Asheville Area Chamber of Commerce v.
James J. Miller d/b/a Marketing Concepts
Claim Number: FA0505000479535
Complainant
is Asheville Area Chamber of Commerce (“Complainant”), represented by W.
Kevin McLaughlin, of Van Winkle, Buck, Wall, Starnes & Davis, P.A.,
Post Office Box 7376, Asheville, NC 28802-7376. Respondent is James J. Miller d/b/a Marketing Concepts
(“Respondent”), 25 Sunset Parkway, Asheville, NC 28801.
The
domain name at issue is <ashevillechamber.com>, registered with Gkg.net,
Inc.
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.
Dennis A. Foster as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 23, 2005. On May 24, 2005, the
National Arbitration Forum informed Complainant of a few deficiencies in the
Complaint, such as including the d/b/a name for Respondent. Complainant submitted an amended Complaint
on May 27, 2005.
On
May 20, 2005, the registrar Gkg.net, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ashevillechamber.com> is
registered with Gkg.net, Inc. and that the Respondent is the current registrant
of the name. Gkg.net, Inc. has verified
that Respondent is bound by the Gkg.net, 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 31, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 20,
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@ashevillechamber.com by e-mail.
A
timely Response was received and determined to be complete on June 20, 2005.
In
accordance with Supplemental Rule 7, Complainant submitted an Additional
Written Statement on June 23, 2005. In
turn, also in accordance with Supplemental Rule 7, Respondent answered
Complainant’s June 23, 2005 submission on June 26, 2005. The Panel has taken into consideration each
of these additional filings.
Respondent
submitted yet another Additional Statement on July 1, 2005 that was not in
accordance with Supplemental Rule 7(c) because it was received more than five
(5) days after Complainant’s Additional Statement, and also because Respondent
did not send the additional $250 required for each Additional Statement. The Panel did not take into consideration
this last Respondent Additional Statement as it did not conform to Rule 7(c).
On June 24, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Dennis A. Foster as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
--The
mission of the Asheville Area Chamber of Commerce, an organization of
approximately 1,900 members, is to promote business and industries in an effort
to attract and retain jobs and to promote tourism in the Asheville area of
Western North Carolina. To accomplish
this mission, the Chamber adopted and uses the ASHEVILLE AREA CHAMBER OF
COMMERCE, ASHEVILLE CHAMBER OF COMMERCE, and ASHEVILLE CHAMBER service
marks. These service marks are part of
the materials that the Chamber distributes via print materials and/or
television media to every state in the United States.
--In
addition to the print materials and television media described above,
Complainant operates a website using the <ashevillechamber.org> domain
name. Complainant has used this domain
name since 1996.
--Since
at least February 17, 2004, Respondent has operated a website using the <ashevillechamber.com>
domain name, where he solicits individuals interested in visiting the Asheville
area and refers them to Asheville area lodgings.
--The
first line of Respondent’s website states, “The Greater Asheville
Chamber-Experience the Beauty of the Blue Ridge Mountains.” Respondent does not represent, nor is he in
any way affiliated with the Asheville Area Chamber of Commerce. A copy of
Respondent’s website is attached to this Complaint as “Exhibit A”.
--The
disputed domain name is exactly the same as Complainant’s service mark with the
exception of the extension [generic top level domain—gTLD] Respondent chose to
use, i.e., “.com.”
--The
ASHEVILLECHAMBER service mark has obtained secondary meaning as the consuming
public understands that this mark, when used in context, refers to Complainant,
Asheville Area Chamber of Commerce.
--The
Chamber has created this secondary meaning through great expenditures in
advertising, the promotion of its website, the length of time it has used this
service mark, and the consumer traffic to the <ashevillechamber.org>
website.
--
Respondent intentionally copied the ASHEVILLECHAMBER domain name. Such intentional, direct copying of the
ASHEVILLECHAMBER domain name is prima facie evidence of secondary
meaning which strengthens Complainant’s rights in this service mark. See Larsen v. Terk Techs. Corp.,
151 F.3d 140, 148 (4th Cir. 1998).
--
Respondent chose the ASHEVILLECHAMBER domain name in an effort to palm off the
goodwill the Chamber has generated through great expense, promotion, and time.
--
Respondent has not been commonly known by the domain name, <ashevillechamber.com>.
--
Respondent is not making a legitimate, noncommercial, or fair use of the <ashevillechamber.com>
domain name. Respondent is
intentionally, misleadingly diverting consumers to its website to offer some of
the same or similar services offered by Complainant.
--
Respondent has registered the disputed domain name only for disrupting the
business of Complainant.
--
Respondent has intentionally attempted to attract for commercial gain consumers
and Internet users to Respondent’s website by using the same domain name with a
different extension [gTLD]. The first
four words found on Respondent’s website are “The Greater Asheville
Chamber.” Respondent’s use of the words
“The Greater Asheville Chamber” is an intentional attempt to mislead consumers
as to the source, sponsorship and endorsement of Respondent’s website and its
affiliation with the Asheville Area Chamber of Commerce.
--
Respondent may have registered the domain name in order to sell or transfer it
to Complainant.
B.
Respondent
--Respondent
is a group of business owners whose businesses are primarily located outside of
Buncombe County, North Carolina, in which the city of Asheville is
located. Due to discriminatory
promotion of businesses located only within Buncombe County by the Asheville
Area Chamber of Commerce through the website, <exploreasheville.com>, our
businesses have suffered greatly. This
is why Respondents banded together to form the Greater Asheville Chamber
of Commerce. Respondent’s group was formed in 2000 and began using <ashevillechamber.com>
as of March 2001 (Response Exhibit A).
--The
Asheville Area Chamber of Commerce has no registered trademarks associated with
their business and group of businesses.
Their claim to the service mark in the descriptive term ASHEVILLE
CHAMBER has no merit, as this term is only used through their domain name. The term ASHEVILLE CHAMBER is not used as a
trademark. In their printed material
and television promotions, the Chamber refers to themselves consistently as the
“Asheville Area Chamber of Commerce.”
--While
many, if not all, of Respondent’s members are members of the Complainant’s
organization, Respondent’s members are unfairly excluded from Complainant’s
website because Respondents are located outside Buncombe County, North
Carolina, while Complainant is located in Asheville.
--It
is common for one geographic area to have more than one Chamber of Commerce.
--Respondents
(the Greater Asheville Chamber of Commerce) are members of the U.S. Chamber of
Commerce, as is Complainant.
--The
Respondent intends, in good faith and in sharing business across the board, to
reclaim the lost business that Complainant’s <exploreasheville.com> has
caused through unfair trade practices and restraint of trade because of their
exclusion of non-Buncombe County businesses.
C.
Additional Submissions
--The
domain name in dispute is <ashevillechamber.com>. Furthermore, Asheville is a city located in
the county of Buncombe. Given these
facts, it is difficult to understand why Respondent group of business owners
have chosen to associate their businesses with a domain name that incorporates
the name of a city which is in a county where their businesses are not even
operating.
--One
reason why they would use this particular domain name is to confuse the public
and to profit from a similar domain name.
--
Respondent now identifies itself as the “Greater Asheville Chamber of Commerce”
and informs the Panel that it, like Complainant, is a member of the U.S.
Chamber of Commerce, but this is only as of a few months ago.
--Only
two lodges are advertised on the disputed domain name website, and one of these
belongs to Respondent.
--
Complainant sent three letters to Respondent on April 20, 2005, April 27, 2005,
and May 11, 2005 (Complainant Additional Submission Exhibits B, C and D). Respondent did not answer any of these
letters, and posted a disclaimer on his website only after this action was
initiated.
--Respondent’s
true reason for registering and operating the <ashevillechamber.com>
domain name may be revealed in Respondent’s own Exhibit A-1, “Lodging Owners
Association Meeting Minutes,” April 11, 2001: “The primary source of internet
traffic for almost all of us is that the Asheville Area Chamber of Commerce’s
website links directly to our sites.” The website referred to was Complainant’s
<ashevillechamber.org>. This
proves that the <ashevillechamber.org> domain name has obtained
significant status and was the focal point for consumers looking for lodging in
the Asheville area as far back as April, 2001.
It also proves that Respondent’s decision to register the <ashevillechamber.com>
domain name could only have been made in an effort to profit from this
goodwill.
Respondent
is continuing to operate this website which advertises only two lodgings. This only serves to further erode the
goodwill that Complainant has generated and to confuse consumers as to the
source, sponsorship, and endorsement of Respondent’s website.
--The
reason we, Respondent, would set up the website at <ashevillechamber.com>
is the same reason we would become members of the Asheville Area Chamber of
Commerce even though we are not located in Asheville. As stated before in our Response, Asheville is considered to be
the capital of the mountains and that is what people look for when coming to
the mountains to stay, vacation, and spend tourism dollars.
--The
Asheville Area Chamber of Commerce markets its services and charges the same
fee to become a Chamber member to cabin owners outside of Buncombe County but
then, in our opinion, the Chamber discriminates by promoting only those cabin
owners inside of Buncombe County through the Asheville Tourism Development
Board with use of their site, <exploreasheville.com>. Therefore, we (Respondent) are puzzled as to
why the Asheville Area Chamber of Commerce cannot understand our marketing our
businesses and forming the Greater Asheville Chamber of Commerce.
--It
was Complainant’s <exploreasheville.com> website that from 2001 began pulling
referrals away from Respondent’s members.
It was then that we Respondents formed our association and that point in
time is when our group acquired the disputed domain name to promote our
businesses.
--It
became clear to Respondent and the Association members that our only way to
promote our businesses and compete with the unfair trade violation set up by
Complainant, Asheville Area Chamber of Commerce, and their marketing through
the Asheville Travel and Tourism Board’s domain name, <exploreasheville.com>,
was to form a regional chamber, the Greater Asheville Chamber of Commerce.
Complainant, Asheville Area Chamber of
Commerce, is a chamber of commerce and perhaps the chamber of commerce in the
city of Asheville, Buncombe County, North Carolina. Off and on for the past several years, Complainant has been
involved in a dispute with Respondent over use of Complainant’s name. Respondent also claims it is a chamber of
commerce in the same area of North Carolina—the Greater Asheville Chamber of
Commerce.
Despite their multiple filings, neither
Complainant nor Respondent ever furnished the Panel with a copy of the
registration of the disputed domain name.
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.
Complainant does not have a registered
trademark or service mark in its name, Asheville Area Chamber of Commerce. However Complainant does claim that it has
common law service mark rights in this name.
In particular, Complainant contends that:
The
Chamber’s use of the domain name <ashevillechamber.org> entitles it to
protection as it is a service mark for the Chamber. This service mark has obtained secondary meaning as the consuming
public understands that this mark, when used in context, refers to the
Asheville Area Chamber of Commerce. The
Chamber has created this secondary meaning through great expenditures in
advertising, the promotion of its website, the length of time it has used this
service mark, and the consumer traffic to the <ashevillechamber.org>
website.
Unfortunately, Complainant did not
provide the Panel with any evidence to support these bold contentions of
secondary meaning. Complainant is
represented by reputable counsel and thus the Panel is at a loss as to why
Complainant chose not to substantiate its contentions of secondary meaning with
some examples of use against which the Panel could measure its
contentions. Respondent, for its part,
contends Complainant’s name is descriptive and has not acquired secondary
meaning.
The Panel agrees with Respondent that
Complainant’s name is descriptive and, in the absence of corroborating evidence
from Complainant, the Panel cannot determine whether the name Asheville Area
Chamber of Commerce has acquired secondary meaning and is associated by the
relevant public with Complainant and its services.
Previous panels adjudicating under the
Policy have come to similar conclusions.
Notably in Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum, May 19, 2003),
the Panel stated in relevant part: “Although Complainant asserts common law
rights in the WELLSERV mark, it failed to submit any evidence indicating
extensive use or that its claimed mark has achieved secondary source
identity.” As in our case at hand, in Weatherford,
the complainant “contends that it has
prominently and extensively used, promoted and advertised its products and
related services under the WELLSERV mark.”
For similar Policy cases on common law trademark rights, see Cyberprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (denying common
law trademark rights because of lack of evidence) and Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum, Aug. 17, 2000) (finding common law
trademark rights after the complainant showed use over a significant period of
time).
Complainant cites an inapposite U.S.
Federal Appellate case (Larsen v. Terk Techs. Corp., 151 F.3d 140, 148
(4th Cir. 1998)) and contends that the mere fact that Respondent used part of
its name is evidence the name Asheville Area Chamber of Commerce has acquired
secondary meaning. The Panel finds this
reasoning unpersuasive. The Larsen
case involved a famous Danish designer whose full personal name was used to
sell counterfeit products. That is a
far cry from Respondent here using part of the name of a geographical
commercial entity.
The Panel finds that Complainant has
failed to carry its burden of proof under paragraph 4(a)(i) of the Policy to
show it has service mark rights in the disputed domain name, <ashevillechamber.com>.
Since the Policy requires that
Complainant prove Policy paragraphs 4(a)(i-iii) inclusively, the Panel does not
need to reach the issues of Rights and Legitimate Interests or of Bad Faith.
DECISION
Complainant
failed to carry its burden of proof under paragraph 4(a)(i) of the Policy and
the Panel thus concludes that relief shall be DENIED.
Dennis A. Foster, Panelist
Dated: July 8, 2005
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