NATIONAL ARBITRATION FORUM

 

DECISION

 

SEMCO Productions, LLC v. dmg world media (uk) ltd c/o John Branigan

Claim Number: FA0702000913881

 

PARTIES

Complainant is SEMCO Productions, LLC (“Complainant”), represented by Randall S. Springer, of Womble Carlyle Sandridge & Rice, PLLC, One West Fourth Street, Winston-Salem, NC 27101.  Respondent is dmg world media (uk) ltd c/o John Branigan (“Respondent”), represented by Kelly M. Bargmann, of Morgan, Lewis & Bockius LLP, 101 Park Avenue, New York, NY 10178.

 

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 Georgia state registration. 

 

Complainant contends that its use of the Trademark has been in conjunction with home and garden shows held in Atlanta, Georgia, attended by approximately 30,000-40,000 annual visitors.  Complainant contends that it has made significant investments of time and money marketing and advertising its shows, and consumers have come to rely on the Trademark to identify Complainant’s high quality shows.  Complainant also claims ownership and use of the domain name <atlantahomeshow.com> in conjunction with use of the Trademark.

 

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 Atlanta in the same building as Complainant’s show.

 

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 “Atlanta,” as evidenced by various examples including the use of ATL as the airport code for the Atlanta International Airport, and by a search on any Internet search engine for “ATL” that will result in numerous hits relating to Atlanta.

 

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 U.S. trademark registration for the Trademark.

 

Complainant supports these contentions by a copy of a printout from the USPTO’s online database relating to Complainant’s U.S. trademark registration, with a WHOIS record for the domain name at issue, with pages from Respondent’s web site, and with a Google search for “atlanta home show.”

 

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 Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

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 United States.  Across the U.S., Canada, the UK, Australia and New Zealand, Respondent contends that it produces over 50 home, design and garden shows.

 

Respondent contends that it purchased the domain name at issue to advertise its home and garden show in Atlanta, Georgia called “The Home & Design Show at the Galleria.”  The domain name at issue, according to Respondent, appears in advertising for that home and garden show to direct customers and visitors to Respondent’s web site providing information as to the show as well as to other shows offered by Respondent and also providing a link to Respondent’s general web site at <dmgworldmedia.com>.

 

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 Atlanta.  Respondent also argues that such use is consistent with Respondent’s use and registration of many other domain names (listed) that include geographic indicators to identify the web sites for the shows that correspond to the geographic indicators.  Respondent further argues that it had a good faith basis for believing that it was entitled to use the domain name at issue since the domain name was descriptive.  Respondent concludes that its legitimate interest makes it unnecessary to consider bad faith under the Policy.

 

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 Atlanta and not for the purpose of disrupting Complainant’s business, whose shows take place at different times and do not compete with those of Respondent.  Respondent argues that it does not attract Internet users to its web site by creating a likelihood of confusion with the Trademark, because the shows of Respondent and Complainant do not compete, because they take place at the same location on different dates.  Respondent argues that customers and vendors do not have to choose to attend or participate in one show over another, and that viewers of the web site using the domain name at issue would immediately recognize Respondent’s show as being produced by Respondent due to the name of Respondent’s show and the different look and feel of Complainant’s and Respondent’s web sites.

 

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.

 

Identical and/or Confusingly Similar

 

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 “Atlanta.”  Respondent does not dispute this fact, and appears to rely on the fact in arguing that the designation is used to highlight the geographic location of its home and garden show.  Neither does the elimination of spaces in the Trademark nor the addition of the generic top-level domain “.com” avoid confusing similarity.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  Nor can Respondent argue that the domain name at issue consists of words in the public domain, since that particular combination of words has been removed from the public domain for the services being offered by both Complainant and Respondent by reason of Complainant’s U.S. trademark registration.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.  15 U.S.C. §1057(b).  Finally, the fact that other home and garden shows operate in Atlanta is irrelevant, since the other shows neither use nor simulate the Trademark in their trademarks or domain names.  

 

The Panel thus finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

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 U.S. trademark registration for the Trademark, before its purchase of the domain name at issue in 2006.  Respondent is not now known by the domain name at issue, and Respondent is using the domain name for commercial purposes.

 

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 U.S., and to its good faith belief that it was entitled to use a geographically descriptive domain name.  All of these arguments are undone by comparing Respondent’s practices in other cities with those in Atlanta.  In the other cities, the trademark or trade name for Respondent’s show includes the actual city or regional name and the corresponding domain name either includes that name (e.g., <neworleanshomeshow.com> for the “New Orleans Home Show”) or a shortened name that is a recognized nickname for the name (e.g., <phillyhomeshow.com> for the “Philadelphia Home Show”).  It is only in Atlanta, where the Trademark and domain name consisting of “atlanta home show” are unavailable due to their ownership and use by Complainant, has Respondent chosen to use an abbreviation in a domain name used in conjunction with a competing show.  See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum Jul. 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).

 

The Panel thus finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

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 “atlanta home show” submitted by Complainant is inconclusive without more.  See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).  Consequently, the Panel finds that Complainant has failed to establish a prima facie case for any of the circumstances in paragraph 4(b) of the Policy.

 

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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