Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant: Digital City, Inc, 22000 AOL Way, Dulles, Virginia 20166, United States of America.

The Respondent: Smalldomain, Domain for Sale, 11, Mill Lane, Sandford, Crediton, Devon, EX17 4NP United Kingdom. Administrative contact for the Domain Name: Peter J Merrett.

The domain name in issue is "digitalcitymap.com", registered by Easyspace Ltd, of Rosemount House, Rosemount Avenue, West Byfleet, Surrey KT14 6LB, United Kingdom.

The domain name was registered on July 29, 2000.

(1) The Complaint in Case D2000-1283 was filed on September 28, 2000.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- A Response to the Complaint was filed in due time; and that

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is: November 8, 2000.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

The Complainant, Digital City, Inc, owns and operates a web-based consumer portal called "digitalcity" found at "digitalcity.com", a second level domain name ("SLD") registered to the Complainant. This portal provides information about numerous cities in the United States, giving access to information such as local weather, shopping, entertainment, sports, news, visitor’s guides, and so forth. The Complainant owns a number of registrations for the word mark "DIGITAL CITY" in relation to a number of classes ("the DIGITAL CITY marks"), in the United States. These marks are No 2307655 in Class 38, and No 2307657 in Class 42. A number of other marks are also claimed by the Complainant, but for various reasons (explained below) are not relevant to this decision.

The Complainant’s portal is extensively branded with the DIGITAL CITY marks, and the marks are clearly associated with the "digitalcity.com" domain name. The Complainant registered the DIGITAL CITY marks in 1995, and has been using them in connection with an online service since that time. It has a large user base with approximately 5 million hits per month, and it has expended significant advertising and promotional costs in relation to its site.

The Respondent is a land surveyor, based in England. He registered a number of SLDs, including the domain name in issue in this decision, "digitalcitymap.com".

The Complainant asserts:

- The Respondent’s "digitalcitymap.com" domain name is confusingly similar to the Complainant’s DIGITAL CITY marks.

- The Respondent has no rights or legitimate interest in the "digitalcitymap.com" domain name.

- The Respondent registered the domain name and is using it in bad faith by (inter alia) its registration of the domain name under the address "Domain for Sale", and by its unsolicited offer to the Complainant to sell the domain name for an unspecified sum.

- And that accordingly the Panel should order that "digitalcitymap.com" be transferred to the Complainant.

The Respondent (in pertinent part) asserts:

- The Respondent’s "digitalcitymap.com" domain name is not confusingly similar to the Complainant’s DIGITAL CITY marks. The addition of the "map" word renders the name entirely different, and therefore not confusing. Further, there are a significant number of SLDs registered with "digitalcity" in the name, and no confusion has occurred in relation to these names. Further, the Respondent argues that "digital city" is a generic description, and therefore there can be no risk of confusion.

- The Respondent and Peter Merrett are essentially the same entity, and through Mr. Merrett’s occupation as a land surveyor, the Respondent has a legitimate interest in the "digitalcitymap.com" domain name. Further, the Respondent asserts that its claim to a legitimate interest is bolstered by evidence that Mr. Merrett is pursuing discussions with a mapping company in relation to the use of "digitalcitymap.com"

- The Respondent is not using "digitalcitymap.com" in bad faith, since no sum was suggested or fixed for the transfer of the domain name to the Complainant.

- And that accordingly the Panel should not order that "digitalcitymap.com" be transferred to the Complainant.

As is, by now, well known, Paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy ("the UDRP") requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The Respondent registered and is using the domain name in bad faith, in one of the senses of the term consistent with the guidelines set out in Paragraph 4.b. of the UDRP.

I shall deal with each element in turn.

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar

The first requirement of this element is established on showing rights in trademarks or service marks. The Complainant owns a number of registrations for the word mark "DIGITAL CITY" in relation to a number of classes, in the United States ("the DIGITAL CITY marks"). These marks are No 2307655 in Class 38, and No 2307657 in Class 42.

The Complainant claims ownership of a number of registrations for the word mark "DIGITAL CITY" in relation to a number of classes in the United States and the United Kingdom where the registration details for these marks show that America Online, Inc, and not the Complainant, is the registrant. These marks are as follows:

In the United States:

No 2307656 in Classes 35 and 42

In the United Kingdom:

No 2029996 in Classes 38 and 42,

The address of the Complainant is suggestive that the Complainant is owned by, or affiliated in some way with, America Online, and therefore the ownership of these additional marks may indeed reside (in some way) in the Complainant. I initially considered delaying this proceeding to seek new evidence in relation to these marks, however, for reasons explained below the ownership of these additional marks is not important for the purposes of this decision. I have, therefore, ignored the claims in relation to these marks. Further, the Complainant claims ownership of one registration in the United Kingdom in Classes 38 and 42 (No. 2030005) for a device mark depicting a stylized building. The registration details for this mark also shows that America Online, Inc, is the registrant. Apart from the ownership uncertainty, the device is not relevant to this decision, as it does not depict the term "digital city" in any way. This mark is also ignored for the purposes of this decision.

Nothing turns on the Complainant’s claims for the marks that I have ignored, since a single mark will be sufficient to ground the first requirement of this element, that the Complainant has rights in a trade or service mark. Indeed, a number of decisions have found that a formal trade or service mark registration is unnecessary, and that common law rights in names and other appellations may be sufficient (see for example Julia Fiona Roberts v Russell Boyd, D2000-0210; Jeanette Winterson v Mark Hogarth, D2000-0235). Since the Complainant has established that it holds registrations in the DIGITAL CITY marks and that it has a reputation in them, the first requirement of this element is made out.

The second requirement of this element is more troublesome. This requirement asks whether the Respondents domain is identical or confusingly similar to the marks of the Complainant.

The Complainant makes no claim as to identity between the domain name and its marks, but rather asserts that the domain name in issue is confusingly similar to the DIGITAL CITY marks. It provides no further argument or reason why this might be so, presumably leaving the similarity to speak for itself. Against this, the Respondent argues (1) The addition of the "map" word renders the name different, and not confusing; (2) there are a significant number of SLDs registered with "digitalcity" in the name, and no confusion has occurred in relation to these names; and (3) "digital city" is a generic term that is not associated in the consumers minds with the Complainant.

These three arguments have some merit, though they are not complete answers to the Complainant’s claim. Let me address arguments (2) and (3) first, before dealing with the more difficult first argument.

The Respondent’s second argument is prima facie relevant to this decision, but is eventually unpersuasive. The presence of other SLDs using the "digitalcity" expression does not, as an empirical matter, say much about whether "digitalcitymap.com" is confusingly similar. All of the other SLDs might be confusingly similar also – though of course I am making no conclusions about these marks, since they are not in issue in this matter. The Respondent provides no evidence that these other marks are not confusingly similar; it merely relies on the fact that there are many other SLDs with "digitalcity" in them. The Respondent’s second argument therefore does not establish that its registration for "digitalcitymap.com" is not confusingly similar to the Complainant’s marks.

The Respondent’s third argument, that "digital city" is a generic term, holds some force. The Respondent suggests that the fame of the Complainant does not extend outside its user base in the US, and that the term "digitalcity" is merely generic outside this group. The emphasis of the Respondent’s claim however, is not on the genericness of the expression "digitalcity", but rather that it is not well known outside the US. Unfortunately for the Respondent’s claim, it is not necessary to show that the Complainant’s mark is internationally famous. To so hold would be to provide the protection of the UDRP only to world famous marks, which is demonstrably not the intention behind the UDRP. It is necessary for the Complainant only to show rights in a mark in any jurisdiction, which the Complainant has satisfied here. So the argument, as structured by the Respondent, fails. There is, however, a way in which the generic character of the Complainant’s marks combined with the Respondent’s first claim leads to a different conclusion.

The Respondent’s first argument is that the addition of the "map" word renders the name different from the marks, and thereby not confusing. This argument would be stronger if the domain name in issue involved the Complainant’s marks with a prefix attached, rather than a suffix attached, to the Complainant’s marks. Confusion on the part of the consumer is more likely where she has already read and processed the initial expression "digitalcity", potentially associated it with the Complainant, and then confronted a new word added as a suffix. The implication would be that this is an addition to the earlier "digitalcity" expression, and therefore some confusion may occur. I decline to accept the implication in the Respondent’s argument however, that suffixes, in general, create a completely different term.

There are a number of other decisions within the UDRP process which have addressed the issue of whether a domain name, which comprises the Complainant’s mark together with a suffix, gives rise to confusing similarity. Though none of these "suffix cases" are binding in any way on this Panel, they provide an indication of an emerging consensus on this issue. The decisions fall mainly into two categories, an addition of a geographical suffix to a well-known domain name (see for example, Wal-Mart Stores, Inc. v Walmarket Canada, D2000-0150; Wal-Mart Stores, Inc. v Walsucks and Walmarket Puerto Rico, D2000-0477; AltaVista Company v S.M.A. Inc., D2000-0927) or the addition of "sucks" to a similarly well known name (see for example Dixons Group Plc v Purge I.T. and Purge I.T. Ltd, D2000-0584; Cabela’s Inc v Cupcake Patrol, FA0006000095080; Wal-Mart Stores, Inc v Walsucks and Walmarket Puerto Rico, D2000-0477).

The Complainant has typically prevailed both types of categories. Decisions in the former category have been disposed of generally on the clearly correct basis that the addition of a place name is not likely to alter the underlying mark (Wal-Mart Stores, Inc v Walsucks and Walmarket Puerto Rico, D2000-0477) and not likely to change the fact that consumers will be confused. Decisions in the second category have been decided for on the basis of similar reasoning, though this seems more open to dispute. There are a number of other decisions where there is neither a geographical nor derogatory addition (see for example Yahoo!, Inc. and Geocities v Cupcakes et al, D2000-0777; Yahoo!, Inc. v Cupcake Patrol et al, D2000-0928). These too have followed similar reasoning, though the finding of confusing similarity is largely based in these cases on evidence of demonstrated confusion amongst consumers.

The domain name which is the subject of this administrative decision does not fall into either the geographical or "sucks" category, but at first blush the same principle would appear to apply: the addition of a suffix does not alter the underlying mark and confusion will inevitably result. However there is an important distinction between this domain name and those other decisions, apart from the fact that here the suffix is not geographical or derogatory. It is here that the Complainant’s idea of ‘genericness’ comes into play. The other decisions dealt with extremely well known marks, which had a high degree of inherent or acquired distinctiveness: for example, Walmart, Standard Chartered, Dixons, Altavista, and Yahoo. They did not deal, as here, with marks which are the concatenation of two words which are fairly generic and which adopt and trade on the typical metaphors used for the web and the Internet: that cyberspace is a "place"; that we "inhabit" these electronic zones and spaces; that we can build communities, "cities" and "places" online; and so on.

The effect of strictly adopting the principle from the suffix cases would be to stop any other registrations of domain names which add a suffix to registered marks that are quite generic. It would provide the unfortunate result that the Complainant would essentially be given a monopoly on domain names that add words to the expression "digital city". As a matter of policy, this is undesirable and unacceptable. The scope of the concept of "confusing similarity" must take account of policies such as this. I decline therefore to adopt the broadest interpretation of the principle from the suffix cases, and instead conclude here that consumers are not likely to be confused where:

(1) A domain name comprises a mark and a suffix

(2) Where that mark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection, and

(3) Where the suffix (or the domain name as a whole) does not relate specifically to the business of the Complainant.

For all the promotion and advertising spent by the Complainant, the marks have not become so well known as to acquire the requisite degree of distinctiveness taking them out of their generic nature. Further, though the Complainant is in the business of providing city information it is not in the business of providing maps. Thus, I conclude that the domain name "digitalcitymap.com" is not confusingly similar to the DIGITAL CITY marks.

Critics of this conclusion will, no doubt, point to the Respondent’s registration of the domain name with the address of "Domain for Sale", and suggest that this is a relevant consideration in deciding this element. Indeed some previous decisions in the UDRP have used the Sleekcraft factors (AMF, Inc. v Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341 (9^th Cir. 1979) from US trademark law in deciding the issue of confusing similarity. One of the Sleekcraft factors is "defendant’s intent in selecting the mark", and this factor has been much relied on by Complainants in the suffix cases where there is evidence of bad faith. While this factor may be relevant in trademark decisions, I believe that it has limited (and dangerous) application in UDRP decision-making. Unlike trademark law, the UDRP has two specific elements which comprise elements that go to the Respondent’s intent – the requirement that a Respondent has a legitimate interest (from paragraph 4.a.(ii)), and the requirement that there is no bad faith (from paragraph 4.a.(iii)). To introduce a factor going to the Respondent’s intent into paragraph 4.a.(i) – the only element in the UDRP that is not focussed on the issue of intent – would mean that decisions would turn almost entirely on the Respondent’s intent in registering the domain name. This is, I think, undesirable and was not the intention in the creation of the UDRP. I specifically do not believe the Respondent’s actions in registering the domain under the address "Domain for Sale" (or its subsequent actions in attempting a sale) to be relevant to the issue of whether there is confusing similarity under paragraph 4.a.(i) of the UDRP.

Since I have decided that there is no confusing similarity in this case, I conclude that the Complainant has not satisfied paragraph 4.a.(i) of the UDRP.

The three elements of paragraph 4.a. of the UDRP are conjunctive, and therefore the Complainant’s inability to make out any one element will be sufficient to deny the remedy sought. Since I have decided that the first element is not made out, it is strictly unnecessary for me to make any decision about the Respondent’s interest in "digitalcitymap.com" or on its bad faith. However in the interests of completeness, I decide as follows in relation to the other two elements.

B. The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent’s assertions in relation to this element are somewhat sketchy and not particularly clearly articulated. Nor are they overwhelmingly strong. These two main claims are that it has rights or a legitimate interest in "digitalcitymap.com" through Mr. Merrett’s discussions with a Hong Kong mapping company in relation to its possible use in the supply of digital maps of cities, and through his occupation generally as a land surveyor.

The first claim is evidenced by a number of email exchanges with the Hong Kong company, which disclose discussions about Mr. Merrett engaging in digital mapping with the company. Occasionally, there is mention of the mapping of cities. However, at no point is there any suggestion that the domain name, "digitalcitymap.com", is to be used for this joint venture. The discussions appear to have taken place during the month May 2000, and the registration of "digitalcitymap.com" occurred on or about July 29, 2000. No evidence was presented that the Respondent followed up with the company after the registration of the domain name. Nor is there any evidence that the discussions continued after the flurry of exchanges in May. This claim has the unfortunate hallmarks of the abusive registrant, seeking to find an ex post facto justification for its actions. I conclude therefore that the Respondent’s claim is not credible, and that the discussions with the mapping company are not sufficient to establish rights or a legitimate interest in the name.

The Respondent’s second argument is related to the first, but is stronger for its generality and its absence of tenuous evidence. It is not hard to see how a registrant who is in the business of geophysical surveying might have rights or a legitimate interest in a domain name for "digitalcitymap.com". Paragraph 4.c. of the UDRP provides three circumstances that a Respondent can use to show rights or a legitimate interest, none of which apply here since they all presume the delegation and use, or preparations for use, of the domain name. But these three circumstances are not exclusive.

The absence of use on the part of the Respondent I do not take to be conclusive evidence that it does not have rights or a legitimate interest. However, the absence of use, coupled with the fact the domain name was registered with the address "Domain for Sale" is prima facie evidence of a lack of rights or a legitimate interest. At the time of registration the Respondent indicated that the name was for sale, thereby signaling that any interest it might have in the name was likely illegitimate. And its subsequent assertions to the contrary are not persuasive.

I am not indicating that the inclusion of the address "Domain for Sale" will inevitably lead to the conclusion that a Respondent has no legitimate interest or rights in the domain name. Speculation within open domain namespaces is perfectly permissible within the boundaries set by the UDRP. A speculator might register perfectly innocent names with the address "Domain for Sale" to indicate that it is happy to contemplate sale of the name at some point in the future. Within the trade mark system of countries, and within the UDRP, it is permissible to sell one’s legitimate interest to a mark or name, if another party with a legitimate interest is prepared to offer a price that is acceptable. I may have a legitimate interest in a domain name that utilizes my surname, and a corporation may subsequently wish to purchase this legitimately acquired domain name from me, for substantially more than my out-of-pocket expenses. This is not a problem with the UDRP; this is a feature of a market. In some sense it is true to say that all domain names are implicitly registered with the notation that the "name is for sale". Coca-Cola’s brand, marks and domain name are for sale at the right price; it is just that the price is so incalculably high that we assume that the brand is "not for sale".

Therefore the indication upon registration that a domain is for sale will not always signal a lack of legitimate interest. However, as in this case, the indication upon the moment of registration that the name is for sale, together with subsequent approaches to the Complainant, the absence of use, and the absence of a persuasive explanation for this lack of use leads me to conclude that the Respondent had no rights or legitimate interest in the domain name.

I conclude that the Complainant has satisfied paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith

As others have noted, there is some overlap in the analysis of this element with the analysis made for the second element. The salient evidence denying the Respondent’s legitimate interest is also evidence for the Respondent’s bad faith registration and use. Clearly the inclusion of the address "Domain for Sale" evidences a bad faith registration. The absence of use has on the part of the Respondent has, since the Telstra.org decision (Telstra Corporation Ltd v Nuclear Marshmallows, D2000-0003), been consistently been found not to frustrate the requirement of "bad faith registration and use". Further the Respondent offered, in an email dated July 8, 2000, to sell the domain name to the Complainant, evidencing an ongoing bad faith use. I therefore conclude that the Complainant’s claim in this respect is made out.

The Respondent’s argument against this conclusion is exceedingly weak: essentially it claims that, as no price was actually set for the transfer, it cannot be said to be trying to profit. This is a spurious claim in light of the above mentioned evidence. I conclude that the Respondent registered and is using the domain name in bad faith.

I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

The Complainant has failed to prove the element of paragraph 4.a.(i) of the Uniform Domain Name Dispute Resolution Policy, that the Respondent’s registration is identical or confusingly similar to the Complainant’s marks.

Pursuant to Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is denied.

The domain name "digitalcitymap.com" is to remain registered to the Respondent.

Dan Hunter
Presiding Panelist