Homeric Tours, Inc. v. Neon Network
Claim Number: FA0610000823027
PARTIES
Complainant is Homeric Tours, Inc. (“Complainant”), represented by Barry Werbin, of Herrick, Feinstein LLP, 2 Park Avenue, New York, NY 10016. Respondent is Neon Network (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeric.com>,
registered with Blue Razor Domains, Inc.
PANEL
The undersigned certify that they acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Dennis A. Foster, Esq., David
S. Safran, Esq., and James A. Carmody, Esq., as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 18, 2006.
On October 18, 2006, Blue Razor Domains, Inc confirmed by e-mail to the
National Arbitration Forum that the <homeric.com>
domain name is registered with Blue Razor Domains, Inc and that the Respondent
is the current registrant of the name. Blue
Razor Domains, Inc has verified that Respondent is bound by the Blue Razor
Domains, Inc 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 October 23, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 13, 2006 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@homeric.com by e-mail.
A timely Response was received and determined to be complete on November
13, 2006.
On November 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Dennis A. Foster, Esq., David S. Safran, Esq., and
James A. Carmody, Esq. (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <homeric.com> domain name is confusingly similar to Complainant’s HOMERIC TOURS mark.
2. Respondent does not have any rights or legitimate interests in the <homeric.com> domain name.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent
1. Respondent denies that the domain name at
issue is identical or confusingly similar to Complainant’s HOMERIC TOURS mark.
2. Respondent asserts that it has rights and
legitimate interests in the domain name at issue which it registered seven
years before the initiation of this proceeding.
3. Respondent has never attempted to sell the
domain name to Complainant, was not motivated to register it after
consideration of Complainant’s HOMERIC TOURS mark and has not registered and
used the domain name at issue in bad faith.
C. Additional Submissions
Both parties filed
additional submissions and they were taken into consideration by the Panel for
all purposes.
FINDINGS
Complainant, Homeric Tours, Inc., is one of the
most prominent United States tour companies specializing in providing cruise, air and land
tour packages to Greece, the Mediterranean and the Iberian Peninsula. Complainant is the leading United States provider of travel services and
tour packages for Greece. Complainant owns a federal incontestable trademark
registration for the HOMERIC TOURS mark (U.S. Registration No. 894,821), in International Class 39, for
"Arranging and conducting travel tours." As set
forth in its registration, Complainant commenced use of its HOMERIC TOURS mark
in 1969 and its use of that mark has been uninterrupted and consistent for over 35 years. The HOMERIC TOURS mark has acquired
substantial good will in the tourist industry, and has acquired
secondary meaning as is evident from the incontestable nature of its
registration.
Complainant is also the registered domain name owner of the <homerictours.com> domain name and has been
operating its website at that domain address since approximately 1997, when it
first registered that domain.
Complainant promotes its
extensive travel services and tour packages on its website.
Complainant’s mark is a compound mark consisting of the words “HOMERIC
TOURS.” While the word “tours” is disclaimed from the mark as a whole, such
disclaimer does not have the effect of altering the compound term which
Complainant claims as its mark.
Complainant has provided no evidence that it ever has used the word
“HOMERIC” apart from its inclusion in the phrase “HOMERIC TOURS,” nor has Complainant shown that it possesses any trade
or service mark right in the word
“Homeric” standing apart from the compound mark for which Complainant has obtained
federal registration.
The compound nature of Complainant’s mark is significant because, apart
from its inclusion in the compound mark, the
word “homeric” standing alone has a commonly accepted meaning in the English language. The
word “homeric” is an adjectival form of the name of the classic poet Homer, and is primarily associated
with two ordinary meanings: (1) of or relating to Homer and his works, or (2) heroic or dramatic
generally. Indeed, Homer is indelibly
associated with the English word
“odyssey”, relating directly to the subject of travel, which is the title of
one of the best-known Homeric epics.
Mr. Spiliopoulous is the principal of Respondent and a native of
Greece. Respondent’s company, Neon Networks (so named as “Neon” is Greek for
“new”), provides web hosting and Internet development services to a
variety of Greek clients. Accordingly,
Respondent has registered a number of domain names, including the domain name
at issue, related to his home country.
The <homeric.com> domain name was registered almost
seven years before the Complainant commenced this proceeding, on December 9,
1999—only a few weeks after the adoption of the UDRP by ICANN and a few weeks
before the first published UDRP decision.
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.
Apart from the compound “HOMERIC TOURS” mark, the
term “homeric” standing alone is subject to widespread use in connection with its ordinary
meaning, and is not understood to refer to Complainant.
Respondent has provided evidence of Google search engine results for the
term “homeric” which returned
1.45 million results. These “hits”
overwhelmingly have nothing to do with Complainant. Hence, there is no factual basis for
concluding that the word “homeric” standing alone is or would be
understood to be confusingly similar with Complainant’s compound mark. Complainant has not refuted this position of
Respondent to the satisfaction of the Panel.
Further, the term “homeric” appears purely generic and descriptive of
the contents of Respondent’s planned and other related websites. See,
e.g., Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum
February 13, 2001) (respondent is using the domain
"groceryoutlet.com" for a website that links to online resources for
groceries and similar goods).
We find that the domain name at issue is not identical or confusingly
similar to Complainant’s HOMERIC TOURS mark.
Accordingly, the Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i).
Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name).
The <homeric.com> domain name is comprised of a common, descriptive term and thus Respondent has rights or legitimate interests in the disputed domain name. “Homeric” is a term that refers to the classic Greek poet Homer, and Respondent has registered several domain names in connection with his Greek heritage in hopes of promoting Greek culture. Accordingly, Respondent has rights and legitimate interests in the disputed domain name. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business); see also Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (denying transfer of the <porntrumps.com> domain name because, “although Complainant is a well known personage whose name is internationally recognized,” the word “trump” predates Complainant and has a myriad of common uses).
Respondent
possesses rights and legitimate interests in the disputed domain name for use
in promotion of Greek culture, because it has used other domain names that it owns
for such a use and because the Panel finds sufficient evidence that Respondent
plans to use the disputed domain name for a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug.
17, 2000) (finding a bona fide use of the <stmoritz.com> domain
name where it resolved it to a website that provided information about the city
of St. Moritz, as well as other countries, general news, and net cafes); see
also Lockheed Martin Corp. v.
Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent
has rights in the <missionsuccess.net> domain name where she was using
the domain name in connection with a noncommercial purpose).
Accordingly, the Panel finds that Complainant has not satisfied Policy ¶ 4(a)(ii).
Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), Respondent did not register 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) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”).
Further, Respondent did not
register the <homeric.com> domain name in bad faith nearly seven years ago
because Respondent’s disputed domain name is comprised of a common term. See Canned Foods, Inc. v.
Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that,
where the domain name is comprised of a generic term, it is difficult to
conclude that there was a deliberate attempt to confuse on behalf of the
respondent, and stating that “[i]t is precisely because generic words are
incapable of distinguishing one provider from another that trademark protection
is denied them”); see also
Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both
registration and use, the generic nature of the disputed domain name itself
rebuts any allegation by Complainant that Respondent registered or used the
disputed domain name in bad faith.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Chair
Dennis A. Foster, Esq.
David S. Safran, Esq
Dated: December 6, 2006
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