Deer Valley Resort Company v.
Intermountain Lodging and Reservation Center
Claim Number: FA0505000474344
PARTIES
Complainant
is Deer Valley Resort Company (“Complainant”),
represented by Preston C. Regehr, of Parsons Behle and Latimer,
201 South Main Street, Suite 1800, P.O. Box 45898, Salt Lake City, UT
84145-0898. Respondent is Intermountain Lodging and Reservation
Center (“Respondent”), represented by Marcus
G. Theodore, of Marcus G. Theodore, P.C.,
466 South 500 East, Salt Lake City, UT, 84102.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <deervalleylodging.info>,
registered with GoDaddy Software, Inc.
PANEL
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 12, 2005.
On
May 10, 2005, GoDaddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <deervalleylodging.info>
is registered with GoDaddy Software, Inc. and that the Respondent is the
current registrant of the name. GoDaddy
Software, Inc. has verified that Respondent is bound by the GoDaddy Software,
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
May 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 6,
2005 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@deervalleylodging.info by e-mail.
A
timely Response was received and determined to be complete on June 1, 2005.
On
June 2, 2005, Complainant lodged an additional submission. It was lodged in time and is discussed
below.
On
June 6, 2005, Respondent lodged a reply to the Complainant’s response. It was also lodged in a timely manner and is
discussed below.
On
June 13, 2005, Complainant was asked to correct its Complaint within five
working days, which it rectified.
Complainant had recorded the incorrect Registrar of the domain
name.
On June 15, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Clive Elliott as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a business
connected with resort services such as lodging reservations, mountain biking
services and promoting various promotional materials. Complainant contends that it has established rights in the DEER
VALLEY mark through registration of the mark with the United States Patent and
Trademark Office.
It asserts that the DEER
VALLEY mark is not only incontestable but is famous both domestically and
internationally in connection with “resort hotel and motel services” and that
these services include the rental and management of vacation and other
properties in the Park City, Utah area.
It asserts that, moreover, its DEER VALLEY marks are famous and
internationally renowned for skiing, resort, hotel and motel services and for
related goods and services, pointing out that it has been rated the number one
ski resort in North America and number two for lodging.
Complainant asserts that
Respondent’s registration of the <deervalleylodging.info> domain
name is confusingly similar to Complainant’s DEER VALLEY mark as the domain
name incorporates the mark and adds the generic term “lodging,” a term that is
related to the Complainant’s resort services.
Complainant
argues that Respondent is using the confusingly similar domain name to divert
Internet users to Respondent’s property rental and sales website.
In
terms of an alleged pattern of conduct, Complainant notes that Respondent has
not only registered one domain name incorporating the DEER VALLEY marks, it has
registered at least three such domains
- <deervalleypropertyrentals.com>, <deervalleylodging.info>,
and <deervalleycondos.us>.
Complainant disputes
Respondent’s allegations in its Response and argues that Complainant cannot
establish rights in the DEER VALLEY mark as the mark has become geographically
descriptive in nature. Complainant
argues that this allegation is false, and that any use of DEER VALLEY in the
region is made pursuant to Complainant’s consent or license.
B. Respondent
Respondent
is a property management company. It manages and books real estate properties
in various areas, including the Deer Valley area, in the state of Utah and
claims to have done so since 1979.
Respondent specifically manages several condominium units and other
properties and lodging in “Deer Valley.”
It states that it does not sell clothing in International Class 25,
provide restaurant services in International Class 42, ski resort services,
rental of skiing equipment and related supplies, and skiing instruction in
International Class 41.
Therefore,
it argues that the only federal mark of relevance is the narrow federal service
mark stag logo design, with the
words Deer Valley, registered on June 29, 1982, and Registration No. 1,199,979
for resort hotel and motel services in International Class 42. Respondent asserts that it does not use the
DEER VALLEY stag logo design in association with its management and booking
services.
In
support of an allegation that Deer Valley is a geographic description it points
out that the Park City Board of Realtors Multiple Listing service divides the
“Deer Valley” geographical region into the “Lower Deer Valley” region and the
“Upper Deer Valley” and that the Park City Board of Realtors uses the “Deer
Valley” notation when referring to properties located in the relevant locality.
Finally,
on this point Respondent notes that according to the Utah State Department of
Commerce Business Entity Search, 174 business entities have registered or are
still using the mark DEER VALLEY in the State of Utah, in connection with a
wide variety of goods and services.
Accordingly,
it submits that the term “Deer Valley” in the domain name refers to the name of
a geographical region, which predates Complainant’s registered trademark.
Respondent
asserts that Complainant is unable to establish rights in the DEER VALLEY mark
pursuant to the Policy 4(a)(i) because the mark has lost any distinctiveness
and has instead become geographically descriptive of the particular area of
Park City, Utah where Complainant’s resort and Respondent’s properties are
located. Respondent therefore contends that it has rights or legitimate
interests in the <deervalleylodging.info> domain name.
Thus, to summarize, Respondent argues:
·
There are no similar services.
·
There is no Bad Faith. There is no evidence of bad faith copying or
intent to profit from Complainant's trademarks.
·
The mark is not distinctive.
·
The term “Deer Valley” is a generic geographical term, entitling
Respondent and others to fair use of the term.
·
The Domain at Issue is not exclusive.
Other similar real estate URL’s are registered and in active use.
·
The disputed domain name does not contain the term “Deer Valley Resort”
which it acknowledges is owned by Complainant.
C.
Additional Submissions
Complainant
additionally claims Respondent is, without authorization, using other
trademarks of other resorts in the Park City, Utah area. Complainant says that it has just learned
that Respondent is also, without authorization, using the marks “Prospector
Square Conference Center and Lodging” and “Prospector Square Lodge and
Conference Center.”
In
response to the assertion that other entities in the region are using the term
Deer Valley, Complainant notes that these are simply examples of currently
unauthorized uses of the DEER VALLEY marks and that Complainant will enforce
its rights against those and either precipitate a name change, or compliance
and agreement to become a licensee.
Complainant
then responds to Respondent’s claim that the Utah State Department of Commerce
have 174 entries that have registered or are still using the DEER VALLEY mark
in the state of Utah and asserts that this is due in large part to the fact
that Complainant does not control what the Utah State Department of Commerce
does.
Furthermore, it states that a number of the domain names
relied on by Respondent and containing the term “Deer Valley” are not in active
use - referring specifically to <deervalleycondorentals.com>, <deervalleyaccomodations.com>
and <deervalleylodge.com>.
Respondent
responds to Complainant’s additional submissions, stating that there is no
evidence of trademark infringement, bad faith or intent to profit at
Complainant’s expense. It asserts that
its multiple domain name registrations are consistent with its longstanding
usage of the term “Deer Valley” in marketing and managing condominiums, real
property rentals, and lodgings located in the geographical environs proximate
to Park City. It goes on to submit that
these real properties cannot be marketed without referring to their
geographical location. Consequently, it
says that Complainant’s trademark claims are overreaching and are beyond the
scope of its trademark registrations.
FINDINGS
It is found that Complainant has failed
to make out the Grounds under paragraph 4(b) and (c) of the Policy and
accordingly the Complaint is denied.
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.
Geographic Names
The question of rights in geographic designations,
including place names, is a difficult one which has troubled courts and
tribunals around the world. The issue of the nature and extent of any rights in
the term “Deer Valley” is at the centre of the present dispute and the
resolution of that issue is central to properly determining the present
complaint. Accordingly, the Panel
wishes to make some preliminary observations on the point.
In Brisbane
City Council v. Joyce Russ Advertising Pty Ltd., D2001-0069 (WIPO May 14, 2001), a unanimous decision, the three members of
that Panel considered a similar type of situation. The city of Brisbane in
Australia had registered trademarks that included the word Brisbane and also
claimed rights in a range of common law marks which included the word Brisbane. One question was as to just how far any
rights existed.
The Panel held as follows:
In this case, the Complainant has not argued that the domain
name is identical to a name in which it has rights. Rather its claim is put on
the basis that <brisbane.com> is confusingly similar to its registered
trademarks that include the word "Brisbane" and various common law
marks which include the word "Brisbane".
The critical issue in this case is whether the Complainant
has shown that it has trademark rights sufficient to found this Complaint.
In this case, the Panel finds the Complainant has not
established any trademark or common law rights to the words "Brisbane
City" or, more significantly, for "Brisbane" sufficient to
sustain the Complaint. The cumulative reasons for this are as follows:
(a) The complainant’s trademark registrations give no
exclusive rights to the word "Brisbane" on its own
(b) The corporate logo used by the complainant is a stylised
view of its town hall and the words "Brisbane City" (not
"Brisbane" on its own) – see Complaint Annexure F, page 2;
(c) The Australian Intellectual Property Office [comments] in its examination report on the Respondent’s trademark applications
for brisbane.com [were unhelpful to the Complainant].
(Note, above quotation abridged by present
panelist)
It
is apparent that, in the Brisbane case,
the Panel was clearly influenced by the existence of
-
Forty-seven
registered corporate/business names in Australia that include the words
"Brisbane City;"
-
At
least thirty registered corporate/business names in Australia which feature the
word "Brisbane" on its own; and
-
Respondent’s
search which disclosed ninety-four registered trademarks and thirty-seven
applications Australian trademark register that feature the word BRISBANE.
Accordingly,
the Panel concluded that:
The
fact that there are many other existing users of the Brisbane name either as
part of a corporate or business name or as a registered trademark, is an
indication that the Complainant does not have trademark rights to
"Brisbane City" or "Brisbane." The Panel therefore finds
that this requirement under the Policy is not made out.
In
doing so the Panel relied on two decisions: Port of Helsinki v. Paragon
Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding that the
complainant had not established the threshold requirement of trademark rights
in the mark or denomination "Port of Helsinki") and City of Hamana
v. Paragon Int’l Projects Ltd., D2001-0001 (WIPO Mar. 12, 2001)
(rejecting the view that as a matter of principle, a unique geographical name
should belong to the owner of the geographical area in question).
What considerations need to be taken into
account in the present case? Firstly, it appears from the evidence that:
-
Complainant is clearly a major player in the Deer Valley
area;
-
it is undoubtedly in a large part responsible for the growth
and success of the Deer Valley Resort as a world-class ski area; and
-
it has taken active
and ongoing steps to prevent other entities from using the term Deer Valley in
any business context.
Equally, it appears from the evidence
that:
-
Deer Valley has for a reasonable period of time been
designated as a geographic area at the local and national level;
-
the geographic designation existed before Complainant
developed the area;
-
numerous other entities have used the “Deer Valley”
designation; and
-
the Ski Magazine extract relied on by Complainant, suggests,
in comparing Deer Valley to other resorts such as Whistler and Vail that the
comparison is between ski areas rather than unique identifiers of resorts - by
referring, for example, to Deer Valley and a photograph of Deer Valley Resort. (Emphasis added).
Complainant has gone to some length to
distinguish and diminish the impact of the use of the aforesaid term “Deer
Valley” by third parties. While it succeeds in part, it is hard to escape the
apparent fact that the Utah State Department of Commerce made something in the
order of 174 entries and while it has to be acknowledged that Complainant does
not control what the Utah State Department of Commerce it does certainly
suggest that a number of local entities have the desire to use the term to
describe their business or other activities.
Likewise, even if Complainant is correct and the various domains (<deervalleycondorentals.com>,
<deervalleyaccomodations.com> and <deervalleylodge.com>) are
inactive, the fact remains that they were applied for and seem to be the types
of domain names local operators might wish to use to advertise rental,
accommodation and lodging services in the area.
It is also noteworthy that the affidavit
of Ms. Lambert and filed by Complainant refers to a considerable number of
other entities who are using or have in the past used the Deer Valley term to
describe their business and other civic activities. It is accepted that Complainant might be taking legal action
against this veritable army of alleged infringers. However, it is also fair
to say that Respondent is certainly not alone in its wish to use the DEER
VALLEY designation in the way it has.
The
Panel now considers the formal grounds.
Complainant
contends that it has established rights in the DEER VALLEY mark through
registration of the mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 1,199,979 issued June 29, 1982; 1,575,619 issued January
2, 1990; and 1,504,048 issued September 13, 1988), registrations which have all
acquired incontestable status pursuant to 15 U.S.C. § 1115(b). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Complainant asserts that
Respondent’s <deervalleylodging.info> domain name is confusingly
similar to Complainant’s DEER VALLEY mark as the domain name incorporates the
mark entirely and adds the generic term “lodging,” a term that is related to
Complainant’s resort services. The
Panel concludes that such an addition is not enough to negate a finding of
confusing similarity between the domain name and the mark under Policy ¶
4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
Respondent
in turn asserts that Complainant is unable to establish rights in the DEER
VALLEY mark pursuant to Policy ¶ 4(a)(i) because the mark has lost any
distinctiveness and has instead become geographically descriptive of the particular
area of Park City, Utah where Complainant’s resort and Respondent’s properties
are located. See Rush v. Or. City Link, FA 95318 (Nat.
Arb. Forum Sept. 7, 2000) (finding that a geographic location was incapable of
serving as a trademark); see also Travel Berkeley Springs, Inc. v.
Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) (finding
that the complainant could not have superior right to use of BERKELEY SPRINGS
to the exclusion of other entities).
The
Panel finds that Respondent’s addition of the term “lodging” to Complainant’s
DEER VALLEY mark in the <deervalleylodging.info> domain name is
sufficient to distinguish the domain name from the mark pursuant to Policy ¶
4(a)(i). See Entrepreneur Media,
Inc. v. Smith,
279 F.3d 1135, 1147 (9th Cir. 2002) (“Similarity of marks or
lack thereof are context-specific concepts. In the Internet context, consumers
are aware that domain names for different Web sites are quite often similar,
because of the need for language economy, and that very small differences
matter.”); see also Bank of Am. Corp. v. Fluxxx, Inc., FA 103809
(Nat. Arb. Forum Feb. 18, 2002) (finding that the complainant failed to prove
“confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate
that the public would be confused between its NATIONSBANK mark and the disputed
domain name <nationsbanking.com>).
Given the relevance of Deer Valley as a
geographic indicator there is a conflict between the rights Complainant has by
way of trademark registration and the rights of the community at large to use
the geographic indicator outside the scope of the trademark registrations. That
is, so as to not arguably infringe those registrations. Insofar as Respondent’s alleged infringement
is concerned sound arguments are advanced by both parties and it is not
appropriate to try and resolve those issues here. The Panel does however refer to the Neusiedler decision cited below and notes the
principle that the use of geographic terms as such in domain names or
otherwise by third parties is generally possible despite a trademark
registration.
It is however sufficient for present
purposes to say that the Panel finds that Complainant has the necessary rights
for the purposes of the Policy and accordingly that this ground is made out.
That however is not determinative of the Complaint, for reasons which will
become apparent below.
For the reasons indicated above there is
simply too much in dispute in this case to allow a Panel to safely conclude
that Complainant has made out this ground.
Indeed, on the balance of evidence, it is not possible to form a
reliable view that Respondent lacks a legitimate interest to use the “Deer
Valley” description when it deals in, inter alia, lodgings in the Deer
Valley region of Utah. See also comments below as to the possible bona fide
offering of goods or services. That is certainly not to say that the conduct is
legitimate, just that on the record as it stands, the Panel is not satisfied
that Complainant has satisfied its onus.
For these reasons the Panel finds that
this ground is not made out.
As outlined above,
the Respondent contends that it has rights or legitimate interests in the <deervalleylodging.info>
domain name, as the domain name is geographically descriptive. Respondent argues that the area where its
rental properties are located is commonly referred to as “Deer Valley,” and it
subsequently has rights or legitimate interests in a domain name that uses
“Deer Valley” as a geographic indicator.
The Panel finds
that Respondent is using the domain name in a geographically descriptive
manner. Thus, the Panel concludes that
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO Feb. 5, 2001)
(“Geographic names can not be monopolized by registering a trademark or company
name. The use of geographic terms as such in domain names or otherwise by third
parties is generally possible despite a trade-mark registration”); see also
Spherion Corp. v. Solomon, FA 112454 (Nat. Arb. Forum July 22, 2002)
(stating that “[i]t has been held that in the United States a geographically
descriptive name is to be treated as a generic term and does not by its
registration with the United States Patent and Trademark Office become
absolutely protectable” in finding that the respondent had rights and
legitimate interests in the <saratoga.biz> domain name).
Furthermore, the Panel finds that
Respondent is using the <deervalleylodging.info> domain name to
operate a business website for its property rental and sales service, and that
such use qualifies as a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i). Thus, the Panel
concludes that Respondent has established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat.
Arb. Forum Feb. 13, 2001) (stating, “Respondent is using the domain
<groceryoutlet.com> for a website that links to online resources for
groceries and similar goods. The domain is therefore being used to describe the
content of the site,” as evidence that the respondent was making a bona fide
offering of goods or services with the disputed domain name); see also
Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding
that the respondent’s use of the disputed domain name to make a bona fide
offering of services bestowed rights and legitimate interests in the domain
name).
The
Panel finds that Respondent’s <deervalleylodging.info> domain name
is geographically descriptive. Thus, the Panel concludes that Respondent did
not register or use the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Lee Procurement
Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7,
2005) (“[B]ecause Complainant’s mark is comprised of primarily
geographically descriptive and generic terms, the Panel concludes that
Respondent did not register or use the domain name in bad faith pursuant to
Policy ¶ 4(a)(iii).”); see also Alaska Communications Sys. Holdings Inc. v.
InfoSitServer, FA 114363 (Nat. Arb. Forum July 24, 2002) (finding no bad
faith registration or use where the respondent’s <alaska.biz> domain name
was deemed to be composed of a geographically descriptive term).
Furthermore,
the Panel finds that Respondent has rights or legitimate interests in the <deervalleylodging.info>
domain name pursuant to Policy ¶ 4(a)(ii). Thus, the Panel concludes that
Respondent did not register or use the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See Subleaseexchange.com v. McGinnis, FA 421267 (Nat. Arb. Forum Apr. 5, 2005)
(“Respondent’s rights and legitimate interests in the <leasetrade.com>
domain name pursuant to Policy ¶ 4(a)(ii) allow a finding that there was no bad
faith registration or use under Policy ¶ 4(a)(iii).”); see also DJF Assocs., Inc. v. AIB Communications,
FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that
it has a legitimate interest in the domain name because the respondent selected
the name in good faith for its website, and was offering services under the
domain name prior to the initiation of the dispute).
For these reasons the Panel finds that
the ground is again not made out.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Clive Elliott
Panelist
Dated: June 27, 2005
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