DECISION

 

Glenwood Springs Chamber Resort Association Inc. v. College Transportation Inc. dba Website For Sale

Claim Number: FA0108000098825

 

PARTIES

The Complainant is Glenwood Springs Chamber Resort Association, Inc., Glenwood Springs, CO (“Complainant”) represented by Alan M. Keeffe, of Bendelow Law Firm P.C..  The Respondent is College Transportation, Inc., Champaign, IL (“Respondent”) Eric Bakri Boustani, of Davis & Schroeder.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <glenwoodsprings.com>, registered with Tierranet, Inc..

 

PANEL

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

 

The Honorable Ralph Yachnin (Ret.), Mr. Neil Smith, Esq., and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 9, 2001; the Forum received a hard copy of the Complaint on August 13, 2001.

 

On August 9, 2001, Tierranet, Inc. confirmed by e-mail to the Forum that the domain name <glenwoodsprings.com> is registered with Tierranet, Inc. and that the Respondent is the current registrant of the name.  Tierranet, Inc. has verified that Respondent is bound by the Tierranet, 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 August 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 6, 2001 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@glenwoodsprings.com by e-mail.

 

A timely response was received and determined to be complete on September 13, 2001.

 

On September 20, 2001, a timely additional submission was received from Complainant and considered by the Panel.

 

However, Respondent’s Additional Submission was received after the required deadline for submissions, pursuant to Supplemental Rule 7, and without the required fee.  The Complainant submitted a Second Additional Submission that also was received after the required deadline and without the required fee.  The Panel declines to consider Respondent’s Additional Submission and Complainant’s Second Additional Submission because these submissions were untimely and submitted without the required fee.

 

On October 15, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Ralph Yachnin (Ret.), Mr. Neil Smith, Esq., and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Glenwood Springs Chamber Resort Association, Inc., contends that it has common law rights and registered state trademark rights in the name “Glenwood Springs,” through its long and extensive use in commerce, to promote tourism in the town of Glenwood Springs, Colorado, U.S.A.   Complainant contends that the disputed domain name <glenwoodsprings.com>  is identical to its “Glenwood Springs” mark.  Complainant contends that Respondent has no rights or legitimate interests in the domain name and that Respondent registered and uses the domain name in bad faith.

 

B. Respondent

Respondent, College Transportation Inc., d/b/a Website for Sale, registers and sells generic domain names.  Respondent contends that it is the legitimate owner of <glenwoodsprings.com> because:  (1) no trademark rights can be established in such domain name by Complainant; (2) Respondent has a legitimate interest in the domain name; and (3) that Respondent did not register and use the domain name in bad faith.  Respondent also contends that geographical indicators are not within the scope of the Policy.  Respondent claims that the Policy does not prohibit the offering for sale of a domain name consisting of a generic word that does not operate as a source identifier.  Respondent also alleges that Complainant is engaged in reverse domain name hijacking.

 

C. Additional Submissions

Complainant, in its Additional Submission, contends that its mark has acquired secondary meaning through its use of the “Glenwood Springs” mark for over 100 years, in various publications and marketing information.  Complainant includes survey results supporting secondary meaning in the “Glenwood Springs” mark.  Complainant further contends that third party use of the “Glenwood Springs” mark does not defeat Complainant’s enforceable rights in the mark.

 

FINDINGS

 

1.         Glenwood Springs, Colorado is primarily a resort town, located in the mountains on the western slope of Colorado. Nearby are several ski areas, including Sunlight Mountain Resort. The city claims to host the largest natural hot springs and spa in the State of Colorado and the “world’s largest hot springs pool” as well as the Glenwood Caverns. The Roaring Fork River joins the Colorado River in the heart of the City, providing fishing, white water rafting and other recreational activities. The City’s economy is fueled primarily by tourism. Consequently, much of the economic base consists of hotels, restaurants, campgrounds, fly-fishing and white water rafting guides and other hospitality and tourism based services.

 

2.         Complainant, Glenwood Springs Chamber Resort Association, Inc. asserts it is a Colorado non-profit corporation formed to act as the chamber of commerce for the City of Glenwood Springs, Colorado. The Chamber has been active in Glenwood Springs since at least the 1920’s, and the Chamber was officially incorporated by the State of Colorado in 1953.  On November 22, 1988, merger documents were signed between the Glenwood Springs Chamber of Commerce and Glenwood Springs Central Reservations to form the Glenwood Springs Chamber Resort Association, and the new organization also absorbed functions of the City’s Tourism Board.  Articles of Incorporation for the Chamber Resort Association were filed in the State of Colorado. The Chamber is the only recognized chamber of commerce for Glenwood Springs, Colorado.

 

3.         On April 24, 1989, the Chamber entered into a Tourism Promotion Contract with the City of Glenwood Springs, in which the Chamber has been engaged as the exclusive agent to plan and implement tourism marketing for the City of Glenwood Springs, Colorado. The costs of planning and implementing the tourism marketing plan are funded primarily by an accommodations tax, which is collected by of the City of Glenwood Springs. As part of its contractual obligations, the Chamber is responsible for tourism advertising, written and graphic materials, cooperative and matching promotional programs, gathering and disseminating information in the tourist industries and attractions of Glenwood Springs, attracting conferences, conventions, and meetings of a commercial, cultural, educational, or social nature to the Glenwood Springs area.

 

4.         Periodically during its history and exclusively since the Spring of 1995, the Chamber began printing a visitor’s guide about Glenwood Springs, using the name “Glenwood Springs” as the name of the publication. The publication is published annually. In publishing the guide, the term “Glenwood Springs” was used in interstate commerce and the Chamber developed a mark in the words with stylized lettering “Glenwood Springs.” In the year 2000, the Chamber began adding the word “Colorado” to the caption of the guide. Finally, in 2001, the stylized lettering of the word “springs” was slightly modified. In August, 2001, the Chamber filed for a Colorado trademark registration, for the name of its publication “Glenwood Springs Colorado”.  On the trademark application, the Chamber claimed the date of first use as April of 1995.

 

5.         In October of 1999, the Chamber registered the domain name of <glenwoodspringscolorado.com>.  On June 11, 1999, the Chamber registered the domain name <glenwoodchamber.com>.  On December 6, 1999, the Chamber registered <glenwoodsprings.net>, which it uses to host its email addresses.  The Chamber claims it has spent approximately $70,000.00 in the past three years on maintaining its Internet presence under these domain names.  Its current websites under these domain names  receive anywhere from 650,000 to a million hits per month.  Complainant serves more than 680 member businesses and has an annual marketing budget of $440,000.00.  Its publication titled “Glenwood Springs” is circulated throughout the USA by mail upon request of consumers and is distributed extensively throughout the Glenwood Springs area, including New Castle and Carbondale Colorado. 

 

6.         Complainant claims to have circulated consumer Surveys from September 7^th through September 19^th, 2001 and received 22 responses.  All 22 responses state that the consumers identify the mark with the visitors guide or the Internet services provided by the Complainant.  

 

7.         Complainant also circulated an advertising survey to those businesses that advertise in Complainant’s visitors guide.  Complainant claims to have received 15 responses identifying “Glenwood Springs” as a mark of the Complainant and not of any other company or organization.

 

8.         According to Respondent, there is massive third party usage of the name “Glenwood Springs.”  For example, a search of AltaVista, a popular Internet search engine, for "Glenwood Springs" returns 18,705 hits. There are some 44 domain names which incorporate the name “Glenwood Springs” from a variety of sources, all but 3 of which are not related to Complainant. There are many other uses of the name “Glenwood Springs,” including a residential subdivision in Wisconsin, a missionary in Georgia, a town and fish hatchery on Orcas Island. 

 

9.         Respondent registered the domain name <glenwoodsprings.com> in 1995. Respondent has never operated a website using the disputed domain name. When a user logs onto the disputed domain name, the user is transferred to <inert.com >. That website states that the disputed domain name is for sale and directs interested parties to mail a bid to “Web Site For Sale.” The site also lists numerous other domain names that are for sale.   Respondent registered the domain name <glenwoodsprings.com>  and offered it for sale.

 

10.       Complainant offered Respondent $1,500.00 for the transfer of the domain name. Respondent published the offered price on Respondent’s website at <intert.com> as the highest price bid quoted for the domain name.

 

 

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 To a Trademark or Servicemark

There is no dispute that “Glenwood Springs” is the name of the city of Glenwood Springs.  A geographically descriptive term is entitled to protection under the Policy if it can be demonstrated that the mark holds a secondary meaning and thus functions as a trademark.  See Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that “The fact that other geographical locations in the United States and other countries may share the name "Cape Harbor" or "Cape Harbour" does not preclude that name from becoming associated with a particular provider of products or services in a limited geographic area”).  Geographically descriptive terms can be protected as trademarks only upon proof that through usage, they have become distinctive. Clifton Park Center v. ICOM, AF0794 (eResolution ).

 

While it is clear that the domain name registered by Respondent, <glenwoodsprings.com>, is similar to Complainant’s “Glenwood Springs” claimed mark, Complainant must show more than that the mark and contested domain names are identical or confusingly similar to satisfy the ICANN Policy.

 

The Policy requires that the Complainant first establish that it has protectable rights in the trademark “Glenwood Springs”.  15 USC Section 1052(e)(2), which is the law of the United States where both parties here reside, mandates that a geographically descriptive name is not eligible for trademark protection without proof that, through usage, it has become a unique source identifier.  This trademark principle has deep historical roots.

 

As early as 1872, the Supreme Court of the United States explained the rationale for this principle as follows:

[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))

A leading trademark commentator elaborated on this principle:  “descriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods.  Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain.”  McCarthy on Trademarks and Unfair Competition, §14:1 at 14-4 (4th ed. 2001).  Here, Complainant has failed to prove that the “Glenwood Springs” mark has acquired secondary meaning such that it may claim the exclusive right to use “Glenwood Springs” as a trademark.

 

The evidence of record is simply not sufficient to persuade the Panel that the mark “Glenwood Springs” performs the function of a trademark as required for purposes of the Policy.  The evidence does not show that the mark distinguishes the goods or services of the Complainant from the goods or services of any other person.  Indeed, there are many organizations, both commercial and non-commercial, some referenced on Complainant’s own website, providing goods or services in relation to the City of Glenwood Springs.

 

Each of these organizations (and presumably, there are others) has a bona fide interest in freely using the name “Glenwood Springs" in relation to its goods or services.  This Panel finds that the mark is descriptive of a geographical location, the City of Glenwood Springs.  Under the circumstances, the unregistered mark is unable to, and does not, perform the function of a trademark.  In other words, it does not serve as a unique source identifier and therefore does not qualify as a trademark in which Complainant has rights under the Policy.

 

Moreover, we are persuaded by the reasoning of the Panel in Brisbane City Council v. Warren Boulton Consulting PTY LTD, D2001-0047 (WIPO May 7, 2001), and the Panel in City of Salinas v. Baughn, FA 97076 (Nat Arb. Forum June 4, 2001), with respect to the limited applicability of the Policy to geographically descriptive marks.  As the learned Panels noted in both City of Salinas and Brisbane City, the Interim Report of the Second WIPO Internet Domain Name Process (the “Interim Report”), issued on April 12, 2001, contained a detailed discussion pertaining to “Geographical Indications, Indications of Source and other Geographical Terms,” and suggest that such names of geographical places are not within the Policy.  While this discussion is not determinative of our decision here, it does inform our basic belief that the names of geographical locations, such as the City of Salinas, have a limited capacity to perform the function of a trademark as required by the Policy.  See, e.g., Interim Report at paragraph 277 (stating that “the protection of place names within the gTLDs is a novel concept”); see also, Interim Report at paragraph 282 (stating that to provide such protection, it would be necessary to revise the Policy by way of “the incorporation into it of an additional cause of action”).  See Brisbane City and City of Salinas, supra.  As further noted in Brisbane City Council v. Warren Bottom Consulting Pty Ltd., No. D2001‑0047 (WIPO May 7, 2001), “The assumption which underlies this discussion in the Interim Report appears to be that, as a general rule, place names per se are not trademarks for the purposes of the Uniform Policy.”

 

Complainant does not have a protectable trademark or service mark interest in the geographically descriptive designation “Glenwood Springs.”   Complainant has failed to show that its alleged “Glenwood Springs” mark has acquired secondary meaning.  See City of Salinas v. Baughn, FA 97076 (Nat. Arb. Forum June 4, 2001) (finding that “[t]he evidence of record is simply not sufficient to persuade the Panel that the unregistered mark CITY OF SALINAS performs the function of a trademark as required for purposes of the Policy. The evidence does not show that the mark distinguishes the goods or services of the Complainant, City of Salinas, from the goods or services of any other person. Indeed, there are many organizations, both commercial and non-commercial, providing goods or services in relation to the City of Salinas.”); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”).

 

The use by Complainant of the term “Glenwood Springs” identifies the City itself and does not operate as a source identifier for Complainant. To create trademark rights a designation must identify one source and distinguish it from other sources.   If the alleged mark does not do this, then it is not protectable as a trademark, service mark or any similar exclusive right. Clifton Park Center v. ICOM, supra. The mark is descriptive of a geographical location, Glenwood Springs.  The mark does not serve as a unique source identifier and therefore does not qualify as a trademark in which Complainant has rights under the Policy. City of Salinas v. Baughn, supra.  Because the domain name <glenwoodsprings.com> is a geographical indication and not a trademark, its registration and listing for sale by Respondent is not actionable under the Policy.

 

As Complainant has failed to establish a protectable interest in the geographically descriptive Glenwood Springs name, it is unnecessary for the Panel to address the second and third elements.

 

Reverse Domain Name Hijacking

Respondent alleges that Complainant is engaged in reverse domain name hijacking.  The Complainant has not engaged in reverse domain name hijacking. 

 

DECISION

Based upon the above findings and conclusions, we find in favor of the Respondent.  Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Denied.  The Respondent shall not be required to transfer to the Complainant the domain name <glenwoodsprings.com>.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Chair

 

Dated: October 31, 2001