Eminent Domains Inc. v. Target Directories Corporation
Claim Number: FA0312000221175
Complainant is Eminent Domains Inc. (“Complainant”) represented by Sandra A. Jeskie, of Duane Morris LLP, One Liberty Place, Philadelphia, PA 19103. Respondent is Target Directories Corporation (“Respondent”) represented by Adam Aptowitzer, Suite 312 - 515 Chaplin Cres., Toronto, ON, Canada M5N 2N1.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mysummercamps.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.
On December 23, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <mysummercamps.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 December 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2004 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on January 20, 2004.
A timely Additional Submission was received from Complainant and was determined to be complete on January 23, 2004.
Respondent also filed a timely Additional Submission, which was determined to be in compliance with the Rules on January 28, 2004.
On January 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq. as Panelist.
After the appointment of the Panel, Complainant filed a document named “Second Additional Statement of Eminent Domains, Inc. in Response to Target Directories Corporation’s Additional Statement.” This submission was sent by the Forum to the Panel on February 3, 2004, pointing out that it was not in compliance with Supplemental Rule No. 7, and was considered to be deficient.
On February 5, 2004, the Panel received a submission from Respondent, objecting to Complainant’s deficient filing of its “Second Additional Statement.” Another submission was received on February 10, 2004, insisting in the deficiency of Complainant’s “Second Additional Statement” and requesting a chance to respond to the same.
As a consequence, on February 11, 2004, the parties received the Panel’s “Order for Additional Submissions and Extending Time for Rendering a Decision,” admitting Complainant’s “Second Additional Statement,” granting Respondent a term due on February 16, 2004 to give response to such statement, and extending the term to issue a decision until February 23, 2004.
A timely submission from Respondent was received on February 16, 2004, in compliance with the Panel’s order.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it has established rights in its SUMMERCAMPS.COM mark through continuous and widespread use of the mark in commerce from November 8, 1995. The website related to the <summercamps.com> domain name soon became the premier website for finding summer camps online. By 2002, the <summercamps.com> website received roughly 2 million hits and it offered information on over 17,000 camps. Complainant’s mark attained national recognition when Complainant was interviewed live on Ziff Davis TV in San Francisco on March 23, 1999 and a summary of the <summercamps.com> website was posted on Ziff Davis’ website for having the best model for finding summer camps on the Internet. According to Complainant, its long and extensive use of SUMMERCAMPS.COM has resulted in established goodwill in the mark, which has been widely recognized by others as a source indicator for Complainant’s services. The mark is distinctive and has also acquired secondary meaning. Complainant’s mark SUMMERCAMPS.COM has sufficient association with Complainant such that common law trademark rights exist.
Respondent’s <mysummercamps.com> domain name, registered in July 2003, is confusingly similar to Complainant’s SUMMERCAMPS.COM mark. The only difference is the addition of the word “my” before “summercamps,” which fails to differentiate the disputed domain name from Complainant’s mark and does not create a new distinct mark capable of overcoming a claim of confusing similarity. Respondent’s domain name has caused actual confusion for Complainant’s customers.
Complainant alleges that Respondent has no rights to Complainant’s mark, SUMMERCAMPS.COM. Until November 2003, Mr. Christian Veillette and Mr. Evan Heltay, were listed as contacts for the <mysummercamps.com> website and were employees of Complainant. Mr. Heltay had access to SUMMERCAMPS.COM’S confidential/proprietary business information, including SUMMERCAMPS.COM’s extensive customer list containing over 17,000 summer camps, its website design and associated technology, its marketing and promotional strategies and materials and its financial accounts. Mr. Veillette also had access to SUMMERCAMPS.COM’s proprietary information concerning its website traffic statistics, website design and related technologies. Mr. Heltay and Mr. Veillette were never authorized to use Complainant’s mark for any purpose other than for SUMMERCAMPS.COM. Nevertheless, the registration of the <mysummercamps.com> domain name occurred during Mr. Heltay and Mr. Veillette’s ongoing business relationship with Complainant.
Complainant states that Respondent’s use of the domain name was done intentionally to divert Complainant’s customers to Respondent’s own site for commercial gain and there is therefore no legitimate noncommercial, or fair use of the disputed domain.
The <mysummercamps.com> website falsely states that “in 2000-2001 over 1.3 million unique visitors accessed [the site].” Complainant asserts that Respondent is obviously referring to SUMMERCAMPS.COM’s traffic statistics because <mysummercamps.com> had not even been registered until July 2003. Respondent copied information from the SUMMERCAMPS.COM’s website. Respondent, through Mr. Heltay, also falsely informed SUMMERCAMPS.COM’s customers and the critically important DMOZ directory, which establishes the website listing position on the major search engines, that SUMMERCAMPS.COM had changed its name to <mysummercamps.com>. These actions are neither a bona fide offering of services, nor a legitimate non-commercial or fair use. Respondent has attempted to trade on Complainant’s name, reputation and goodwill, in bad faith.
According to Complainant, the <mysummercamps.com> domain name was registered for the primary purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. As former business associates of Complainant, Mr. Heltay and Mr. Veillette, had access to Complainant’s privileged information regarding Complainant’s website. Complainant states that Mr. Heltay tried to disguise his registration of <mysummercamps.com> by using Target Directories Corporation. Complainant further contends that Respondent’s false suggestion of a non-existent affiliation with Complainant is evidence of bad faith.
As a consequence, Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.
According to Respondent, the Complaint is based on two fundamental misstatements: (i) that the business associated with SUMMERCAMPS.COM belongs to Complainant; and (ii) that Complainant has rights to the domain name in question.
Respondent asserts that Complainant is a domain name reseller, and has registered at least 39 domain names dealing with a variety of topics. Complainant’s modus operandi is apparently to set up a web page with nominal information concerning the subject matter of the URL and request that anyone interested in developing the site contact them.
On September 1st, 1999, Netpostmaster Inc. (“NPM”), entered into an agreement with Complainant to develop a business of an online directory of summer camps and camp jobs for use by parents, summer camps and prospective employees. The agreement stipulated that Complainant was to incorporate a new company called Summercamps.com Inc. whose sole asset would be ownership of the URL <summercamps.com>, but any assets of the business (except the name) were to be developed and held by NPM. Despite its obligations, Complainant never transferred registration of <summercamps.com> into a separate corporation and it remained the property of Complainant solely. Ownership of the business, business tools and assets (excluding the URL) remained with NPM.
Respondent explains that from October 2000 until September 2001, Mr. Heltay was the employee at NPM in charge of implementing NPM’s obligations under the agreement. In September 2001, Mr. Heltay’s status changed from employee to independent contractor but he remained responsible for NPM’s obligations under the contract. In or about September 2002, NPM approached Mr. Heltay with an offer to give him the business, business tools and assets involved in the directory business. Mr. Heltay accepted and ran the business as a sole proprietor. Mr. Heltay spoke with Complainant and they agreed to deal with questions regarding ownership of the name and possible payment at a later date. In the summer of 2003, Mr. Heltay proposed to compensate Complainant for the eight months he spent operating his business under <summercamps.com> and to purchase the URL from Complainant. The negotiations failed so Mr. Heltay registered <mysummercamps.com> under his new business name of Target Directories Corporation and continued his business under this name. Complainant has in turn misappropriated the logo and slogan without permission from Mr. Heltay.
Respondent contends that Complainant has not met its burden to prove by a preponderance of credible, relevant and admissible evidence that the domain name is identical or confusingly similar to a mark in which it has rights. The hits <summercamps.com> received by 2002 were not a result of Complainant’s use of the mark but rather Mr. Heltay’s ongoing development of his business.
According to Respondent, the term “summer camps” is a commonly used generic term used to describe children’s camps run in the summer months when most children are on vacation from school. There is no commonly accepted substitute term for this noun. Furthermore, a simple search of the Google Internet search engine reveals thousands of common uses of the phrase “summer camps” in connection with camps run by many different organizations, none of which are in any way related to Complainant. Accordingly, it is a generic phrase. No one can have exclusive rights over a generic term. Under ICANN Policy, registration of a domain name incorporating merely a common word or term to use for a business, as here, establishes Respondent’s legitimate interest. Respondent cites several panels to support this.
If the Panel finds that the term “summer camps” is not sufficiently generic, Respondent submits that Complainant must demonstrate that the term has acquired secondary meaning. In order to establish secondary meaning Complainant must establish that the public associates the asserted mark with goods and services provided particularly by Complainant. There is no evidence here of secondary meaning as the term is understood in the case law. Complainant has not registered this URL as a trademark under either American or Canadian law. There is no evidence submitted by Complainant that when Internet users use the term “summer camps” they are expecting goods or services provided by Complainant (neither should there be as the principal business of Complainant is a domain name reseller). Complainant has not met the burden of proving secondary meaning.
Mr. Heltay has been carrying on the business of an online directory for summer camps first as a sole proprietor and then under the name of Target Directories Corporation since 2002, and has earned his livelihood from the operation of this business. Where Respondent uses the domain name in connection with a legitimate business he has a legitimate interest in the domain name. Mr. Heltay’s legitimate rights to the name <mysummercamps.com> precede the Complaint by approximately 1.5 years.
Finally, Respondent contends that it has acted in good faith in the registration and use of the domain name <mysummercamps.com>. Complainant has failed to prove all three (3) elements it is required to do under the Policy.
C. First Additional Submissions
In its first additional submission, Complainant contends that it is false that Complainant is nothing more than a “domain name reseller.” Prior to Complainant’s partnership with Netpostmaster (“NPM”) or Mr. Heltay’s involvement with Summercamps.com, Inc., <summercamps.com> had been identified as having the best model for finding summer camps on the Internet.
Complainant believes that nothing contained in the Response in any way diminishes Complainant’s argument that the SUMMERCAMPS.COM mark has acquired secondary meaning. Complainant cites several previous panels’ decisions in this regard.
Complainant states that by Mr. Heltay’s own admission, he made an offer to Complainant to purchase the <summercamps.com> URL. Hence, Mr. Heltay recognized the significant value of the SUMMERCAMPS.COM mark owned by Complainant and further recognized that he had no interest in the mark.
Complainant denies that it contacted NPM to “develop a business of an online directory of summer camps and camp jobs.” Complainant states that its site had long since achieved national written and televised acclaim. NPM contacted Complainant, after having seen the publicity surrounding the <summercamps.com> site. NPM and Complainant entered into an Agreement, so that NPM could provide Complainant with virtual tour technology for the <summercamps.com> site. In exchange, NPM was given the opportunity to acquire equity in Summercamps.com only by selling virtual tour advertising packages on the <summercamps.com> site. By the express language of the agreement, if there was a default by NPM, it would have no rights in Summercamps.com other than the equity (if any) it had already obtained as the result of its sale of the virtual tour packages. As of November, 2002, NPM had failed to provide any documentation of the requisite number virtual tour packages at the preset determined price, which formed the basis for any potential equity. Hence, on November 27, 2002, Complainant, through its counsel, sent NPM a default letter. NPM failed to cure the default and the agreement was therefore void ab initio. As of November 27, 2002, NPM had acquired no equity interest in Summercamps.com and thus, had no equity or rights whatsoever to confer upon Mr. Heltay.
Respondent’s further assertions that Mr. Heltay ran Summercamps.com as a sole proprietor also fail to comport with reality. Mr. Heltay was nothing more than the Director of Sales of Marketing for Summercamps.com. Complainant, not Mr. Heltay, fully funded the business of Summercamps.com, providing Mr. Heltay with monies to support the activities of Complainant’s business and allowing Mr. Heltay access to the income of Complainant’s business during his relationship with Complainant. Respondent and Mr. Heltay’s misappropriation of Complainant’s business assets are very serious and egregious offenses that will be properly addressed before a court of proper jurisdiction.
According to Complainant, Respondent does not dispute the facts and supporting documents showing that <mysummercamps.com> domain name was registered for the primary purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. Respondent’s registration of a copycat website, <mysummercamps.com>, is nothing more than an obvious attempt to trade on Complainant’s well-established goodwill, name and reputation. Mr. Heltay’s statistics on web traffic for <mysummercamps.com> further evidences Respondent’s success at diverting traffic from <summercamps.com>. These actions clearly show that Respondent exhibited bad faith.
The parties submissions fully support Complainant’s claims that all three (3) elements of the Policy are met. As such, Complainant respectfully requests that <mysummercamps.com> be transferred to Complainant.
Respondent insists that Complainant has the burden to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question. Tevidence submitted by Complainantpurporting to show that its mark has acquired secondary meaning is wholly insufficient for this purpose. ComplainantComplainant, even many programs for many hours, necessarily
Complainant implicitly asserts that if <summercamps.com> it has de facto attained secondary meaning. Respondent contends that this burden can only be satisfied where there is proof that the average member of the public associates SUMMERCAMPS.COM with an online summer camp directory. There is no such evidence here and in fact, there is evidence to the contrary.
respect to tcases cited by Complainantconcerning findings of secondary meaning in
ordinary English words, Respondent states that in all cases the mark was
registered. Unlike the marks cited by Complainant, SUMMERCAMPS.COM
is not a registered trademark, and it retains its status as a string of generic
Respondent categorically denies that the domain name in question was registered and is being used in bad faith. Respondent contends that the business run under SUMMERCAMPS.COM was legally owned by NPM and is now owned by Respondent. Further, Respondent submits that the testimonials, slogan/design, traffic statistics and traffic are property (to the extent they are property) of the business owned and run by Mr. Heltay. Respondent submits that the fact that both sites use them is not evidence of bad faith but rather a legal difference of opinion.
In response to Complainant’s submission that it funded the business of Summercamps.com, Respondent again points out that Complainant must but has not submitted any evidence of this claim. However, Respondent submits evidence that it in fact absorbed all costs of the business and also reimbursed Complainant for expenses it incurred.
Respondent denies Complainant’s allegation that it misled the DMOZ directory into believing that the <summercamps.com> website changed its name and puts Complainant to strict evidentiary proof that such is the case. Finally, Respondent submits that Mr. Heltay’s statistics on web traffic should not be taken as evidence of Respondent’s success at diverting traffic from <summercamps.com> but rather evidence that Mr. Heltay is using the experience he has to run a successful business based on his own ingenuity, good faith and hard work.
Respondent presents a jurisdictional issue. Due to the fact that Complainant explicitly states that some of the matters discussed by the Response will result in court action, Respondent admits that it is also considering legal action to recover misappropriated intellectual property. Whereas it was unclear from the Complaint whether the Panel had jurisdiction to hear this dispute it is now clear that this dispute involves legal issues surrounding ownership rights of the business and, it is therefore submitted, the dispute is beyond the jurisdiction of this Panel.
Respondent submits that even if Mr. Heltay were legally incorrect, his belief that he was legally entitled to the business is evidence that Mr. Heltay registered <mysummercamps.com> and uses it in good faith. That is, a mistake of law cannot be taken as evidence of bad faith. Respondent requests that the Complaint should be denied.
D. Second Additional Submissions
Complainant’s Second Additional Submission is filed because Complainant feels that it is necessary to correct numerous misstatements of fact and law submitted by Respondent.
Complainant states that there is no jurisdictional issue which prevents this Panel from transferring <mysummercamps.com> to Complainant. Although there are issues relating to Respondent’s and Mr. Heltay’s misappropriation of Complainant’s intellectual property and business assets, they have not yet been submitted to the court and there is nothing that prevents this Panel from deciding this case.
With regard to its rights to the SUMMERCAMPS.COM mark, Complainant contends that the Policy does not distinguish between registered and unregistered marks. There is sufficient evidence to demonstrate that Complainant has common law rights in the mark. Complainant has invested considerable time and effort in establishing an association between SUMMERCAMPS.COM and its services for over seven (7) years. During that time, Complainant’s site was extensively visited on the Internet and received 1,236,654 hits from November 1998 to July 1999. By 2001, <summercamps.com> had 1.3 million visits to its site. These numbers were used by Mr. Heltay in a promotional piece prepared by him while in his position as Director of Sales and Marketing for SUMMERCAMPS.COM. These figures demonstrate how the <summercamps.com> site has been relied upon by the general public for its summer camp information. In addition, the extensive promotion performed by Complainant via print advertising, press, television, tradeshows and search engine promotion have resulted in the public uniquely identifying SUMMERCAMPS.COM with Complainant. The mark has therefore established sufficient secondary meaning so that common law rights exist.
According to Complainant, Respondent has not shown evidence to prove that it “owns” the business. NPM owned no equity in SUMMERCAMPS.COM and neither does Mr. Heltay. Respondent’s claims that it and Mr. Heltay paid all expenses associated with SUMMERCAMPS.COM are belied by an overwhelming amount of evidence, which is submitted by Complainant with this Second Additional Statement.
Complainant contests Respondent’s evidence of the lack of confusion among the public. Complainant asserts that the evidence filed by Respondent consist of self serving e-mails to costumers and is not sufficient to this end. On the contrary, Complainant’s evidence of confusion is composed of unsolicited statements of costumers who are confused by <mysummercamps.com> and Respondent’s improper statements about its relationship with Complainant. Even Mr. Heltay expresses his confusion in response to an e-mail inquiry about SUMMERCAMPS.COM and <mysummercamps.com>.
Based on the above, Complainant respectfully requests that this Panel immediately transfer <mysummercamps.com> to Complainant.
This Second Additional Submission from Complainant was considered by the Forum as deficient in accordance with Supplemental Rule No. 7. Notwithstanding, the Panel decided to consider this material as part of the file and take it into account in this decision.
Respondent agrees that unregistered trademarks may be entitled to protection under the Policy. However, in this case the mark in which Complainant claims interests is an unregistered generic term and in order to be entitled to protection Complainant must demonstrate that the mark SUMMERCAMPS.COM has acquired secondary meaning. Respondent submits that the test in this regard is whether the public associates the asserted mark with the goods and services of Complainant and it is Complainant who has the burden of proof in this regard.
Complainant cites the number 1.3 million hits on the <summercamps.com> website as evidence that the public associates SUMMERCAMPS.COM with Complainant. The term ‘hit’ refers to a communication between the browser on an Internet user’s computer and the computer server upon which a website is hosted. When a browser requests a webpage from a server, the html code and each graphic comprise a separate hit so that a site with 20 graphics would mean 21 hits, and each time a user returns to that main page or the page is refreshed by the user, the error would be magnified. Hence, the ‘hits’ statistic is meaningless and certainly does not refer to the number of individual visitors to a site. Therefore, the conclusion that the number of visitors to <summercamps.com> represents a very significant percentage of people looking for summer camps is unfounded and misleading. The evidence submitted by Respondent in previous submissions supports the contention that SUMMERCAMPS.COM was not a significant market player. Once the erroneous contention that 1.3 million hits over eight months translates into 1.3 million visitors is corrected, a substantial pillar of Complainant’s argument that it has acquired common law rights in the mark SUMMERCAMPS.COM falls.
Respondent contends that Complainant has not submitted the necessary evidence to meet the test that it has established common law rights in the mark SUMMERCAMPS.COM. The test which must be met is whether the public associates the mark with Complainant, this requires evidence not of Complainant’s actions, but rather the public’s. All the evidence submitted by Complainant relates to the actions of Complainant. Were the test whether Complainant attempted to create an association in the public’s mind between the mark SUMMERCAMPS.COM and Complainant, such evidence might be relevant. However, the test is whether the public has such an association not the extent to which Complainant attempted to create the association. Respondent submits that appropriate evidence to meet the test could include, inter alia, evidence of market share, focus group testing, or evidence of popular usage of the term “summer camps” in connection with the services of Complainant. No evidence of this type has been submitted, for an obvious reason, the public does not associate the term “summer camps” with Complainant.
Insofar as Complainant suggests there is confusion over the issue of ownership of Respondent’s business, such confusion over non domain name issues suggests that jurisdiction over the entire dispute rightfully belongs in a court. The business of the online directory was never owned by Complainant. Complainant only owns and owned rights in the URL <summercamps.com>. Respondent further submits that the corporation Summercamps.com Inc. owns nothing of relevance to this dispute. The agreement between Complainant and NPM describes a joint venture relationship whereby NPM would continue to own the business and over the course of the agreement would earn equity in the domain name for payment. Apparently, NPM never received this equity but that does not change the nature of its ownership interest in the business. Absent clear contractual evidence to the contrary, the presumption must be that the entity which pays the business expenses, has the business knowledge, makes the business decisions and operates the business on a day to day basis owns the business. NPM satisfied these criteria, and was within its rights to give that business to Mr. Evan Heltay.
According to Respondent, Complainant’s point regarding the payment of expenses of Respondent’s business is unclear. As the registered owner of the domain name under which Respondent operated its business, Respondent and Complainant were involved in a very tight symbiotic business relationship. Respondent concedes that it was probable and likely inevitable that Complainant would pay certain expenses of Respondent. However, Respondent offered to reimburse Complainant for this amount. There is no evidence as to the nature of amounts, if any, spent by Complainant on Respondent’s business and whether such amounts applied to expenses of Respondent’s business or Complainant’s. However, it is clear that Respondent was responsible for and paid the vast majority of expenses associated with his business.
Complainant’s comments that Respondent’s arguments are somehow diminished because it included two emails to prove that there is no confusion between <mysummercamps.com> and SUMMERCAMPS.COM are particularly disingenuous. It was Complainant that only provided two examples of such confusion in its Complaint, and Respondent only contacted those same two people for clarification. Furthermore, Respondent again submits that it is Complainant’s burden to prove the potential for confusion not Respondent’s to disprove. Respondent again submits that Complainant has failed to meet its burden in this regard.
Based on this and the previous submissions, Respondent requests that the remedy sought by Complainant be denied. Furthermore, Respondent requests that any further submissions by Complainant be ignored as they are well beyond the normal period for accepting submissions and any further elongation of this arbitration process constitutes undue hardship on Respondent.
This Second Additional Submission from Respondent was considered by the Forum as deficient in accordance with Supplemental Rule No. 7. Notwithstanding, the Panel decided to consider this material as part of the file and take it into account in this decision.
FINDINGS AND 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.”
Likewise, paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution Policy, provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
In the present case, the Panel wants to place emphasis in the importance of the evidence filed by the parties to prove their assertions, which has been studied to determine its relevance and weight in arriving to a decision. The Panel wishes to clarify that the statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration of their existence. Likewise, the Panel has taken into account that each party has been emphatic in contesting most of the evidence filed by the other party.
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.
Complainant contends that it has established common law rights in the SUMMERCAMPS.COM mark through continuous and widespread use of the mark in commerce since 1995. Complainant also states that its mark has acquired secondary meaning, so that the public clearly identifies SUMMERCAMPS.COM with the goods and services provided by Complainant. On the contrary, Respondent asserts that SUMMERCAMPS.COM is a generic term that cannot be entitled to trademark protection, and that Complainant has not filed evidence to demonstrate that the expression has acquired secondary meaning.
It is the Panel’s task to determine whether or not Complainant holds any trademark rights over the term SUMMERCAMPS.COM. The worldwide accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. This distinctive force gives a sign the capability to identify the products or services of its owner and differentiate them from the products or services of other participants in the market. A sign lacks of enough distinctive force when it is generic, confusingly similar to a previous trademark, or descriptive, among other causes.
In the case of generic and descriptive terms, such condition must be analyzed in connection with the kind of products or services that are identified with the sign. Taking into account that SUMMERCAMPS.COM is meant to identify a service of providing information on the Internet on the summer camps industry, such sign can be considered as descriptive of the services identified by it. SUMMERCAMPS.COM could be generic if it was used to identify summer camps directly. However, the service rendered through SUMMERCAMPS.COM does not correspond to a summer camp, but rather a service of on-line information on summer camps, which makes the sign a descriptive one.
A descriptive term can achieve distinctive force when due to its use and recognition by the consumer public, the word gets a secondary meaning that allows it to identify products or services without any risk of confusion in the market. In this case the descriptive term can become a trademark.
When a sign is registered as a trademark before a Trademark Office, it is surrounded by a presumption of existence of sufficient distinctive force. The mere act of registration is a recognition of the distinctiveness of the sign, so that the owner is granted with an exclusive right over the trademark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
Notwithstanding, when the sign is not registered, such presumption of distinctiveness is not present, and the trademark owner has the burden to demonstrate that it has achieved common law rights over the mark. Common law rights arise out of the use of a mark in commerce in connection with goods or services, and might only exist in jurisdictions that acknowledge the existence of such rights, as in the case of the jurisdiction of the United States of America, country of Complainant.
It is not difficult to demonstrate the distinctive force of a fanciful or arbitrary word that is used in commerce. However, when the term is not fanciful, but descriptive, the test of common law rights tends to be more drastic, as it involves the proof of secondary meaning.
In the present case, the Panel has to determine whether or not the term SUMMERCAMPS.COM is a common law trademark, and to that end, the Panel will have to consider whether or not SUMMERCAMPS.COM has achieved secondary meaning.
Concerning common law trademarks, it is important to clarify that the Policy does not distinguish between registered and unregistered trademarks. This issue has been addressed deeply by previous Administrative Panels, such as in the case of Museum of Science v. Asia Ventures, Inc.:
“As to the first question, the wording of the Paragraph 4(a) (i) to "trademark or service mark" has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc. National Arbitration Forum No. : FA0009000095560. With respect to the latter, the Complaint must show that the mark has been in continuous use (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning ("distinctive character") in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726).”
Unregistered trademarks are entitled to protection in several jurisdictions around the world. In the present dispute, Complainant’s claim of common law rights over the sign SUMMERCAMPS.COM is supported by the acceptance of such rights by the jurisdiction of the United States of America.
The test to determine whether or not a sign can be protected as a common law mark is highly exigent. Although the elements to demonstrate common law rights may vary, the following has been accepted as evidence of common law trademarks by previous Administrative Panels:
“1) Advertising, marketing, or promotional use of the alleged common law mark
2) Third Party references to the alleged common law mark
3) Widespread evidence of recognition among Internet users
4) Sales of services under and by reference to the alleged common law mark
5) Appropriate showing of prior continuous use in a given product and territorial market over a sufficiently long period of time.”
Complainant has provided documents aiming to prove common law rights over SUMMERCAMPS.COM “through continuous and widespread use of the mark in commerce from November 8, 1995.” Most of the evidence filed by Complainant was contested by Respondent. Due to the fact that Respondent contends that Complainant’s sign cannot be protected as a trademark, the evidence filed by Complainant will only suffice if it also leads to a demonstration of secondary meaning.
The test of secondary meaning requires other elements not necessary for the test of common law rights. Some of the factors that have been used by other Administrative Panels to determine whether a mark has acquired a secondary meaning, are: “(1) advertising expenditures, (2) consumer surveys linking the mark to a source, (3) unsolicited media coverage of the service, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.” All of these factors must lead the Panel to conclude that: “in the minds of the public, the primary significance of [the mark <summercamps.com>] is to identify [Complainant] as the source [of its website service] rather than the [service] itself.”
Complainant in the present domain name dispute has filed evidence trying to demonstrate its advertising expenditures, recognition among the public and unsolicited media coverage of the service, among other facts. The Panel notices that Complainant has not provided any piece of evidence that demonstrates that the consumer links SUMMERCAMPS.COM with Complainant, such as consumer surveys. Likewise, Complainant’s evidence of unsolicited media coverage of its services, is very scarce. Despite the fact that Complainant placed emphasis in demonstrating that is has worked hard to promote its website, this does not suffice to show that such efforts succeeded and that the public links SUMMERCAMPS.COM with Complainant and its services.
Complainant failed to demonstrate that the public associates SUMMERCAMPS.COM directly with the services rendered by Complainant. The number of hits received by Complainant’s website are not a proper indicator of Complainant’s mark recognition among the public. Regardless of the fact that Respondent contested the validity of these hits, the Panel believes that there are many factors that may affect the number of visitors to a website. It is clear for the Panel that SUMMERCAMPS.COM is a descriptive term for the service of on-line information on summer camps. The registration of such domain name by Complainant was probably possible because it was made back in 1995, when the Internet boom was just beginning. The registration of attractive domain names, which comprise generic or descriptive words, encompass a great business opportunity for their owners. Notwithstanding, they must be aware of the fact that they do not acquire exclusive rights over such generic or descriptive words, and that third parties can register domain names including such words, accompanied by other words to differentiate each domain.
Internet pioneers registered attractive domain names, which made them easily found by Internet users. When a user wants to look for information on car sales on the Internet, he would probably try one of two options: (i) use a search engine, or (ii) enter the words carsales and .com in the navigator, looking for a direct source of information under <carsales.com>. The same happens with Complainant’s site. A person looking for online information on summer camps, would probably try <summercamps.com> as a first option. This does not mean that the user is particularly looking for Complainant’s site, but rather for information about summer camps either provided by Complainant or by any other party. The number of hits received by Complainant’s website, even if they translated into a number of real visitors, is not an evidence of the public association between SUMMERCAMPS.COM and Complainant.
This association between SUMMERCAMPS.COM and Complainant is particularly difficult in the present dispute, taking into account that Complainant, Eminent Domains, Inc., does not seem to be a corporation devoted to the promotion of the summer camps industry. On the contrary, the corporate name of Complainant leads to believe that its business is focused in the registration of domain names for commercial gain, which is a plausible commercial activity, but is not precisely the commercial activity carried out under the name SUMMERCAMPS.COM. Due to the fact that this argument was raised by Respondent within this proceeding, the Panel visited Complainant’s official website to obtain further information of Complainant’s business. When visiting <eminentdomains.com>, the Panel found that Complainant announces itself as: “A domain name and web site development corporation.” The web page shows a number of websites owned and developed by Complainant, such as: <antibiotics.com>, <fightacne.com>, <frequentfliers.com>, <heartdisease.com>, <mortgagecompanies.com>, <insurancecompanies.com>, <skincareproducts.com> and of course, <summercamps.com>. The names of these sites show that Complainant’s business is apparently the development of websites on a variety of subjects, so different among them, and not the business run through each domain. Based on that, the Panel concludes that due to the nature of Complainant, it is very difficult to arrive to a finding of secondary meaning in this case, since the public cannot easily link SUMMERCAMPS.COM with Complainant and its services. Additionally, the Panel notices that the name of Complainant is not announced in Complainant’s webpage <summercamps.com>, and hence, the public is not clearly informed of the identity of the source of the services.
Another factor used to determine the existence of secondary meaning, mentioned above, is the exclusivity of the mark’s use. This is again a critical factor in the present dispute. Instead of being a term exclusively used by Complainant, the word SUMMERCAMPS.COM is composed of words that are commonly used in everyday language, and particularly, in Complainant’s market. The term “SUMMERCAMPS” and its parts “SUMMER” and “CAMPS,” are English words used to designate camps that are visited by young people during summer vacations. Summer camps are very popular in North America, where Complainant undertakes its business. As a consequence, the words “SUMMER CAMPS” are used by a vast number of participants in the market of summer camps, including summer camps themselves, summer camps providers, summer camps visitors, etc. This is evidenced by entering the words “summer camp” into a search engine like GOOGLE™, as mentioned by Respondent. The Panel visited this search engine on February 19, 2004, and found approximately 1,500,000 results. The first ten (10) results included <summercamp.org>, <camppage.com>, <campsearch.com>, <campstaff.com>, <acacamps.org>, <gocamps.org>, and <mysummers.com>. All of these sites provide information and referrals to summer camps, the same service offered by Complainant. All of them use the words “summer camps” to promote their services. Hence, the expression “SUMMERCAMPS” is not exclusively used by Complainant, and therefore, it is difficult for the public to associate such words precisely with Complainant and not with any other of its competitors.
Moreover, the addition of the suffix “.COM” does nothing to give distinctiveness to SUMMERCAMPS.COM. Due to the fact that Complainant’s services are rendered through the Internet, and that Complainant is a commercial corporation, the suffix “.COM” makes the term SUMMERCAMPS.COM more descriptive.
In order to further investigate the issue of exclusive use, the Panel undertook a search before the United States Patent and Trademark Office (“USPTO”). After entering the words “SUMMER CAMP,” the USPTO Trademark Electronic Search System showed forty (40) records, including live and dead ones. The Panel reviewed all the records and could evidence that there are more than twenty (20) marks registered before the USPTO, including the words “SUMMER CAMP.” However, all of the marks registered to identify services related to summer camps, specify that no claim is made to the exclusive right to use “summer camps” apart from the mark as shown. Some of these service marks are:
- ESF SUMMER CAMPS. International Class 41. Reg. No. 2208138. Disclaimer: No claim is made to the exclusive right to use “Summer Camps” apart from the mark as shown.
- THE ULTIMATE SUMMER YOUTH CAMP. International Class 41. Reg. No. 2131503. Disclaimer: No claim is made to the exclusive right to use “Summer Youth Camp” apart from the mark as shown.
- CAMP DOGWOOD SUMMER ACADEMY BETTER CHOICES BETTER CHANCES + GRAPHIC. International Class 41. Reg. No. 2092869. Disclaimer: No claim is made to the exclusive right to use “Camp” and “Summer Academy” apart from the mark as shown.
- CAMP CHANNEL – BRINGING SUMMER CAMPS TO THE INTERNET. International Class 42. Reg. No. 2166777. Disclaimer: No claim is made to the exclusive right to use “Summer Camps” and “Internet” apart from the mark as shown. This example is very interesting, taking into account that the services identified by this mark are identical or highly similar to the ones rendered by Complainant, i.e., “providing a database of information on a global computer network regarding summer camps for children.”
This demonstrates that the words “SUMMER CAMP” and “SUMMER CAMPS” are not entitled to trademark protection in the United States of America when used in connection with the summer camps industry.
Likewise, the Panel found out that the only registered marks that include solely the words “SUMMERCAMP” or “SUMMER CAMP,” without disclaimers, designate goods or services that do not include summer camps, and are therefore, neither descriptive nor generic. This is the case of the mark SUMMERCAMP, registered under Reg. No. 2153697 to designate: “entertainment services, namely, live performances by a musical band,” included in International Class 41.
As a fact that called the attention of the Panel, the USPTO search showed that Complainant filed an application for the registration of SUMMERCAMPS.COM, to distinguish services of International Class 35. This service mark application was filed on May 12, 1999 under the Serial Number 75704111. The mark was filed to identify “internet, electronic and on-line web site development and maintenance and promotion of the summer camp industry. Advertisement and directory services of summer camps also.” The application appears as abandoned on March 29, 2000, after the applicant failed to respond to an Office Action. Even though the particulars of this Office Action are not disclosed, the Panel believes that there are high chances that it referred to a request on the distinctiveness of the sign and the way in which it might be registered, considering the services sought to be identified by it. This would mean that Complainant might be aware of the lack of trademark rights that it has over the expression SUMMERCAMPS.COM, and that it kept this circumstance undisclosed to the Panel on purpose. There are no other explanations to Complainant’s decision of not informing the Panel of this abandoned service mark application, moreover when the merits of this case depend on the existence of such trademark rights on the head of Complainant.
The panel in the case of Media West-GSI, Inc. v. EARTHCARS.COM, INC., concluded the following, that can be applied in its entirety to the present controversy:
“The threshold -- and in this case, dispositive -- issue under Paragraph 4(a) is whether Complainant has protectable "rights" in the mark to which it contends Respondent’s domain name is identical or confusingly similar. (...) it is fair to infer from the omission of any reference to registration that the mark “freepressclassified.com” is not, in fact, registered with the PTO or any analogous authority. Consequently, Complainant does not enjoy the benefit of any presumption of the exclusive right to use a mark afforded by registration and must prove that its mark is distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 120 S. Ct. 1339, 1342 (2000).
To be distinctive, a mark must, either inherently or through an acquired secondary meaning, be capable of identifying the source of a particular product or service. Only marks that are arbitrary or fanciful in the sense of bearing no logical relationship to the product or service for which they are used, or suggestive in the sense of requiring imagination to be associated with a product or service, are deemed inherently distinctive. Wal-Mart, 120 S. Ct. at 1343. Complainant’s mark, <freepressclassified.com>, is not arbitrary, fanciful, or suggestive; rather, it quite plainly describes the very service in connection with which it is used by Complainant: "a website service contain[ing] classified advertisements for a variety of products and services." Complaint, ¶ 14. The joining of “freepress” with "classifieds" could add an element of distinctiveness to Complainant’s mark if it were unique to Complainant. However, as Mr. Bonfigli’s e-mail correctly pointed out, and is sufficiently well known to be properly subject of judicial notice, the use of "free press" in the names of English language newspapers is so ubiquitous that it can not plausibly be argued that “freepressclassified.com” necessarily points to The Burlington Free Press rather than, to pick just one example, The Detroit Free Press, as the source of the particular Internet classified advertisement service.
The extensive detail in which Complainant sets out its effort to promote its website through advertising indicates its awareness that the only route to the recognition of its unregistered mark as protected is to have it classified as descriptive. A descriptive mark is one which portrays a characteristic of the particular article or service to which it refers. Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 374 n.8 (1st Cir. 1980). Such marks are entitled to protection only if they have acquired a "secondary meaning." Wal-Mart, 120 S. Ct. at 1344; Big Star Entertainment, Inc. v. Next Big Star, Inc., 2000 WL 420549*9 (S.D.N.Y.).
This test requires a demonstration that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services. Id.; see also, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S. Ct. 2182, n. 11 (1982); Bristol-Meyers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992). (...)
Complainant’s dedication of significant resources to the promotion of its website through advertising in its own Burlington Free Press newspaper, on the radio and through fliers, and its sales success as measured by the number of visits to its website, while relevant, are not, without more, sufficient to support a finding that it has succeeded in creating a secondary meaning for its mark. It is the effect of such activities, not merely their extent, that shows actual acquisition of a secondary meaning. Co-Rect Prods. Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1329 (8th Cir. 1985). Complainant has presented no evidence of consumer surveys, focus group studies, or even substantial anecdotal evidence, showing that consumers have come to associate <freepressclassified.com> with The Burlington Free Press. Likewise, Complainant has provided no evidence of any independent or unsolicited media coverage of its website service.
(...) Whatever the length of use by one party, use of part or all of the mark by third parties weakens the mark’s overall strength. Big Star Entertainment, Inc., 2000 WL 420 549*17; Streetwise Maps Inc. v. Vandam, Inc., 159 F.3d 739, 744 (2d Cir. 1998).
In sum, on the evidence available in this case, the Panelist cannot conclude that "in the minds of the public, the primary significance of [the mark <freepressclassified.com>] is to identify [Complainant] as the source [of its website service] rather than the [service] itself." Inwood Laboratories, supra. Since Complainant has failed to discharge its burden of proof as to the threshold element of its case under the ICANN Policy, par. 4(a), it is not necessary to reach the remaining elements: whether the domain name <freepressclassifieds.com> is identical or confusingly similar to <freepressclassified.com.>, whether Respondent has any rights or legitimate interest with respect to <freepressclassifieds.com>, and whether it has registered and used that domain name in bad faith.”
Complainant’s sign SUMMERCAMPS.COM is a descriptive and unregistered term, not entitled to protection in the absence of sufficient evidence of secondary meaning. The evidence required in this case is far more exigent than the one required to prove common law rights. Complainant failed to support its allegation of secondary meaning, due to the fact that the evidence presented by it does not permit to conclude that the public associates SUMMERCAMPS.COM with Complainant. On the contrary, such association appears specially difficult in the circumstances found by the Panel.
Based on all the foregoing, the Panel finds that Complainant does not have trademark rights over the expression SUMMERCAMPS.COM and then Complainant has failed to meet the requirements of Policy ¶ 4(a)(i).
The finding with regard to the absence of trademark rights in the part of Complainant, precludes the Panel from considering this issue of rights and legitimate interests. However, the Panel notes that the parties are involved in a dispute over the same ownership of the business developed under the domain name <summercamps.com>, and now carried out by Respondent through <mysummercamps.com>. The parties’ allegations include matters of intellectual property infringement and probably, of unfair competition. These conflicts fall out of the competence of this Administrative Panel and should be addressed, if that is the parties’ desire, before a Court of Law.
As set forth above, since the Panel has found that the domain name <mysummercamps.com> is not identical to a trademark over which Complainant has rights, it would not be necessary to study if Respondent has acted in bad faith, as stated in the Complaint. The disagreements between Complainant and Respondent, as seen in their submissions to this Panel, are beyond the borders of a domain name dispute, such as the one that was entrusted to this Panelist for decision. Hence, it belongs to a Court of Law to resolve such kind of disputes between the parties.
The Panel has found that Complainant failed to prove that it has rights in its mark for the purpose of satisfying Policy ¶ 4(a)(i). Therefore, Complainant’s request that the domain name <mysummercamps.com> be transferred from Respondent to Complainant is DENIED.
Fernando Triana, Esq., Panelist
Dated: February 23, 2004
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 See UDRP Opinion Guide of the Berkman Center for Internet and Society of Harvard Law School. Topic 1.4.3. – Existence of Common Law Trademark. The guide can be found at http://cyber.law.harvard.edu/udrp/opinion/.
 WIPO Case Nº D2003-0691. Sole Panelist Daniel J. Gervais. October 20, 2003.
 See UDRP Opinion Guide of the Berkman Center for Internet and Society of Harvard Law School. Topic 1.4.4. – Establishing a Common Law Trademark. The guide can be found at http://cyber.law.harvard.edu/udrp/opinion/.
 See WIPO Case N° D2000-0463. Media West-GSI, Inc., and Gannett Satellite Information Network, Inc., d/b/a The Burlington Free Press v. EARTHCARS.COM, INC. Sole Panelist Natasha C. Lisman, J.D., F.C.I. Arb. July 28, 2000.
 See WIPO Case N° D2000-0463. Op. Cit.
 See WIPO Case N° D2000-0463. Op. Cit.
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