SEMCO Productions, LLC v.
dmg world media (
Claim Number: FA0702000913881
PARTIES
Complainant is SEMCO Productions, LLC (“Complainant”), represented by Randall
S. Springer, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlhomeshow.com>, registered with Network
Solutions, LLC.
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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 8, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 12, 2007.
On February 9, 2007, Network Solutions, LLC confirmed by e-mail to
the National Arbitration Forum that the <atlhomeshow.com> domain name is
registered with Network Solutions, LLC
and that Respondent is the current registrant of the name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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”). This decision is being
rendered in accordance with the Policy, the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s
UDRP Supplemental Rules (the “Supplemental Rules”).
On February 16, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of
March 8, 2007 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@atlhomeshow.com by e-mail.
On March 5, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of 20 days to respond to the Complaint due to extenuating circumstances. Complainant did not consent to the extension. On March 6, 2007, the National Arbitration Forum, without Complainant’s consent, granted Respondent an extension and set a new deadline of March 19, 2007 for a filing of a Response.
A Response was received electronically on March 19, 2007, within the deadline for Response, but the National
Arbitration Forum did not receive hard copies of the Response until March 20,
2007, after the deadline for Response had passed. Therefore, the National Arbitration Forum
considers the Response to be deficient pursuant to Supplemental Rule 5(a).
On March 27, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has used the trademark ATLANTA HOME SHOW
(the “Trademark”) continuously since at least as early as 1978, in conjunction
with the service of arranging and conducting trade shows. The Trademark is the subject of U.S.
Trademark Registration No. 1,428,673, issued on February 10, 1987, for the
noted services, which Complainant contends is valid and subsisting. Complainant also claims ownership of a
similar
Complainant contends that its use of the Trademark has been in
conjunction with home and garden shows held in
Complainant contends that Respondent registered the domain name at
issue on August 10, 2006, and that such domain name incorporates the
Trademark. Complainant contends that the
domain name at issue is used to promote Respondent’s directly competitive event
named “the Home & Design Show at the Galleria,” which takes placed in
Complainant contends that Respondent has a history of attempting to
improperly trade on Complainant’s goodwill and reputation, by hiring one of
Complainant’s management personnel to act as Show Manager for Respondent’s home
show advertised and promoted using the domain name at issue. Complainant contends that Respondent recently
withdrew its membership with a trade show industry association to avoid the
public embarrassment of being voted out for violating non-compete clauses and
entering into Complainant’s geographic territory.
Complainant contends that it has had to contact Respondent on numerous
occasions to request that Respondent remove materials, which had been copied
directly from Complainant’s web site at <atlantahomeshow.com>. Complainant contends that Respondent has
purchased advertising on search engines such as Google to ensure that a person
typing in “Atlanta Home Show” will encounter Respondent’s web site at the top
of the search results. Complainant
contends that its repeated attempts to negotiate a transfer of the domain name
at issue, as with other attempts to avoid confusion, have met with no success.
Complainant contends that the term “Atl” in the domain name at issue is
a commonly used abbreviation for “
Complainant contends that the domain name at issue is thus confusingly
similar to the Trademark, being distinguished only by the generic top-level
domain “.com.”
Complainant contends that Respondent has no rights or legitimate
interests in the domain name at issue.
In support of this contention, Complainant argues that Respondent has no
connection or affiliation with Complainant, operates a home show in direct
competition with Complainant, has a history of bad faith attempts to compete
with Complainant and trade on Complainant’s reputation, and is not known by the
names “ATLANTA HOME SHOW” or “ATL HOME SHOW.”
Complainant contends that Respondent has registered the domain name at
issue in bad faith.
In support of this contention, Complainant argues that Respondent’s web
site using the domain name at issue advertises a home show located in the same
building historically used by Complainant, which home show is now run by
Complainant’s further employee; Respondent has purchased advertising to ensure
that the domain name at issue and not Complainant’s web site appear at the top
of search engine results; and given the well-known nature of the Trademark, it
is clear that Respondent registered the domain name at issue with the intent to
divert users to Respondent’s web site.
In support of this contention, Complainant further argues that
Respondent’s use of Complainant’s entire mark in the domain name at issue is an
indication of bad faith, and that there is no plausible reason why Respondent
selected an almost identical version of the Trademark other than to trade on
the goodwill of its competitor.
In support of this contention, Complainant further argues that
Respondent had actual notice of the Trademark (through direct competition with
Complainant and through the addition of Complainant’s former employee), and
constructive notice through Complainant’s
Complainant supports these contentions by a copy of a printout from the
USPTO’s online database relating to Complainant’s
B. Respondent
Respondent has submitted a
deficient Response in accordance with Rule 5(a). The Panel has no obligation to consider the
Response. See Talk City Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no
weight would be afforded to the facts alleged in the respondent’s deficient
submission, partly because it “did not contain any certification that the
information contained in the e-mail was, ‘to the best of Respondent’s knowledge
complete and accurate’” in accordance with Rule 5(b)(viii)); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to
accept Respondent’s deficient Response that was only submitted in electronic
form because it would not have affected the outcome had the Panel considered
it). The Panel has decided, nonetheless,
to consider the Response because it provides information that is quite helpful
to the Panel in its decision. See Strum
v. Nordic Net
Respondent contends that it is an international exhibition and
publishing company, producing more than 300 market-leading trade exhibitions,
consumer shows and fairs, and 45 related trade and consumer magazines,
newspapers, directories and market reports.
Respondent contends that it has more than 30 offices around the world in
countries including the
Respondent contends that it purchased the domain name at issue to
advertise its home and garden show in
Respondent denies the contentions of Complainant as to a history of
attempting to improperly trade on Complainant’s goodwill and reputation and as
to the reason for Respondent’s resignation from an industry trade association.
Respondent also denies the contentions that Complainant had to contact
Respondent on numerous occasions to request that Respondent remove materials
from its web site. In this regard,
Respondent contends that it received only two letters from Complainant
regarding the domain name at issue, one of which Respondent replied to. Respondent contends that those letters and
the filing of the Complaint hardly constitute “repeated attempts to negotiate a
transfer” of the domain name at issue, as asserted by Complainant.
Respondent contends that the domain name at issue is not likely to
cause confusion. In support of this
contention, Respondent argues that the protection afforded to a geographically
descriptive trademark such as the Trademark should be narrow and not prevent
Respondent from using permutations of the Trademark in its domain name. Respondent also argues that use of the domain
name at issue is not likely to cause confusion, in that the domain name merely
directs consumers to a web site advertising Respondent’s show and prominently
displaying Respondent’s well-known name and mark DMG WORLD MEDIA. Respondent further argues that the domain
name is used to highlight the geographic location of its home and design show,
e.g., “ATLhomeshow.com.” Respondent
finally argues that there are other home and design shows taking place in
Atlanta, naming two in particular, and that the coexistence of Complainant’s
and Respondent’s shows with these other shows likely causes customers and
vendors to rely on elements other than the common terms ATLANTA, HOME or SHOW
as source indicators.
Respondent contends that it has a legitimate interest in the domain
name at issue. In support of this
contention, Respondent argues that the domain name is being used to
geographically describe the location and nature of its home and garden show in
Respondent contends that it did not register and is not using the
domain name at issue in bad faith. In
support of this contention, Respondent argues that it acquired the domain name to
advertise its home and design show, and has not offered to sell the domain name
to Complainant. Respondent also argues
that it did not register the domain name at issue to prevent Complainant from
reflecting the Trademark in a domain name since Complainant already owns the
domain name <atlantahomeshow.com>.
Respondent further argues that it primarily registered the domain name
at issue to identify its own home and design show in
Respondent supports these contentions by pages from its web site
advertising its mark DMG WORLD MEDIA, pages from its web site using the domain
name at issue, pages from the web sites of others offering home and garden
shows in Atlanta, WHOIS records for Respondent’s other home show domain names,
a WHOIS record for Complainant’s domain name using the domain name
<atlantahomeshow.com>, pages from Complainant’s web site using that
domain name, and another page from its web site using the domain name at
issue.
FINDINGS
The Panel finds that most of the statements
made by Complainant and Respondent in their submissions are unsubstantiated, in
that there are no affidavits or declarations submitted with the
submissions. The Panel admits into
evidence only those statements that are verified by the documents attached to
the submissions, or that are admitted by the other party, or of which the Panel
can take administrative notice, in accordance with the Panel’s powers under
paragraph 10(d) of the Rules. The
certification required by paragraph 3(b)(xiv) of the Policy is not sufficient
in the opinion of the Panel to demonstrate the admissibility of the statements
made by the parties. Complainants are
reminded that they must prove each of
the three elements of the Policy (to be discussed), and respondents are reminded
that they must disprove any element
of the Policy for which the complainant has made a prima facie case. It is only
in the case of default that a Panel is entitled to rely on the unsubstantiated
statements of a complainant.
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 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.
The Panel finds that Complainant has
established trademark rights in the Trademark, by reason of its U.S. Trademark
Registration No. 1,428,673, which is current and existing and which protects
the Trademark for the service of “arranging and conducting trade shows.”
The Panel finds that the domain name at issue
is confusingly similar to the Trademark.
The Panel takes notice that “atl” is a well-known abbreviation for “
The Panel thus finds that Complainant has met
its burden of proof under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
domain name at issue under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum
Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by the
complainant under Policy ¶ 4(c), the burden then shifts to the respondent to
demonstrate its rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has made such a prima facie case in its Complaint. Respondent has not been authorized by
Complainant to use the domain name at issue or the Trademark. Respondent had notice of the dispute as of
the issue date of the
Respondent attempts to counter this case by pointing to the
geographical descriptiveness of the domain name at issue, to its consistent use
of similar geographically descriptive domain names in conjunction with shows
offered in other geographical locations in the
The Panel thus finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular
but without limitation, if found by the Panel to be present, shall be evidence
of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have
registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor
of that complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the
mark in a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
web site or other on-line location, by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your web
site or location.
The Panel reiterates
that most of the statements made in the Complaint have been found to be
inadmissible. Especially is there no
admissible evidence that Respondent has tried to disrupt the business of
Complainant, or intentionally attract visitors to its web site using the domain
name at issue by creating a likelihood of confusion with the Trademark. Although Respondent had constructive notice
of the Trademark, Complainant is required by the Policy to demonstrate more in
order to establish bad faith.
Complainant has not established that the Trademark is well known. The web pages that Complainant and Respondent
have submitted do not show any actions on the part of Respondent to trade on the
reputation or goodwill of Complainant associated with the Trademark. The single advertising listing of Respondent
in a Google search for “
The Panel thus finds
that Complainant has failed to meet its burden of proof under paragraph
4(a)(iii) of the Policy.
DECISION
Complainant not having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the Complaint
be dismissed.
Bruce E. O’Connor, Panelist
Dated: April 9, 2007
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