of this street is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although respondent’s complaint website did not compete with complainant or earn commercial gain, respondent’s appropriation of complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where respondent knowingly chose a domain name, identical to complainant’s mark, to voice its concerns, opinions, and criticism about complainant).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mcmullencove.com>, <mcmullencove.org> and <mcmullencove.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Robert T. Pfeuffer, Chair

Todd Dickinson, Panelist

 

Dated: February 16, 2005

 

DISSENT FOR THE RECORD BY DIANE CABELL, Panelist

 

I would dismiss this action for failure to establish the existence of a "trademark or service mark in which the complainant has rights" in the term "McMullen Cove" as required by Policy ¶ 4(a)(i).  If no rights exist at the time of domain registration, it follows that there will be no grounds to find bad faith.

 

Complainant cites the date of a June press event as the date of first commercial use of the mark in Complainant's federal trademark registration application.  The only evidence of prior use was that of a meeting with city officials to get approval for the real estate development project. This meeting was not cited in the federal application, so even Complainant does not claim that as the first date of commercial use of the mark.  The trademark application itself has not yet been approved and therefore carries no weight in the establishment of rights.

 

According to traditional common law, advertising alone does not establish a trademark right unless it is accompanied, immediately or soon thereafter, by continuous offer of goods and services.  Here, Complainant's announcement indicates that sales would not begin for nearly a year.  2 McCarthy on Trademarks and Unfair Competition § 16:12 (4th ed.) cites several cases to this point: McNeil v. Mini Mansions, Inc., 178 U.S.P.Q. 312 (T.T.A.B. 1973) (use of mark intended for architectural services for comments from building inspectors is not public use for priority); Buti v. Perosa, S.R.L., 139 F.3d 98, 45 U.S.P.Q.2d 1985 (2d Cir. 1998) ("So that the issue is no longer in doubt, we hold ... that the mere advertising or promotion of a mark in the United States is insufficient to constitute 'use' of a mark 'in commerce,' within the meaning of the Lanham Act, where that advertising or promotion is unaccompanied by any actual rendering in the United States or in 'commerce which may lawfully be regulated by Congress.' "); In re Cedar Point, Inc., 220 U.S.P.Q. 533 (T.T.A.B. 1983) (Board held that the advertising of a service to be available in the future, but which was not yet available at the time of filing the application, does not support the grant of a registration; Board distinguished this from establishing priority of use in other contexts).

 

Respondent registered these domain names the day after the press event.  Complainant believes the content on the site was posted to tarnish Complainant's mark.  That may or may not be the case.  Respondent claims a bona fide use of the domains for non-competing goods and services and alleges that the term has only been used by Complainant as a geographic indicator. That may or may not be the case.  While these points may be relevant to findings of bad faith, they appear to me to be irrelevant to the existence of a mark.  Complainant simply failed to take the necessary steps to ensure adequate protection of its potential rights and cannot now attempt to invent them.

 

Diane Cabell, Panelist

 

National Arbitration Forum

 

 

 

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