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John Rush & Annette Witzel v. Oregon CityLink [2000] GENDND 1036 (7 September 2000)

National Arbitration Forum

The Complainant is John Rush, Gold Beach, OR, USA ("Complainant"). The Respondent is Oregon CityLink, Angeles City, Philippines, ("Respondent").

The domain name at issue is "GOLDBEACH.COM", registered with Network Solutions Inc. ("SI").

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/31/2000; The Forum received a hard copy of the Complaint on 08/01/2000.

On 08/01/2000, SI confirmed by e-mail to The Forum that thedomain name "GOLDBEACH.COM" is registered with SI and that the Respondent is the current registrant of the name. SI has verified that Respondent is bound by the Network Solutions Service Agreem ent Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On 08/10/2000, a Notification of Complaint and Commencementof Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/30/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e- mail, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@goldbeach.com <mailto:postmaster@goldbeach.com> .

On August 24, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member panel. The Forum appointed Judge Ralph Yachnin, as Panelist.

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

Complainants represent the city and community of Gold Beach, Oregon, and seek to obtain the Respondent's domain name in issue "GOLDBEACH .COM" for the purposes of advertising the City and community. They already have the site "Goldbeach.net" but co ntend that it bears a disadvantage in that people think of web sites as "dot.com," and when wanting to go to Respondent's site, go instead to Complainants' site at "GOLDBEACH.COM." The Complainant's would put on the sought after web site what it presently has on its own site "Goldbeach.net."

The domain names are identical or confusingly similar to a trademark or service mark in which the complainant have rights. The Complainant has rights to the name Gold Beach as it is their home town.

When one reaches the Respondent's web site, it contains pornographic links, instead of the community and tourist information for Gold Beach, Oregon, and the City relies heavily on tourism. The City has rights to the name Gold Beach as it is their home town.

The Respondent registered the domain name and used it in bad faith.

When "GOLDBEACH.COM" is pulled up, first two pictures of young women with skimpy bathing suits appears, then an announcement appears that this and other domain names are for sale, some being other city names, and offering them for a significant profit.

Complainants' sought the price of the domain name in issue, and was told $3,500.00, and later $5,000.00. According to Paragraph 4(a)(iii) Uniform Domain Name Dispute resolution Policy (UDRP) Respondent is in the business of selling names at a significa nt profit. The definition of "Use In Bad Faith" is reselling domain names with intent for commercial and financial gain.

The Respondent should be considered to have no rights or legitimate interest in the domain name:

Since the Respondent is in the domain name reselling business he should not be allowed to retain rights in "GOLDBEACH.COM."

Respondent is unfamiliar with Gold Beach, Oregon, has no business by that name, there is no Gold Beach in the Philippines where Respondent resides, nor in Beijing, China where he claims his business is. Hence, Respondent's purpose in registering "GOLDB EACH.COM" is to resell it to someone in Gold Beach, Oregon, for a profit.

Complainant is the legal owner and registrant of the names Gold Beach, Goldbeach and Gold Beach, Oregon with RealNames Corporation.

Respondent is in violation of the Anticybersquatting Consumer Protection Act.

Complainants' contend that Respondent is violating the ICANN policy by a bad faith registration of a domain name that matches the Complainant's trademark in order to sell the names. However, the Complainants do not have a trademark in the Gold Beac h name for under 15 United States Code Section 1052(e)(2) geographically descriptive names are not eligible for registration and protection as trademarks. Hence, Complainants' claim is not an eligible dispute under UDRP, as they have no cognizable tradema rk rights.

Complainants' only claim to "GOLDBEACH.COM" is they live in the town and represent an entity which cannot claim control of the Gold Beach name by statute, and that they paid RealNames, a private company to reserve the keywords that match the Gold Beach name in the company's indexing system. Even if RealNames registration gave Complainants' rights, the registration was not created until April 1997, whereas Respondent's domain name "GOLDBEACH.COM" was registered in May, 1996.

Complainants' claim that Respondent is in violation of the U.S. Anticybersquatting Consumer Protection Act is irrelevant in a UDRP arbitration. But if it is relevant, then unlike a "cybersquatter," Respondent has not registered a trademark holder's nam e in an attempt to extort money from him by attempting to sell the domain name to the trademark holder. Respondent has merely registered common words and phrases that he believes may have value in an attempt to maximize that value. There is nothing improp er of unlawful in doing so.

Complainants' claim Respondent's attempts to resell the domain name for a profit amounts to "Use in Bad Faith." Before bad faith can found, UDRP, Section 4(a)(iii) requires both a registration in bad faith and a use in bad faith.

ICANN UDRP defines elements indicative of bad faith, but none of these apply, for Respondent has not acquired the domain primarily for the purpose of selling it to the Complainant. Respondent never directly solicited Complainants to purchase the domain name.

Respondent did not register the domain name to prevent the owner of the trademark from reflecting the mark in the domain name for Complainants' never could have a trademark in the subject name.

Respondent has no intention of creating confusion between himself and the Complainants' as the clear indication is that the Respondent's domain name is for sale and that it emanates from Beijing, China, not from a small town in Oregon.

The Complainants' are representatives of the City of Gold Beach, Oregon, and seek the domain name so that others can see the advantage in visiting the city. Thus they registered "Goldbeach.net." However, In May 1996, Respondent registered the domai n name: "GOLDBEACH.COM," which was well before the City of Gold Beach registered its domain name "Goldbeach.net," almost a year later in April, 1997.

Although the Complainants' claim they have a right to the name Gold Beach, they never acquired a trademark to that name for such geographically descriptive names are not eligible for registration as a trademark.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be canceled 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.

There is no doubt that the Respondent's domain name "GOLDBEACH.COM" is identical or confusingly similar to the name of the Complainant's town "Gold Beach." However, just being identical or confusingly similar is not sufficient to satisfy ICANN rule s. The policy requires that the Complainants' establish that the domain name is identical or confusingly similar to Complainants' trademark or service mark. This the Complainants' cannot do for the Complainants' had no rights of trademark or service mark in the name Gold Beach. 15 USC Section 1052(e)(2) mandates that geographically descriptive names are not eligible for trademark protection. Hence the Complainants' could not be deemed identical or confusingly similar under ICANN rules.

Pursuant to UDRP the Complainants' are required to prove each of the three elements to make out a prima facie case. The fact that the very first element has not been established, obviates the necessity of deciding whether the remaining two components h ave been established.

The Panelist has received further statements from both the Complainants' and the Respondent's which were not submitted in accordance with the rules. An examination of the submissions failed to reveal any exceptional circumstances as to why the rules sh ould be waived, and accordingly they were not. The submissions were not taken into consideration.

The Undersigned determines that Complainant’s have failed to prevail in its claim against the Respondent. It is further determined that the Respondent is rightfully entitled to be listed with Network Solutions as the Registrant of the Domain Name G oldbeach.com.

Ralph Yachnin

Justice, N.Y.S. Supreme Court (Ret)

Dated: September 7, 2000