DECISION

 

Deer Valley Resort Company v. Intermountain Lodging

Claim Number: FA0505000471429

 

PARTIES

Complainant is Deer Valley Resort Company (“Complainant”), represented by Preston C. Regehr, of Parsons Behle and Latimer, 201 South Main Street, Suite 1800, Salt Lake City, UT 84145-0898.  Respondent is Intermountain Lodging (“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 <deervalleycondos.us>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned Daniel B. Banks, Jr., as Panelist, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2005; the Forum received a hard copy of the Complaint on May 4, 2005.

 

On May 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <deervalleycondos.us> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 31, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

A timely Response was received and determined to be complete on June 1, 2005.

 

Additional submissions were timely received from Complainant and Respondent and were considered in this proceeding.

 

The Panel received a second additional submission from the Complainant which was not submitted in accordance with the rules and the Panel did not consider that material.

 

On June 6, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant owns and operates the Deer Valley Resort near Park City, Utah.  It has incontestable federal and common law rights to the DEER VALLEY marks for use with resort hotel and motel services; ski resort services; rental of skiing equipment and related supplies; skiing instruction; restaurant services; clothing and hats; resort services such as lodging reservation services; mountain bike services; and various promotional materials including clothing, drinking glasses, pins, spoons, pennants, packaged foods and other souvenir items.  Federal service mark rights for DEER VALLEY resort hotel and motel services were first obtained by U.S. Registration on June 29, 1982.  First use and first use in interstate commerce was in September 1980.  Federal service mark rights for DEER VALLEY for ski resort related services were first obtained by U.S. Registration on January 2, 1990.  First use and first use in interstate commerce was in December 1981.  Federal trademark registration for DEER VALLEY was obtained on September 13, 1988 for clothing goods, namely shirts and hats.  First use and first use in interstate commerce was in December 1981.

 

Complainant also claims common law trademark and service mark rights in the DEER VALLEY mark by use since at least January 1, 1990 in connection with resort services such as lodging reservation services; since 1993 in connection with mountain biking services; and since 1995 in connection with promotional materials, including the 2002 Winter Olympic Games held in Utah.  

 

Complainant claims that the disputed domain name, <deervalleycondos.us>, is identical or confusingly similar to the DEER VALLEY marks in which Complainant has rights. 

 

Complainant claims that Respondent has no rights or legitimate interests in the domain at issue because it is not licensed by Complainant and is not commonly known by the domain name at issue.  Users attempting to access the domain at issue are redirected to Respondent’s <gotoparkcity.com> website where Respondent is clearly seeking commercial gain.  Respondent is commonly known by various iterations of its business name such as, Intermountain Lodging, Intermountain Lodging and Reservation Center, Inc., and Condominium Rentals of Park City Utah. 

 

Complainant also claims that Respondent registered or is using the domain at issue in bad faith by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of a product or service on Respondent’s website.  It is claimed that Respondent registered the domain name at issue on January 31, 2004, years after Complainant had first used and federally registered the DEER VALLEY marks.  Therefore, Respondent had actual and constructive notice of the existence of Complainant’s rights in the DEER VALLEY marks.  Registration of the disputed domain name after such notice is strong evidence of Respondent’s bad faith.  Second, accessing the domain name at issue redirects the users to Respondent’s website at <gotoparkcity.com> which advertises and promotes various lodging properties, including condominiums for rent in the Park City, Utah area.  Such rentals are in very close geographical proximity to the Deer Valley Resort. 

 

Respondent appears to engage in a pattern of registering multiple domain names that infringe on the rights of others.  For example, Respondent has also registered the domains <deervalleypropertyrentals.com> and <deervalleylodging.info>.  It has also registered the <canyonscondos.com> domain name which is the mark of another resort in the Park City, Utah area, “The Canyons Resort.” 

 

B. Respondent

Respondent admits to Complainant’s federal registration of the service marks and trademark as set out in the Complaint.  Respondent has no knowledge of any exclusive usage of Complainant’s common law trademark and service mark, DEER VALLEY, in connection with resort services, mountain biking services, and various promotional materials.  According to the Utah State Department of Commerce Business Entity Search, 174 business entities have registered or are still using the DEER VALLEY mark in connection with a wide variety of goods and services in the State of Utah.  Consequently, neither the State of Utah nor the real estate industry recognizes Complainant’s exclusive rights to the term DEER VALLEY.

 

Respondent is a property management company which, since 1979, has managed and booked real estate properties in various areas of Utah including the Deer Valley area.  It does not compete with Complainant in clothing, restaurant services, or ski resort services.

Therefore, the only federal mark of relevance is Complainant’s narrow federal service mark stag logo design with the words “Deer Valley” registered on June 29, 1982.  Respondent does not use this stag logo design in association with its management and booking services. 

 

The term DEER VALLEY is generic and refers to the location of booking and real estate services with respect to widely held properties located within this geographical area.  The term DEER VALLEY standing alone with reference to real estate bookings and real estate sales and management may not be registered as a trademark because it does not function as an exclusive trademark to connote a specific origin or nature of goods and services with a particular party.  A trademark cannot be registered to refer to a primarily geographically descriptive location under 15 U.S.C. § 1052(e)(3).

 

In summary, Respondent denies that the domain name is identical to Complainant’s marks; denies that it is confusingly similar; denies that Complainant has been granted state and federal exclusive rights to use the term DEER VALLEY alone unaccompanied by the deer stag logo for lodging and property management services and vacation options in the area; denies that Internet users will be confused as to the source of origin of the services offered at the domain in issue; denies that Respondent lacks rights or legitimate interest in the domain at issue since it has been using the term for over twenty-five years; denies that Complainant has exclusive rights to preclude others from using the term DEER VALLEY for the provision of real estate services; and denies that Respondent did not have the right to register the domain name at issue.

 

With respect to the bad faith registration allegations, Respondent denies that it has created a likelihood of confusion with Complainant’s marks in registering the domain name at issue.  There is no evidence of any customer confusion which has resulted from Respondent’s usage of the term DEER VALLEY.  Respondent’s multiple domain name registrations are consistent with its longstanding usage of the term DEER VALLEY in marketing and managing condominiums, real property rentals and lodging located in the geographical environs of Park City.  These properties cannot be marketed without referring to their geographical location.  The bad faith objections of Complainant are unfounded.  Respondent provides no similar services; there is no evidence of bad faith copying or intent to profit from Complainant’s trademarks; the mark is not distinctive since there are 174 other business entities using the term; DEER VALLEY is a generic geographical term; and the domain name at issue is not exclusive.  Respondent lists twelve other domain names using the DEER VALLEY term as its primary name.  There is no intent to divert business to Respondent; or evidence of misdirected orders establishing customer confusion; and, no evidence that Respondent has demanded compensation for purchase of its domains at issue.

 

C. Additional Submissions

A.  Complainant

Respondent cannot have used the term DEER VALLEY for over twenty-five years because Respondent was not incorporated until November 20, 1981.  Deer Valley is not a geographical area.  Respondent’s attempts to demonstrate that fact through the attachment of a telephone directory map is not helpful because the location of the word “Deer Valley” on the map is the precise location of the Deer Valley Resort.   The map also shows many roads surrounding the Resort some of which contain the name “Deer Valley.”  Those were named with the authorization of Complainant.  The Park City Board of Realtors Multiple Listing Service is also presented.  It is not helpful because it simply demonstrates that a third party is using the DEER VALLEY marks descriptively and is thus misusing the marks. 

 

Respondent’s exhibits showing eight platted subdivisions which include the name Deer Valley are not helpful because four of those are licensees of Complainant, one is in the process of being licensed and the other three are unauthorized uses against which Complainant intends to enforce its rights. 

 

Respondent’s exhibit 4 contains excerpts from a book published by a third party that discusses the Deer Valley Resort.  While this book refers to the locals using the term Deer Valley to describe the area where Complainant’s resort is located, Complainant says that the founders did not use that term based on any geographical location or reference.

 

Complainant further says the Deer Valley marks are not generic.  By definition, a generic term identifies a type of goods or services, not the source of such goods or services.  With respect to the 174 other entities that have registered or are using the DEER VALLEY mark in the State of Utah, Complainant has requested the Utah Department of Commerce to stop allowing the registration of business entities with names that contain Deer Valley.  The State of Utah has stated that name availability is a “distinguishable on the record” standard and as such, the simple addition of another word to any existing name registration will render the name distinguishable enough under Utah law to be registered.

 

Complainant says Respondent’s services are substantially similar to Complainant’s.  Respondent’s business of renting, managing and selling real property involving condominiums, property rentals and lodging clearly overlaps with Complainant’s resort hotel and motel services. 

 

With regard to the twelve domain names cited by Respondent that incorporate the DEER VALLEY mark, three of those domains are not active, two of those are registered to Complainant, one is in the process of being transferred and one is registered to Respondent.  The remaining five domains are being pursued by Complainant. 

 

Finally, Complainant says market studies are not required to prove confusion of customers and Complainant’s claims against Respondent are not untimely.

 

B.     Respondent

“Deer Valley Condos” is a generic geographical term routinely used to refer to real property located within this well known geographical region.  Complainant’s own publication, Deer Valley, The Quest for Excellence by Kristen Gould, contains an admission that the term Deer Valley was taken from the surrounding local geographical region.  It is not a coined word at all but refers to a specific geographical region in the Park City, Utah environs.  Respondent attaches a 1955 Park City Quadrangle map of the United States Department of Interior Geological Survey establishing that long before the Deer Valley Resort was constructed, the term “Deer Valley” was the name used to refer to a large geographical region above Park City, Utah.  Complainant owns a small strip of land within this large valley having elected to sell off all of its surrounding properties to private parties.  It does not own any resorts, hotels, condominiums or other real property within the Deer Valley region surrounding its ski slope.  The domain name at issue does not violate Complainant’s trademarks and there is no evidence of actual or potential customer confusion.

 

FINDINGS

1 – The disputed domain name is not identical or confusingly similar to Complainant’s marks.

2 – Respondent has rights and legitimate interests in the disputed domain name.

3 – The disputed domain name was not registered or being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

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).  However, this Panel finds that Deer Valley is also a geographical area near Park City, Utah and was identified and referred to as such by the local populace for a number of years prior to Complainant’s registration of the mark.  Complainant’s own publication admits this fact.  And, it appears from the evidence that this term has been and is still used to identify a geographical area near Park City, Utah.  Indeed, there are 174 business entities that use the term Deer Valley in their business names; there are numerous other domain names that use that term; subdivisions are using the term in their names; the Park City, Utah telephone directory map identifies the area as Deer Valley; the Park City Board of Realtors Multiple Listing service uses the terms lower Deer Valley and upper Deer Valley; realtor listing reports use the term Deer Valley to locate properties; and, the Park City Chamber of Commerce and Visitors Bureau uses the term Deer Valley to locate properties on its website.

 

It is therefore the finding of this Panel that the term Deer Valley is a geographically descriptive term in addition to being a registered mark of Complainant.  As such, the mark is not distinctive and is geographically descriptive of the particular area of Park City, Utah.  It was used as such prior to Complainant’s registration and is still being used today as a geographic location near Park City, Utah.  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).

           

Also, there is no evidence presented that Internet users are confused by the disputed domain name.  Respondent’s addition of the term “condos” to Complainant’s mark is enough to differentiate the <deervalleycondos.us> domain name from Complainant’s DEER VALLEY 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 UDRP ¶ 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>).

 

Rights or Legitimate Interests

Respondent is using the term “Deer Valley” as a commonly used geographic indicator that refers to a specific region of Park City, Utah.  Respondent is using the <deervalleycondos.us> domain name in a purely descriptive manner to market its various properties (i.e., condominiums) over the Internet.  Therefore, 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, Respondent is using the <deervalleycondos.us> domain name to operate a business website for its property rental and sales service and has been using the term “Deer Valley” in association with its business for over twenty-five years.

Such use qualifies as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), and 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); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).

 

Registration and Use in Bad Faith

Since the Panel finds that Respondent’s <deervalleycondos.us> domain name is geographically descriptive, 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 <deervalleycondos.us> domain name pursuant to Policy ¶ 4(a)(ii), therefore, Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See 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); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

 

 

 

DECISION

It is the decision of this Panel that Complainant’s request to transfer the disputed domain name be DENIED and this case is dismissed.

 

 

 

 

 

 

Daniel B. Banks, Jr., Panelist
Dated: June 21, 2005