Claim Number: FA0707001025866
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southernhighlandscrossroads.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 29, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 2, 2007.
On July 2, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <southernhighlandscrossroads.com>
domain name is registered with Enom, Inc.
and that the Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
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 July 6, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 26, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@southernhighlandscrossroads.com by e-mail.
A timely Response was received and determined to be complete on July 26, 2007.
A timely Additional Submission and the requisite panel fee were
received prior to the deadline of July 31, 2007.
On July
31, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as
Panelist.
On August 6, 2007, Respondent filed a Response to
Complainant’s Additional Submission. However, because the document was received
after the decision was written and since the decision was in favor of
Respondent, this Response has not been considered.
On August 6, 2007, Complainant filed an Objection
to Respondent’s Response of that same day. However, since, as noted above,
Respondent’s Response was not considered, neither was Complainant’s Objection
thereto.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the <southernhighlandscrossroads.com> domain is confusingly similar to federally registered
trademarks owned by it, several of which have incontestible status. Complainant also states that the <southernhighlandscrossroads.com> domain
name was registered in bad faith because it was adopted with knowledge of
Complainant’s trademarks and is being used in bad faith because Respondent has
attempted to mitigate potential confusion via a disclaimer on the website to
which the domain resolves, and asserts that Respondent is using the <southernhighlandscrossroads.com> domain
to attract Internet users for commercial gain by creating a likelihood of
confusion with Complainant’s trademarks.
Complainant further contends that an offer to sell advertising space on
Respondent’s website reached by the <southernhighlandscrossroads.com>
domain is additional evidence of bad faith.
B. Respondent
Respondent contends that due to the number of businesses associated
with the name Southern Highlands and the fact that it is a geographic location,
that Complainant’s rights are limited to the specific goods and services
covered by its registrations, and that Respondent’s use of the Southern
Highlands name as part of the Complainant’s <southernhighlandscrossroads.com> domain
is a legitimate generic use of that name.
Respondent further contends that it has rights and legitimate interests in
the <southernhighlandscrossroads.com>
domain since it is using the domain with a respect to a website directed to
providing the residents of the Southern Highlands, Nevada community with useful
information none of which is competitive with any goods or services offered by
Complainant.
C. Additional Submissions
In its additional submissions the Complaint reiterates some of the
contentions noted above and also asserts that Complainant could not have any
rights or legitimate interests in the the <southernhighlandscrossroads.com> domain
because it does not have its permission to incorporate Complainant’s trademarks
into its domain and because it is not being used with a bona fide offering of goods and services nor is being used for
noncommercial purposes.
FINDINGS
The Panel finds that Southern Highlands is a
geographic designator that forms part of numerous businesses in the Southern
Highlands,
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.
Respondent alleges that the words
“southern highlands are used in its <southernhighlandscrossroads.com>
domain name in a geographically descriptive sense of a much larger
master-planned community.” Respondent
notes that the words “southern highlands” are used in its geographic sense by
numerous parties that are unaffiliated with Complainant and the Panel has taken
notice of the existence of the Southern Highlands Homeowners, Southern Highland
Ace Ware, Southern Highlands Preparatory, Southern Highlands Cleaning, Southern
Highlands Medical Transcription, among others.
Thus, the Panel finds that Respondent’s domain name is not confusingly
similar pursuant to Policy ¶ 4(a)(i). See
Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001)
(“Respondent has shown that
Respondent claims that despite Complainant’s
trademark registration for the SOUTHERN HIGHLANDS mark, Respondent has used the
terms of the mark in the <southernhighlandscrossroads.com> domain
name in a geographically descriptive manner, referencing a “large, public,
geographic location in Clark County, Nevada.”
Respondent argues that Complainant’s property makes up less than 10% of
the entire master-planned community on which it alleges to hold exclusive
rights. As noted above, numerous
unaffiliated businesses use the name “southern highlands” in its descriptive
sense as part of their tradename or trademark.
Thus, the Panel finds that Respondent can establish rights or
legitimate interests in the <southernhighlandscrossroads.com>
domain name under Policy ¶ 4(a)(ii) based on the geographically descriptive
nature of the terms. See
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum
Feb. 19, 2001) (finding that the respondent has rights and legitimate interests
in the domain name where “Respondent has persuasively shown that the domain
name is comprised of generic and/or descriptive terms, and, in any event, is
not exclusively associated with Complainant’s business”).
Respondent further contends that it registered
the <southernhighlandscrossroads.com>
domain name to operate an informational website directed toward current and
prospective residents of the
The Panel holds that Respondent did not deliberately register the <southernhighlandscrossroads.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii), because the domain name is primarily made up of common terms and Respondent did not intend to misleadingly divert Internet users, including consumers seeking information on Complainant, to its website. See Paigen v. Research & Design, FA 791739 (Nat. Arb. Forum Oct. 25, 2006) (finding no bad faith registration and use of the <chaco.com> domain name where the respondent registered it to provide information on the “Chaco Canyon” and Internet users did not exclusively associate the CHACO mark with the complainant); see also Deer Valley Resort Co. v. Intermountain Lodging & Reservation Ctr., FA 474344 (June 27, 2005) (concluding that the respondent did not register the <deervalleylodging.info> domain name in bad faith because it was geographically descriptive).
Respondent also claims that it has
put a disclaimer on its website at the <southernhighlandscrossroads.com>
domain name. The Panel finds that
Respondent’s use of a disclaimer suggests that it did not register and is not
using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Vanguard Group Inc. v. Investors Fast
Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (finding that because the
respondent’s website contained an express disclaimer of any affiliation with
the complainant, the respondent has rights or legitimate interests in the
<best-of-vanguard.com> domain name and did not register it in bad faith);
see also Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat.
Arb. Forum Oct. 10, 2000) (finding no
bad faith when the respondent put a very visible disclaimer on its website
located at <catparts.com> , because the disclaimer eliminated any
possibility that the respondent was attempting to imply an affiliation with the
complainant and the complainant’s CATERPILLAR mark).
DECISION
Having failed to establish any of the three elements required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <southernhighlandscrossroads.com>
domain name shall be retained by Respondent.
David S. Safran Panelist
Dated: August 14, 2007
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