National Arbitration Forum

 

DECISION

 

Monticello Country Realtors, Inc. v. Patsy Strong

Claim Number: FA0506000499246

 

PARTIES

Complainant is Monticello Country Realtors, Inc. (“Complainant”), represented by Donald D. Long, of Feil, Pettit & Williams, PLC, 530 East Main Street, PO Box 2057, Charlottesville, VA 22902.  Respondent is Patsy Strong (“Respondent”), represented by Caroline D. Bragg, of Cattano Law Firm, One Boar's Head Lane, Charlottesville, VA 22903.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <monticellocountryrealtors.com>, registered with Dotster.

 

PANEL

The undersigned certify 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.

 

Hon. Daniel B. Banks, Jr. (Ret.), David Sorkin, David P. Miranda, Chair, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 20, 2005.

 

On June 20, 2005, Dotster confirmed by e-mail to the National Arbitration Forum that the domain name <monticellocountryrealtors.com> is registered with Dotster and that the Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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”).

 

Respondent’s response to Complainant’s Additional Response was submitted on July 28, 2005.  On June 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@monticellocountryrealtors.com by e-mail.

 

A timely Response was received and determined to be complete on July 18, 2005.

 

A timely Additional Submission was received from Complainant on July 22, 2005.

 

Respondent’s Reply to the Additional submission, dated July 27, 2005 was received and considered.

 

On July 25, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Daniel B. Banks, Jr. (Ret.), David Sorkin, David P. Miranda, Chair, as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Monticello Country Realtors, Inc. (“Complainant”), commenced this proceeding seeking transfer of the <monticellocountryrealtors.com> domain name from Respondent, Patsy Strong (“Respondent”).  Complainant contends that it has continuously operated under the name Monticello Country Realtors since 1984, and has used that name in commerce since that time.  In support of this contention they provide an advertisement from 2004; a newspaper advertisement from 1987 from the Daily Progress of Charlottesville, Virginia that includes the corporate name; a direct mail solicitation from 1990 that shows the corporate name, without any indication as to whom the solicitation was sent; advertisements from 1992, 1998, 2002 and 2005; and a newspaper article from 2004.  Complainant further contends that it established a website in March 1999 at the <monticellorealtors.com> domain name using the masthead “Monticello Country Realtors.”

 

Respondent worked for Complainant from July 1, 2001 to November 13, 2003, after which she began working for a competitor of Respondent.  On April 1, 2003, while she was still in the employ of Complainant, she registered the domain name in dispute.  On February 17, 2005, Respondent registered the domain names of other business competitors.

 

Complainant contends that the <monticellocountryrealtors.com> domain name is confusingly similar to Complainant’s service mark because the use of the domain name by Respondent is likely to confuse consumers into believing that Respondent’s website is owned and supported by Complainant.

 

Complainant contends that it has common law service mark rights in the name at issue, based upon Complainant’s continuous, consistent and exclusive use of the mark in commerce for over twenty years, and as such, the mark has acquired secondary meaning and become distinctive.  Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, is not using the name in her business, and has registered and used the disputed domain name in bad faith, solely for the purpose of attempting to deprive Complainant of an effective internet marketing tool.

 

Complainant further contends that, although Respondent is not actively using the disputed domain name, a finding of bad faith is supported because Respondent cannot possibly use the domain name in a manner that does not infringe upon Complainant’s service mark, and the passive holding of the disputed domain name is also evidence of bad faith.

 

B. Respondent

Respondent contends that Complainant does not own a registered trademark or service mark, and the name is merely descriptive as it describes the geographic source of the service, and many businesses, organizations and civic groups in Virginia use the Monticello name to describe the geographic location because Monticello is internationally recognized as the home of Thomas Jefferson.

 

Respondent contends that Complainant has failed to provide proof showing that its use of the mark was continuous, consistent and exclusive, and that Complainant failed to produce any evidence of advertising expenditures, consumer studies, sales success, unsolicited media coverage, plagiarism of the mark or exclusivity of the mark’s use.

 

Respondent further notes that Complainant’s improper use of the ® in conjunction with an unregistered mark on its website constitutes misuse of notice of registration of a mark sufficient to bar any federal registration.  Respondent contends she initially registered the domain name when considering purchase of Complainant’s business, and if the purchase was completed, intended to change its domain name to <monticellocountryrealtors.com>.

 

C. Additional Submissions

Complainant contends that it has common law rights in the mark based upon its twenty years of use of the mark, and that for the last five years it is the leading real estate company in Fluvanna County, Virginia.

 

Complainant further contends that Respondent has registered and used the disputed domain name in bad faith because she has not created a website using the domain name, and cannot possibly do so without infringing upon Complainant’s mark.  Complainant also disputes that there were negotiations with Respondent for the purchase of the real estate business in question.

 

The panel received and has considered Respondent’s Reply to Complainant’s Additional Response.  Respondent contends that Complainant did not offer sufficient evidence that its use of the “Monticello Country Realtors” name has been exclusive, consistent or continuous since 1984, and in fact, the current owner Joanne Nordlan only owned and operated the company since 1996.  Respondent contends that Complainant’s proof of advertising expenditures fails to establish that such advertisements reflected the “Monticello Country Realtors” name, and how and to whom such advertisements were sent.  Respondent further disputes that it registered the name in bad faith, but rather was in accordance with a bona fide business plan.

 

FINDINGS

Complainant has used “Monticello Country Realtors” as its corporate name, but has failed to show sufficient trademark or service mark rights to warrant transfer under the UDRP rules.

 

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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant contends that it has used the name “Monticello Country Realtors” since 1984 in relation to its real estate services.  The proof submitted shows that “Monticello Country Realtors” is the company name of Complainant.  No proof has been submitted showing a trademark or service mark registration from any governmental authority, and no proof has been submitted showing Complainant’s use of the name with the TM or SM designation.  There does not appear to be much, if any, use of the name by Complainant directed beyond the Commonwealth of Virginia.

 

Although trademark or service mark rights are generally established by showing that the mark is registered by a government authority or agency, common law rights may be acquired through a showing of secondary meaning associated with the mark and Complainant.  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003).  In the absence of registration of the mark, Complainant must establish common law trademark rights by demonstrating sufficiently strong identification of its mark with the public, showing the mark has acquired secondary meaning.  Complainant has failed to satisfy its burden of providing proof upon which a finding of secondary meaning could be based.  Although a complainant in a proceeding such as this may establish common law rights to a mark, Complainant in this case has failed to do so.  See generally NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying the complaint because the complainant was not the owner of the trademarks);  Razorbox, Inc. v. Skjodt,  FA 150795 (Nat. Arb. Forum May 9, 2003) (finding that the complainant did not establish the requisite trademark or common law rights to grant the complainant the necessary standing for the panel to find in its favor as the complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for); Diversified Mortgage, Inc. v. World Fin. Partners, FA 118308 (Nat. Arb. Forum Oct. 30, 2002) (finding that the UDRP makes clear that its “rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks”); Tees.com, LLC v. Emphasys Techs., Inc., FA 206362 (Nat. Arb. Forum Dec. 27, 2003).  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services); see also Molecular Nutrition, Inc. v. Network News & Publ’ns., FA 156715 (Nat. Arb. Forum June 24, 2003) (approving of and applying the principles outlined in prior decisions that recognized “common law” trademark rights as appropriate for protection under the Policy “if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant's goods or services”).

 

Therefore, the Panel finds that Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(i).  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) (“Bald assertions of consumer knowledge are not an adequate form of evidence to establish secondary meaning in a name.”).

 

Since Complainant has failed to establish the first element of the Policy, it is unnecessary to address the claims under the remaining two elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Holmes v. Whois Prot. Serv.-ProtectFly.com, FA 288395 (Nat. Arb. Forum Aug. 17, 2004).

 

Although the Panel finds that Complainant has not satisfied its burden at this hearing, such a determination is not meant to imply that Complainant could not be successful in a UDRP proceeding based upon a common-law trademark claim, and does not prevent Complainant from applying for and obtaining a U.S. trademark or service mark registration, and seeking to obtain the relief requested herein again.

 

DECISION

Having failed to establish the first of three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <monticellocountryrealtors.com> domain name remain with Respondent.

 

 

 

                                                                       

David P. Miranda, Chair, Panelist

Hon. Daniel B. Banks, Jr. (Ret.) & David Sorkin, Panelists

 

Dated: August 8, 2005