DECISION

 

City of Dearborn v. Dan Mekled d/b/a ID Solutions

Claim Number: FA0108000099602

 

PARTIES

Complainant is City of Dearborn, Dearborn, MI (“Complainant”) represented by Anessa Owen Kramer, of Brooks & Kushman P.C.  Respondent is Dan Mekled d/b/a ID Solutions, Dearborn, MI (“Respondent”) represented by John Berryhill, of Dann, Dorfman, Herrell & Skillman P.C.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cityofdearborn.com>, registered with Internet Domain Registrars.

 

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.

 

Professor Jeffrey Samuels, Professor David Sorkin and R. Glen Ayers served as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 29, 2001; the Forum received a hard copy of the Complaint on September 4, 2001.

 

On August 31, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name <cityofdearborn.com> is registered with Internet Domain Registrars and that the Respondent is the current registrant of the name.  Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars 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 September 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 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@cityofdearborn.com by e-mail.

 

A timely response was received and determined to be complete on October 15, 2001.

 

Complainant filed an Additional Submission on approximately October 22, 200l; Respondent filed an immediate objection to the submission, but did not pay the additional fees required under Forum Supplemental Rule 7.  Because the supplemental pleading filed by Respondent was more in the form of an objection to consideration of the Complainant’s Additional Submission, the Panel could consider the Respondent’s objection, notwithstanding the failure to pay the fees required.  The Panel does not need to consider Respondent’s objection in the context of its decision.

 

On October 30, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed R. Glen Ayers (Chair), Prof. Jeffrey Samuels, and Prof. David Sorkin served as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, the City of Dearborn, Michigan, alleges that it holds common law trade mark rights in the name “City of Dearborn.”  Respondent has registered a domain name, <cityofdearborn.com>.  Complainant has registered <cityofdearborn.org> and <cityofdearborn.net>.  Complainant argues that the domain name is identical to its common law mark.

 

In attempting to show the existence of a common law mark, the City of Dearborn states the history of the city and its name and recites that the City has used the name since 1929. It provides services to its residents under that name.  It operates a store by that name where souvenirs are sold bearing the name “City of Dearborn.”  It has registered the two domain names, in “.net” and “.org”. 

 

Given the widespread use of the name to identify goods and services, Complainant asserts that the name has acquired a secondary meaning.

 

Complainant goes on to assert that no one else uses the name and that Respondent has made no use of the name.

 

When the City found out that the “.com” name had been registered, it requested transfer from the Respondent, who demanded $19,000 for the name.  Complainant asserts that Respondent’s bad faith is shown by the simple fact that it registered the name with the obvious intent to resell it to the rightful owner of the mark.

 

B. Respondent

Respondent’s reply points out that the existence of a common law mark turns upon existence of an acquired secondary meaning.  Respondent points out that there is no evidence presented of any such secondary meaning.  Respondent goes on to point out that the City does not use the term as a mark or service mark -- its police cruisers are identified as belonging to “Dearborn”, as are its fire engines.  Even its welcome sign says “Dearborn”, not “City of Dearborn”.  Respondent provides pictures to prove its point.

 

Respondent alleges that the name is a mere geographical designation, not a common law mark.  The Response cites a number of cases directly on point.

 

Respondent argues that it has a legitimate interest both in registering the domain name and then warehousing the name for later use or development.  Respondent alleges, absent a trademark, that “a purely speculative interest in a domain name alone is not illegitimate.”

 

C. Additional Submissions

Complaint filed an additional submission containing further allegations and arguments concerning secondary meaning.  Complainant also further addressed the issues of rights in the name and bad faith.

 

In its additional response or objection, Respondent complains that the City slipped in a “last word” pleading to which it had no opportunity to respond under the version of the Rules in effect when the Complaint was filed.

 

The Panel notes with approval, effective after the Complaint in this proceeding was submitted, that the National Arbitration Forum modified its Supplemental Rules to avoid instances where, as here, a complainant waits until the last moment to file an additional submission, thereby precluding a response.

 

FINDINGS

The Panel unanimously finds that the evidence of the existence of a common law mark is not sufficient.  The City of Dearborn is a place.  There is not much evidence that the name has acquired any secondary meaning.

 

As pointed out in the recent Forum decision, Glenwood Springs Chamber Resort Ass’n, Inc. v. College Transportation, Inc., FA 98825 (Nat. Arb. Forum, Oct. 31, 2001):

 

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.

 

That evidence has simply not been provided by the City of Dearborn.  The name is a geographical designation, not “a unique source identifier ...”  Id.

 

We agree with the panels who have addressed this issue in the reported decisions.  Again, to quote the panel in Glenwood Springs:

 

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.”

 

Because Complainant has submitted insufficient evidence to allow the Panel to find that “City of Dearborn” is a common law mark, the relief requested must be denied.

 

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

The City of Dearborn has not demonstrated that it owns a mark, at common law or otherwise.  Therefore, the domain name is not identical or confusingly similar.

 

Rights or Legitimate Interests

No findings are necessary, Complainant having failed to establish the existence of a mark.

 

Registration and Use in Bad Faith

No findings are necessary, Complainant having failed to establish the existence of a mark.

 

DECISION

The relief requested is denied.

 

 

R. Glen Ayers (Chair), Prof. Jeffrey Samuels, and Prof. David Sorkin, Panelists

 

Dated: November 12, 2001