Harbor Country Chamber of Commerce v.
Laporte County Convention and Visitor's Bureau c/o Linda Bell
Claim
Number: FA0407000295289
Complainant is Harbor Country Chamber of Commerce (“Complainant”),
represented by Christopher R. Putt of May Oberfell Lorber,
300 North Michigan, South Bend, IN 46601.
Respondent is LaPorte County
Convention and Visitor's Bureau c/o Linda Bell (“Respondent”), represented
by Michael S. Bergerson,
601 Franklin Street, Suite 200, Drawer K, Michigan City, IN 46360.
The
domain name at issue is <harborcountry-in.org>, registered with Bulkregister.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 12, 2004; the Forum received a hard copy of the
Complaint on July 12, 2004.
On
July 14, 2004, Bulkregister confirmed by e-mail to the Forum that the domain
name <harborcountry-in.org> is registered with Bulkregister and
that Respondent is the current registrant of the name. Bulkregister has
verified that Respondent is bound by the Bulkregister 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 21, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 10, 2004 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@harborcountry-in.org by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
August 16, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental
Rules and any rules and principles of law that the Panel deems applicable,
without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harborcountry-in.org>
domain name is confusingly similar to Complainant’s HARBOR COUNTRY mark.
2. Respondent does not have any rights or
legitimate interests in the <harborcountry-in.org> domain name.
3. Respondent registered and used the <harborcountry-in.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Harbor Country Chamber of Commerce, is a not-for-profit organization which
promotes business and tourism in eight communities along Lake Michigan in the
southwest corner of Michigan, located just north of the Indiana/Michigan state
line. Complainant was formed in 1981
when these eight communities started to cooperate in the interest of promoting
business and tourism in the area.
Complainant was officially incorporated on February 9, 1983 and has used
the HARBOR COUNTRY mark continuously since its original formation in 1981.
After continuous
use of the HARBOR COUNTRY mark in promotional literature, advertising
campaigns, and on its website at the <harborcountry.org> domain name.
Complainant filed for registration of the mark with the United States Patent
and Trademark Office on October 31, 2000.
The mark was officially registered on July 2, 2002 (Reg. No. 2,587,669).
Respondent
promotes business and tourism in LaPorte County, which is located in Indiana
adjacent to and directly across the state line from Complainant. In about 1994, Respondent began a new
advertising campaign that promoted LaPorte County as “Northern Indiana Harbor
Country,” using Complainant’s HARBOR COUNTY mark after it had been in use by
Complainant for about thirteen years.
Respondent
registered the <harborcountry-in.org> domain name on November 21, 1996. Respondent is using the disputed domain name
to divert Internet users to its own tourism website at
<laportecountycvb.com>.
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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.
Complainant
began using its HARBOR COUNTRY mark in 1981 when Complainant was founded and
has used the mark continuously and extensively since that time in association
with its business and tourism promotions and advertising. In 1983, Complainant officially became
incorporated as the Harbor Country Chamber of Commerce and continues to operate
under that title. At the time of
Respondent’s registration of the <harborcountry-in.org> domain
name in 1996, Complainant had been using its mark continuously for
approximately fifteen years. The Panel
finds that prior to its registration with the USPTO in 2002, Complainant had
acquired common law rights in its HARBOR COUNTRY mark and that those rights
predate Respondent’s registration of the disputed domain name. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that Complainant has common law rights in the mark FISHTECH which it
has used since 1982); see also S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb. Forum March 13, 2003) (holding that Complainant
established rights in the descriptive RESTORATION GLASS mark through proof of
secondary meaning associated with the mark).
The <harborcountry-in.org>
domain name registered by Respondent is confusingly similar to Complainant’s
HARBOR COUNTRY mark because the domain name incorporates Complainant’s mark in
its entirety, adding only a hyphen and the letters “in,” the postal
abbreviation for the state of Indiana.
The mere addition of punctuation and a geographic term to a mark does
not negate the confusing similarity of the domain name. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly similar to
Complainant’s mark because “the combination
of a geographic term with the mark does not prevent a domain name from being
found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name,
<walmartcanada.com> is confusingly similar to Complainant’s famous
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the
<harborcountry-in.org>
domain name, which
contains Complainant’s HARBOR COUNTRY mark in its entirety. Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate
interests in the disputed domain name.
The burden shifts to Respondent to show that it does have rights or
legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept
as true all allegations of the Complaint.”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the <harborcountry-in.org> domain name to redirect Internet
users to Respondent’s website, which promotes tourism for Respondent. Therefore, Respondent is a direct competitor
of Complainant for tourism in the area.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s HARBOR COUNTRY mark to redirect Internet users interested in
Complainant’s services to a commercial website that offers Respondent’s
competing services is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”).
Finally,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <harborcountry-in.org> domain
name. Furthermore, Complainant has not
authorized or licensed Respondent to use its HARBOR COUNTRY mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent
intentionally registered the <harborcountry-in.org> domain name,
which contains Complainant’s HARBOR COUNTRY mark in its entirety, for
Respondent’s commercial gain. The
domain name diverts Internet users who seek Complainant’s mark to Respondent’s
commercial website through the use of a domain name that is confusingly similar
to Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s HARBOR COUNTRY mark. Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Furthermore,
Respondent registered the <harborcountry-in.org> domain name for
the primary purpose of disrupting Complainant’s business by redirecting
Internet traffic intended for Complainant to Respondent’s website that directly
competes with Complainant in the tourism industry. Furthermore, Complainant and Respondent are in the same market
area competing for business in southwest Michigan and northern Indiana. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding that the disputed domain names were registered and used in bad faith
where Respondent registered domain names which infringed upon Complainant’s
mark, had no resemblance to Respondent’s business name and where Respondent’s competing
business was located one and a half blocks from Complainant’s business); see
also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <harborcountry-in.org> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
August 18, 2004
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