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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CIMCities, LLC v. Atonce Americans Specialists
Case No. D2001-0449
1. The Parties
The Complainant is CIMCities, a Delaware limited liability company with its principal place of business at 530 Means Street, N.W., suite 200, Atlanta, Georgia 30318, U.S.A. The Complainant is represented in this proceeding by Mitchell H. Stabbe, Esq., Dow, Lohnes & Albertson, PLLC, 1200 New Hampshire Avenue, N.W., Suite 800, Washington, D.C. 20036-6802, U.S.A.
The Respondent is Atonce Americans Specialists, a business concern located at 8209 W. St. Bernard Hwy, Chalmette, Louisiana 70043, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <insideneworleans.net>.
The registrar for the disputed domain name is Network Solutions (NSI), Incorporated, 595 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on March 28, 2001. On April 3, 2001, the Center requested that the registrar NSI run a check to determine the registrant for the disputed domain name <insideneworleans.net>. On April 9, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, Atonce Americans Specialists.
On April 12, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on April 15, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on May 3, 2001, and the Center then appointed the Panel on May 10, 2001. The Panel finds the Center has abided by the Policy and the Rules in administering this Case.
This Decision is due by May 24, 2001.
4. Factual Background
The Complainant is a business that provides databases with information for web navigators seeking information on the City of New Orleans: for example, classified advertising, automobile and real estate listings, local job listings, movie listings and an events calendar. The Complainant does the same thing for other U.S. cities and regions using different domain names. The Complainant has been operating its business since 1998.
The Respondent is a business in Louisiana that offers a variety of goods and services, including laundry equipment, website creation and domain names for sale. The Respondent registered the disputed domain name on June 11, 1999.
The Complainant wrote to the Respondent on January 2, 2001, and January 22, 2001, and alleged trademark infringement of its "Inside New Orleans" mark (Complaint Annex H). The Complainant demanded the Respondent transfer the disputed domain name, <insideneworleans.net>, to the Complainant. The Respondent never replied to the Complainant, and the Complainant now seeks transfer of the disputed domain name in this proceeding.
5. The Parties' Contentions
- Complainant has invested substantial resources to promote its INSIDE NEW ORLEANS mark and services both regionally and nationally. As a result, Complainant has developed valuable goodwill in its INSIDE NEW ORLEANS mark, which is associated exclusively with Complainant CIMCITIES and/or its affiliated entities.
- Complainant's "inside" marks are famous and are an indication of high quality and of origin exclusively with the Complainant.
- Respondent is not a licensee of Complainant, nor is it authorized to use Complainant's INSIDE NEW ORLEANS mark.
- Respondent is the registrant of numerous other domain names that infringe others' trademarks.
- Respondent's <insideneworleans.net> domain name currently resolves to a site which displays a list of hyperlinks, most of which resolve to web pages selling or containing advertisements for domain names owned by Respondent and various other services, none of which has anything to do with New Orleans.
- Respondent's disclaimer of affiliation with the Complainant at the disputed domain name website is inadequate to avoid initial public confusion and was added only on March 6, 2001.
- Respondent's website at the disputed domain name provides a link to another of the Respondent's domain name websites, <storefrontdomains.com>. Here the disputed domain name was listed for sale at an estimated worth of U.S.$378,999.
- The disputed domain name is identical to the Complainant's trademark: spaces and top level domain indicators are irrelevant for judging mark similarity.
- The Respondent has no legitimate rights or interests in the disputed domain name as it has never been authorized by the Complainant to use the domain name in any way. Nor has the Respondent ever made any bona fide use of the domain name.
- The Respondent registered and is using the disputed domain name in bad faith because it registered the domain name while aware of the Complainant's trademark rights. Also, the Respondent registered the domain name with the intention to divert the Complainant's customers. The Respondent is well aware that the Complainant's trademark is well known in the local New Orleans market.
- The Respondent also is in bad faith because it has engaged in a pattern of registering domain names that infringe others' trademarks. The Respondent intends to prevent the Complainant and others from utilizing their marks in domain names.
- The disputed domain name should be transferred to the Complainant.
- The disputed domain name <insideneworleans.net> was purchased in good faith and has been operated in good faith.
- The domain name was not purchased for sale, and "its sole purpose was to be a URL that our company can use to base its operations, and present its wares, and possibly host an intranet for inter-location communications, once multiple branch offices were established." (Response p. 1)
- The Complainant is wrong when it alleges the Respondent posted its disclaimer on the disputed domain name website in early March, 2001. The disclaimer has been in place since day one.
- The domain name was registered prior to the registration of the Complainant's trademark INSIDE NEW ORLEANS.
- The Respondent is not trying to profit from the advertising of the Complainant because the Complainant is seeking a national market whereas the Respondent is only interested in the local market. In any case, the Respondent's wares and services do not conflict with those of the Complainant.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <insideneworleans.net> transferred, the Complainant must proved the following (the Policy 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The disputed domain name is <insideneworleans.net>. The Complainant has produced an exemplary copy of its service mark INSIDE NEW ORLEANS registered on the principal register of the United States Patent and Trademark Office no. 2,318,979 dated February 15, 2000, in int. class 42 for computer services in general and "interactive databases in the field of general and local, national and international news, information of interest to specific geographical areas and weather reporting." (Complaint Annex C) As Complainant contends, the disputed domain name is identical to the Complainant's service mark since it is by now axiomatic that adding or eliminating spaces and adding or varying top level domain indicators do not affect the quality of identicality or similarity.
The Respondent contends its disclaimer at the disputed domain name website should avoid confusion. The Panel disagrees. The Policy does not speak about disclaimers, but Rule 15a allows the Panel to be instructed by extra-Policy legal authority as necessary. The Panel finds a disclaimer should be given little weight at United States law when assessing mark similarity (both parties are located in the U.S.A.). The Panel therefore finds the Respondent's disclaimer at the domain name website does not save the domain name from being identical to the Complainant's mark under the Policy at 4a(i). (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", ICANN/WIPO Case No. D2000-0847, October 12, 2000; DFO, Inc. v. Christian Williams, ICANN/WIPO Case No. D2000-0181, May 14, 2000).
Legitimate Rights or Interests
The Complainant asserts the Respondent has not been authorized to use the disputed domain name "in any way, shape or form" (Complaint p. 12). The Complainant also asserts the Respondent has no legitimate rights or interests in the disputed domain name.
For its part, the Respondent asserts that it is using the disputed domain name "to base its operations, and present its wares, and possibly host an intranet for inter-location communications, once multiple branch offices were established." (Response p. 1). The Panel finds Respondent's explanations and plans for the disputed domain name vague and unsatisfactory. Respondent has produced no evidence that the disputed domain name was ever a part of its business or a product it offered.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant alleges the Respondent registered and used the disputed domain name in bad faith on several grounds under the Policy. First, according to the Complainant and a printout of the disputed domain name website dated March 5, 2001, (Complaint Annex G), the Respondent attempted to sell the disputed domain name for around U.S.$378,999. The Respondent says that this was merely a "valuation" of the disputed domain name and that it also offers "valuations" but does not set prices for the other domain names it has for sale (Response p. 1). The Panel finds the Respondent's explanation unconvincing. Even assuming arguendo that the Respondent's "valuation" of the disputed domain names was U.S.$378,999, the Panel believes it still is obvious that the Respondent was seeking far more than it paid for the disputed domain name, in violation of the Policy at 4b(i).
Second, the Complainant contends the Respondent has violated the Policy at 4b(ii) by registering a domain name to deprive the Complainant of reflecting its mark in the domain name and that the Respondent has engaged in a pattern of such conduct. The Panel does find that the Respondent registered the domain name in hopes that the Complainant or a comparable business would find it useful. And as for a pattern, the Complainant has shown that the Respondent has also registered and offered for sale such marks as: <murphyoil.net>, <alphafitness.net> and <popadent.com> (Complaint Annex E).
Finally, the Panel also agrees with the Complainant that the Respondent registered and was using the disputed domain name in bad faith in violation of the Policy at 4b(iv). The Respondent registered the disputed domain name well aware of Complainant’s service mark rights and good will in the name. Respondent's location in Louisiana, the state whose largest city is New Orleans, makes it almost a certainty that the Respondent had this knowledge at the time of registration. The Respondent apparently reasoned that it could make multiple uses of the disputed domain name based on the Complainant's mark: sell it to Complainant or another party, or use it to increase the web traffic to Respondent's other sites and increase Respondent's overall business.
The Panel finds the Respondent registered and was using the domain name in bad faith.
The Complainant has proved Respondent registered a domain name identical to the Complainant's valid service mark, that the Respondent has no legitimate rights or interests in the domain name, and that the Respondent registered and was using the domain name in bad faith. Pursuant to ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the disputed domain name <insideneworleans.net> be transferred from the Respondent, Atonce Americans Specialists, to the Complainant, CIMCITIES, LLC.
Dennis A. Foster
Dated: May 24, 2001