Discover New England v.
The Avanti Group, Inc.
Claim Number:
FA0208000123886
PARTIES
Complainant is
Discover New England, Stowe, VT (“Complainant”) represented by Matthew
R. Johnson. Respondent is The
Avanti Group, Ridgefield, CT (“Respondent”) represented by Stephen S.
Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue
is <discovernewengland.com>, registered with Domain Bank.
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.
R. Glen Ayers, James A.
Carmody, and G. Gervaise Davis III served as Panelists.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on
August 26, 2002; the Forum received a hard copy of the Complaint on August 27,
2002.
On August 29, 2002,
Domain Bank confirmed by e-mail to the Forum that the domain name <discovernewengland.com>
is registered with Domain Bank and that the Respondent is the current
registrant of the name. Domain Bank has
verified that Respondent is bound by the Domain Bank 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 August 29, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 18, 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@discovernewengland.com by e-mail.
A timely Response was
received and determined to be complete on October 8, 2002.
Complainant’s additional
submissions were received on October 14, 2002.
On October 23, 2002,
pursuant to Complainant’s request to have the dispute decided by a three-member
Panel, the Forum appointed R. Glen Ayers, James A. Carmody, and G. Gervaise
Davis III as Panelists. R. Glen Ayers
served as chair.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a “joint
non-profit regional tourism marketing organization” comprised of the state
tourism offices of the New England states.
Complainant hired Respondent, a web designer, to create a website to
promote “Discover New England.”
According to a Letter Agreement, dated July 17, 1996, Respondent
received a license to use Complainant’s intellectual property, including its
name. Respondent was authorized to
register a domain name for the project.
The Letter Agreement specified that the domain “address” would become
the property of Complainant at the termination of the contract set out in the
Letter Agreement.
Thereafter, the domain
name was registered. Then, in 1999, the
contractual relationships with Respondent were terminated, but Respondent did
not transfer the domain name to Complainant. The Letter Agreement was
terminated.
Subsequently,
Complainant received a registration for a mark, DISCOVER NEW ENGLAND. Complainant asserts that it has common law
trademark rights in the name dating from at least 1993.
The Complaint also
asserts that Respondent has refused to “cease and desist” use of the domain
name and that it has attempted to sell its rights in the name to third
parties. This, says Complainant,
constitutes bad faith.
The Complaint is
somewhat cursory and does not address the issue of whether Respondent has
rights in the name.
B. Respondent
Respondent, in an overly
long Response, first asserts that Complainant has no legal existence and cannot
bring this action.
Next, Respondent points
out that there is no evidence of use by Complainant which would have created
common law rights prior to the recent registration of the mark. By affidavit, Respondent attempts to show
that it registered the domain name before it began dealing with Complainant.
Respondent also notes
that this is a contract dispute, not covered by the ICANN Rules and Policies.
Respondent asserts that
it had and has rights in the name, and asserts that Complainant has failed to
carry its burden as to that element of the required proof necessary to prevail
in a domain name dispute. As Respondent
points out, it has rights in the domain name under the Letter Agreement executed
in 1996 and that it made use of the name for some time.
Respondent then goes on
to argue that the alleged mark, common law or registered, is extraordinarily
weak, being comprised of three generic words forming a common phrase.
Respondent denies that it
acted in bad faith – pointing out that the registration was clearly not in bad
faith and arguing that there is no evidence of bad faith use.
While Respondent
provides much detail for this argument, in summary, Respondent basically argues
a “no evidence” point.
Finally, Respondent
asserts a claim for “reverse domain name hijacking.”
C. Additional
Submissions
Complainant timely filed
an additional submission, which will be considered.
Complainant in its
additional submission for the first time attempts to support its claim of
common law mark existence prior to the (very recent, i.e., 2002)
registration of the mark. As to the weakness of the mark, the Complainant
suggests that the mark must be fine because the U.S. Patent and Trademark
Office (“USPTO”) issued a registration.
As to bad faith,
Complainant says that if Respondent registered the domain prior to entering
into the Letter Agreement, the Respondent must have been intending, in bad
faith, to register the name with the intent to sell the registration to
Complainant as of the time or prior to the time of the Letter Agreement. Complainant also offered evidence of an
attempt to sell the domain name registration for $90,000.
The additional
submission never really addressed the issue of rights in the name, one of three
elements necessary for Complainant’s case.
FINDINGS
As Respondent says, this
is a contract dispute and not suitable for consideration in this forum and by
this Panel.
Complainant alleges that
it licensed the name, “Discover New England,” the name was used with permission
by Respondent to register the domain name, and now, and notwithstanding clear
contract language, Respondent will not give the name back. Adjudication of such disputes is for the
courts of the various states and the courts of the United States. This forum is charged with determining (1)
whether Complainant has a mark (and Complainant has done a very poor job in
showing any common law mark as of the date of the registration of the name);
(2) whether Respondent has or had at registration any rights in the name; and,
(3) whether Respondent acted in bad faith.
There is insufficient
evidence to determine any of these issues; since the burden is on Complainant,
the relief requested must be denied.
(If this Panel had the ability to decide contract claims, the result
might very well be different.) In
particular, it seems clear that, at least at the time of registration,
Respondent did have rights in the name and that the registration and use were
not in bad faith as of the date of registration. Conversely, the pleadings and exhibits seem to show a contract
has been breached and that a court of competent jurisdiction could order
specific performance – or the transfer of the domain name.
Given the facts and
circumstances, the Panel declines to consider the issue of reverse domain name
hijacking asserted by Respondent.
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
While Complainant holds
a service mark issued in 2002, which is identical to the domain name,
Complainant has failed to show that it held a common law mark as of the date of
the registration of the domain name.
Obviously, it is difficult to show the existence of a common law mark in
three generic words describing a relatively common activity. See generally Successful Money Mgmt.
Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7,
2001); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb.
Forum May 25, 2000).
Rights or Legitimate
Interests
As of the date of the
registration of the domain name, Respondent had rights or legitimate interests
in the name, if for no other reason than that Complainant had licensed the use
of the mark as a domain name or authorized the use of the mark as a domain
name. If the right to use the name has
been terminated by contract, Respondent certainly made preparations for use and
used the domain name before any attempt to cancel the contract occurred.
There is no evidence of
registration or use in bad faith by Respondent as that term is used in the
Rules and Policies (although there may well be bad faith in a contract
context). The Panel is troubled by the
sale offer, but to determine that the offer was in bad faith would require
consideration of contract and contract defenses, all of which is beyond the
jurisdiction of the Panel.
DECISION
The relief requested is DENIED
and the domain name shall not be transferred; the Respondent’s requested relief
concerning reverse domain name hijacking is DENIED.
R. Glen Ayers, Chair
R.
Glen Ayers, James A. Carmody, and G. Gervaise Davis III, Panelists
Dated: November 6, 2002
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