DECISION

Pocatello Idaho Auditorium District v. CES Marketing Group, Inc. and ADO CES Marketing Group

Claim Number: FA0112000103186

PARTIES

Complainant is Pocatello Idaho Auditorium District, Pocatello, ID (“Complainant”) represented by Louise Mahoney. Respondent is Scott Musgrove CES Marketing Group, Inc. and ADO CES Marketing Group, Vancouver, BC (“Respondent”) represented by Ari Goldberger, of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pocatello.com>, registered with Register.com.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

G. Gervaise Davis III, Milton Mueller, and Charles Kuechenmeister are the Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 20, 2001; the Forum received a hard copy of the Complaint on December 27, 2001.

On December 20, 2001, Register.com confirmed by e-mail to the Forum that the domain name <pocatello.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 January 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2002 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@pocatello.com by e-mail.

A timely Response was received and determined to be complete on January 23, 2002.

On February 5, 2002, pursuant to ~~Complainant’s~~ Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed G. Gervaise Davis III, Milton Mueller, and Charles Kuechenmeister as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant (with Panel Comments)

Complainant does not allege that it owns a registered or common law trademark on the word “Pocatello,” nor that it is the City government of that city, nor that it has any legal claim to the name, merely stating:

“Pocatello, Idaho is the only “Pocatello” in the world. The Pocatello, Idaho Auditorium District (Greater Pocatello Convention & Visitors Bureau), a recognized taxing authority, is actively engaged in marketing Pocatello to a national and international audience of tourists, tour operators and meeting planners, using the name, ‘Pocatello.’

“Because Pocatello, Idaho is the only “Pocatello” in the world, it is logical to assume that an Internet user is aware of Pocatello, Idaho when entering that domain name in his/her browser, and intends to reach some organization or body officially representing Pocatello, Idaho.”

The Panel believes that while this might be one reason for using the name of the city, it is equally possible that the Internet user is merely looking for businesses or individuals who live, work or engage in business in that area – a common purpose of Internet City Directories or Internet reference pages.

Complainant further alleges “Respondent cannot have been commonly known as ‘Pocatello.’ We are the only Pocatello in the world.” However, Complainant is not the City of Pocatello, but merely a marketing entity, which, in the view of the Panel, has no more claim to the name than anyone else making nominative use of the name of the City.

Complainant states that Respondent is merely using the domain name to link to advertisements and commercial sites about Idaho, and therefore has not engaged in a bona fide offering of goods and services under ¶ 4(c)(i). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names where Respondent was using these domain names to link to an advertising website); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

Complainant contends that Respondent is not commonly known by the name “Pocatello” under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). Complainant alleges that Pocatello is unique and in exclusive use by them. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

However, unlike the Nike case, (in which the Complainant held a number of valid and incontestable trademarks), Complainant here has no legal claim to the name Pocatello, other than its desire to promote the area, which is an activity that the Respondent also appears to engage in. Complainant is not the only user of the city name, as evidenced by the City of Pocatello’s simultaneous use of the name.

Complainant contends that Respondent offered to sell the domain name for $50,000. There are cases which have found that such use is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

However, Complainant provides no evidence that Respondent registered the name for such purpose. In fact, the Complainant, itself, actually initiated the inquiry for purchase stating that it was “interested either in purchasing the [Disputed Domain] outright, or securing the right to a redirect.” Respondent then merely replied that it was willing to consider selling the name for the sum of $50,000. There are numerous ICANN decisions which have recognized that the owner of a domain name has a legal right to sell a domain name when asked if he or she will transfer or sell it. Panels have noted that "there is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy." N.C.P. Marketing Group v. Entredomains, D2000-0387 (WIPO July 5, 2000). Further, where the Complainant offered the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum, panels have similarly found no bad faith on the part of the Respondent. Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIP Oct. 5, 2001) quoting N.C.P. Marketing Group v. Entredomains, D2000-0387 (WIPO July 5, 2000); and Onu S.R.L. v. Online Sales, AF-0672 (eResolution Feb. 16, 2001).

Complainant contends that Respondent attempted to sell the domain name for in excess of out-of-pocket costs, which allegedly proves that the domain name was registered and being used in bad faith under Policy ¶ 4(b)(i). See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000 when Respondent was contacted by Complainant). The Panel agrees that the price quoted exceeds the out-of-pocket costs, but ~~such facts are irrelevant in this factual situation.~~when a Complainant indicates ~~their~~a willingness to engage in a market transaction for the name, it does not violate the policy for a registrant to offer to sell for a market price, rather than out-of-pocket expenses.

Complainant also alleges bad faith under Policy ¶ 4(b)(iv) under which the Panel could find that Respondent is causing confusion as to the source or sponsorship of other Idaho websites and is therefore trading on Complainant’s goodwill. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website). The Panel, however, does not believe that there is any such evidence here, since Respondent has an equal right to that of Complainant to use a geographical name for nominative purposes. See, Glenwood Springs Chamber Resort Ass’n, Inc. v. College Transportation, Inc, FA 98825 (Nat. Arb. Forum Oct. 31, 2001) (“a geographically descriptive name is not eligible for trademark protection without proof that, through usage, it has become a unique source identifier).

B. Respondent

Respondent contends that that Complainant does not have, or even claim to have a trademark. See Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution, May 30, 2000) (dismissing a Complaint where complainant failed to contend, provide evidence, or give arguments to the effect that it had either a registered trademark or service mark in POWRACHUTE or any similar name, or that it had a common law trademark in the name. The only evidence provided, that it was incorporated under the name, is insufficient to create a trademark).

Respondent contends that municipal governments do not have a trademark interest in the name of the city it governs. See City of Salinas v. Baughn, FA 97076 (Nat. Arb Forum June 4, 2001) (geographical locations, such as the City of Salinas, have a limited capacity to perform the function of a trademark as required by the Policy,” and that “[u]nder the circumstances, the unregistered mark is unable to, and does not, perform the function of a trademark”). See also Glenwood Springs Chamber Resort Association Inc. v College Transportation Inc. dba Website for Sale, FA 98825 (Nat. Arb. Forum Oct. 10, 2001) which uses the same reasoning.

Respondent contends that the domain name was registered to develop a website about Pocatello. See Newport News v. VCV Internet, AF-0238 (eResolution July 18, 2000) (finding that Respondent has rights and legitimate interests in the domain name newportnews.com where Respondent is using the domain name in connection with a bona fide use of disseminating general information about the City of Newport News).

Respondent further contends that the domain name was not registered in bad faith and that Complainant has failed to provide any evidence of bad faith. See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (refusing to transfer the domain name where “[m]ere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence”).

Additionally, Respondent contends that he did not register the domain name for the “primary purpose” of selling the domain name to Complainant. See LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (finding that “the mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling…the domain name to the Complainant”).

DISCUSSION

Paragraph 15(a) of the Rules for the 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 To Mark

Since Complainant does not even claim to own a trademark on the name “Pocatello” and because it is a geographic term, the term “Pocatello” is not protected within the scope of the URDP and therefore it cannot be said that Respondent’s domain name is identical or confusingly similar to the trademark or service mark of Complainant. Complainant has no trademark and claims none. See Glenwood Springs Chamber Resort Association Inc. v. College Transportation Inc. dba Website For Sale, FA 98825 (Nat. Arb. Forum Oct. 31, 2001) This trademark principle has deep historical roots.

[I]t is obvious that the same reasons which forbid the exclusive appropriation of generic names or of those merely descriptive of the article manufactured and which can be employed with truth by other manufacturers, apply with equal force to the appropriation of geographical names, designating districts of country. Their nature is such that they cannot point to the origin [personal origin] or ownership of the articles of trade to which they may be applied. They point only at the place of production, not to the producer.

Canal Co. v. Clark, 80 U.S. 311, 13 Wall. 311, 20 L. Ed. 581 (1872)

Rights or Legitimate Interests

Because the Complainant has failed to show that the domain name at issue is identical or confusingly similar to a trademark of Complainant, it is not necessary to determine Respondent’s rights or if it has a legitimate interest in this domain name. A Complainant must prevail on all three elements in order to have the name transferred under the UDRP – failing on the first element, there is no point in going further. See Paragraph 4(a), UDRP.

Registration and Use in Bad Faith

Since Complainant failed to meet the burden of proof of showing that the domain name at issue is identical or confusingly similar to its trademark has not been met, it is not necessary to determine whether Respondent registered or is using this domain name in bad faith.

General Comments

Notwithstanding Complainant’s failure to meet its various burdens, which precludes the need for further detailed discussion, the Panel would point out that, even if Complainant had established some rights to the mark, it is well established trademark law that geographical terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner. As the cases cited above, and many others which could be cited here, show the names of cities, counties, states, countries, and geographical areas are, in all but the most exceptional cases, available to all to refer to the geographical location. To that extent, geographical terms are one of several exceptions to trademark law restrictions.

To hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question. Contrary to Complainant’s contentions here, there are many reasons one might search for and use the name of the Idaho city called Pocatello. Business directories or websites containing descriptive information of the nature that Respondent claims it intends to use the domain for, are classic examples of such legitimate use. This factor alone would, in many cases but not all, provide Respondent with a legitimate basis for registering and using the domain name in question.

Furthermore, where a Respondent replies to an unsolicited inquiry from a Complainant, indicating it is willing to consider the sale of the domain name, this is not evidence of bad faith per se. (See cases cited above.) It would be irrational for any Panel to so hold, since any business person certainly has the legal right to respond to inquiries asking if something they own is for sale or lease. What makes an offers to sell a domain bad faith is some accompanying evidence that the domain was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner. Such cases also frequently have further evidence that the owner of the domain has engaged in similar transactions with other marks, i.e, traffics in domain names. There was no evidence submitted here to that effect.

FINDINGS

The Panel finds that (1) Complainant has failed to establish that it has any exclusive rights in the geographical term “Pocatello” and, in fact, has not even alleged that it owns the requisite registered or common law trademark in the term; (2) Complainant has failed to establish that Respondent has no right or legitimate reason to use the domain name; and (3) failed to show that the domain name was either registered or used by Respondent in bad faith.

DECISION

Based on the foregoing Findings and Discussion above, Complainant’s request for transfer of <pocatello.com> is hereby denied.

Milton Mueller, Charles Kuenchenmeister & G. Gervaise Davis III, Esq., Panel Chair

Dated: February 21, 2002