Enfinger Development, Inc. v. Roderick
Montgomery
Claim Number: FA0411000370918
PARTIES
Complainant
is Enfinger Development, Inc. (“Complainant”),
represented by Frank M. Caprio, of Lanier Ford Shaver & Payne, P.C.,
200 West Side Square, PO Box 2087, Huntsville, AL 35804. Respondent is Roderick Montgomery (“Respondent”), 102 Dunhill Drive, Huntsville,
AL 35824.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mcmullencove.com>,
<mcmullencove.org> and <mcmullencove.net>, registered
with Tucows Inc.
PANEL
The undersigned certifies that they or
she has acted independently and impartially and to the best of their knowledge
have no known conflict in serving as Panelist in this proceeding.
Robert
T. Pfeuffer as Chair, Todd Dickinson as Panelist and Diane Cabell as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
23, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 24, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <mcmullencove.com>,
<mcmullencove.org> and <mcmullencove.net> are registered
with Tucows Inc. and that Respondent is the current registrant of the
name. Tucows Inc. has verified that
Respondent is bound by the Tucows 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
December 2, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 22, 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@mcmullencove.com,
postmaster@ mcmullencove.org and postmaster@mcmullencove.net by e-mail.
A
timely Response was received and determined to be complete on December 22, 2004.
An Additional Submission was received
from Complainant and it has been fully considered by the Panel. In addition, upon request of the Panel,
Complainant submitted additional evidence and Respondent signed and verified
his pleadings under oath. The
Additional Submission complies with Supplemental Rule 7.
On December 30, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Robert T. Pfeuffer as Chair, Todd Dickinson and Diane Cabell as
Panelists.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is in the land development
business and has undertaken the development of a new subdivision in Huntsville,
Alabama to be called “McMullen Cove.”
It claims that it has rights to the McMULLEN COVE mark through filing an
application for a service mark registration with the United States Patent and
Trademark Office (“USPTO”) and that it has established common law rights to the
mark. It therefore contends that
Respondent should be ordered to transfer the disputed domain names to
Complainant.
B. Respondent
Respondent has asserted that it has
established rights and legitimate interests in the service mark to be used in
connection with its business offering communication services to the new
McMullen Cove community. He argues that
his registration of the domain names occured prior to Complainant’s filing its
application for registration of the service mark and that he has done so in
good faith in respect to a business he intends to establish, but which he has
yet to accomplish.
C. Additional Submissions
In addition to its original complaint,
Complainant has timely filed an Additional Submission in which it asserts that
its McMULLEN COVE mark is neither generic nor geographically descriptive in
nature and further alleges that this mark is “the unique name of unique
services proffered…and a name that the Respondent chose to hijack for his own
dubious purposes.”
FINDINGS
Panelists
Pfeuffer and Dickinson find from the evidence as follows, Panelist Cabell has
decided as indicated in her Dissent attached hereto and does not join in these
findings:
1.
The
majority of the Panel finds that the mark registered by Respondent is identical
or confusingly similar to that of Complainant.
2.
That
Complainant has established rights and legitimate interests in McMULLEN COVE
mark and that Respondent lacks such rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
3.
The
majority of the Panel finds that Respondent registered and used the disputed
domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
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 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 the Complainant has rights;
(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.
The Panel finds that Complainant has
common law rights in the mark, which satisfies the requirements of Policy ¶
4(a)(i). Complainant submitted detailed
development plans to the City of Huntsville through its Planning and Zoning
Department clearly specifying the use of the McMULLEN COVE service mark. In addition, items of correspondence between
Complainant and the officials of the City of Huntsville clearly reflect
Complainant had adopted use of this service mark. Further, a prominent newspaper article describing the new
development and utilizing the McMULLEN COVE service mark was presented to the
public in the leading local newspaper.
The very next day, Respondent registered the domain names.
The
Panel finds that Complainant’s registration of the mark after Respondent
registered the domain names on June 7, 2004 is not a prerequisite to
Complainant establishing rights in the McMULLEN COVE mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist); see also British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not
require that a trademark be registered by a governmental authority for such
rights to exist.”).
The Panel finds that Complainant has
established common law rights in the mark through its work with the various
departments of Huntsville, Alabama to meet its regulatory requirements for new
subdivisions. See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established); see also Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(finding that complainant had provided evidence that it had valuable goodwill
in the <minorleaguebaseball.com> domain name, establishing common law
rights in the MINOR LEAGUE BASEBALL mark).
The evidence does not indicate that
Respondent has ever been commonly known by the domain names which he has
registered. Respondent asserts that it
is intending to use the registered names to operate a website “offering voice,
video and data services for the new McMullen Cove Community”. The Panel concludes from the evidence that
Respondent lacks rights and legitimate interests in the domain names pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v.
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or
legitimate interests where (1) respondent is not a licensee of complainant; (2)
complainant’s prior rights in the mark precede respondent’s registration; (3)
respondent is not commonly known by the domain name in question).
The Panel finds that Respondent could
possibly have registered the domain name with the intent to possibly protest or
complain about Complainant’s plans to extend Edgewater Drive into the new
residential area (McMullen Cove) being planned by Complainant, although
Complainant failed to make this argument in his pleadings. The Panel would note that the evidence
reflects that Respondent originally used the disputed domain names to direct
Internet users to this protest website.
Accordingly, the Panel finds that Respondent’s use of Complainant’s mark
to protest and complain is further evidence of a lack of rights and legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001)
(holding that respondent’s showing that it “has a right to free speech and a
legitimate interest in criticizing the activities of organizations like the
Complainant…is a very different thing from having a right or legitimate
interest in respect of [a domain name that is identical to Complainant’s
mark]”); see also E. & J. Gallo
Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that
establishing a legitimate free speech/complaint site does not give rights to
use a famous mark in its entirety).
Complainant points out that Respondent’s
stated intention to use the domain names to operate a website “offering voice,
video, and data services for the new McMullen Cove Community” is merely a ruse
and does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor is it a legitimate non-commercial use pursuant to Policy ¶
4(c)(iii). See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11,
2000) (finding that Respondent did not establish rights and legitimate
interests in the domain name where Respondent mentioned that it had a business
plan for the website at the time of registration but did not furnish any
evidence in support of this claim); see
also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov.
7, 2000) (holding that respondent’s “vague and unsupported assertion of ‘plans
to sell household goods, supplies and appliances over the Internet’” was
insufficient to be considered proof of a legitimate business plan); see also Wal-Mart Stores, Inc. v. Walmarket
Canada, D2000-0150 (WIPO May 2, 2000) (finding that respondent had no rights
or legitimate interests where he decided to develop the website for the sale of
wall products after receiving complainant’s “cease and desist” notice). The Panel finds that these assertions by
Complainant are supported by the evidence.
The
Panel finds that Respondent’s use of the domain names to possibly criticize or
protest Complainant’s plans to extend a certain street and diverting Internet
users from the disputed domain names to another website entirely dedicated to
the political purposes of defeating the extension of this street is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO May 14, 2001) (stating that although respondent’s complaint website did
not compete with complainant or earn commercial gain, respondent’s
appropriation of complainant’s trademark with a view to cause “damage and
disruption to [Complainant] cannot be right, still less where the use of the
Domain Name will trick internet users intending to visit the trademark owner’s
site into visiting the registrant’s site” in holding that the disputed domain
name was registered in bad faith); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding bad faith where respondent knowingly chose a domain name,
identical to complainant’s mark, to voice its concerns, opinions, and criticism
about complainant).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcmullencove.com>, <mcmullencove.org> and <mcmullencove.net> domain names
be TRANSFERRED from Respondent to
Complainant.
Robert T. Pfeuffer, Chair
Todd Dickinson, Panelist
Dated: February 16, 2005
DISSENT FOR THE
RECORD BY DIANE CABELL, Panelist
I would dismiss this action for failure to establish the
existence of a "trademark or service mark in which the complainant has
rights" in the term "McMullen Cove" as required by Policy ¶
4(a)(i). If no rights exist at the time
of domain registration, it follows that there will be no grounds to find bad
faith.
Complainant cites the date of a June press event as the date
of first commercial use of the mark in Complainant's federal trademark
registration application. The only
evidence of prior use was that of a meeting with city officials to get approval
for the real estate development project. This meeting was not cited in the
federal application, so even Complainant does not claim that as the first date
of commercial use of the mark. The
trademark application itself has not yet been approved and therefore carries no
weight in the establishment of rights.
According to traditional common law, advertising alone does
not establish a trademark right unless it is accompanied, immediately or soon
thereafter, by continuous offer of goods and services. Here, Complainant's announcement indicates
that sales would not begin for nearly a year.
2 McCarthy on Trademarks and Unfair Competition § 16:12 (4th ed.)
cites several cases to this point: McNeil v. Mini Mansions, Inc., 178
U.S.P.Q. 312 (T.T.A.B. 1973) (use of mark intended for architectural services
for comments from building inspectors is not public use for priority); Buti
v. Perosa, S.R.L., 139 F.3d 98, 45 U.S.P.Q.2d 1985 (2d Cir. 1998) ("So
that the issue is no longer in doubt, we hold ... that the mere advertising or
promotion of a mark in the United States is insufficient to constitute 'use' of
a mark 'in commerce,' within the meaning of the Lanham Act, where that
advertising or promotion is unaccompanied by any actual rendering in the United
States or in 'commerce which may lawfully be regulated by Congress.' "); In
re Cedar Point, Inc., 220 U.S.P.Q. 533 (T.T.A.B. 1983) (Board held that the
advertising of a service to be available in the future, but which was not yet
available at the time of filing the application, does not support the grant of
a registration; Board distinguished this from establishing priority of use in
other contexts).
Respondent registered these domain names the day after the
press event. Complainant believes the
content on the site was posted to tarnish Complainant's mark. That may or may not be the case. Respondent claims a bona fide use of the
domains for non-competing goods and services and alleges that the term has only
been used by Complainant as a geographic indicator. That may or may not be the
case. While these points may be
relevant to findings of bad faith, they appear to me to be irrelevant to the
existence of a mark. Complainant simply
failed to take the necessary steps to ensure adequate protection of its
potential rights and cannot now attempt to invent them.
Diane Cabell, Panelist
National
Arbitration Forum
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