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Pueblo International v. Pueblo On-Line [2000] GENDND 955 (24 August 2000)

National Arbitration Forum

DECISION

Pueblo International, Inc. v. Pueblo On-Line

Claim Number: FA0007000095250

PARTIES

The Complainant is Pueblo International, Inc., San Juan, Puerto Rico ("Complainant"). The Respondent is Pueblo On-Line, Pueblo, CO, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "PUEBLO.ORG," registered with Network Solutions Inc. ("NSI").

PANELIST(s)

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 Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/18/2000; The Forum received a hard copy of the Complaint on 07/19/2000.

On 07/19/2000 confirmed by e-mail to The Forum that the domain name "PUEBLO.ORG" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").

On 07/20/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/09/2000 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.

On August 10, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. The domain name "PUEBLO.ORG" is identical to the service mark of Complainant. It has used the mark in commerce since at least 1955, and has spent annually millions of dollars in advertising its fifty supermarkets and its products.

2. Respondent has no right or legitimate interest in the domain name evidenced by its failure to respond to Complainant’s inquiries. Moreover, Respondent is not making a bonafide offer of goods and services. In addition, Respondent is not commonly known by the domain name. Finally, Respondent is not making a legitimate noncommercial use of the domain nor does it fall within the fair use exception.

3. Respondent has registered and used the domain name in bad faith evidenced by its failure to respond to Complainant’s inquiries; failure to ensure it is not infringing on Complainant’s mark; failure to use the domain name more than four years; and failure to fall within the "fair use" exception.

B. Respondent

1. Respondent does not contend that the domain name and Complainant’s service mark are not identical.

2. Nevertheless, Respondent has registered and used the domain name before Complainant registered its service mark with the United State Patent and Trademark Office. Respondent, accordingly, does have a right and legitimate interest in the domain name, which is an appropriate name for its website functioning as a guide for the City of Pueblo, Colorado.

3. Respondent did not register nor is it using the domain name in bad faith.

FINDINGS

1. Respondent registered the domain name "PUEBLO.ORG" with NSI on September 16, 1995.
2. Complainant registered the service mark "PUEBLO" on September 3, 1996, a later date.

1. Complainant has over fifty supermarkets and also uses its mark for marketing many products, including the nationwide sale of PUEBLO private label food products. It spends annually millions of dollars in advertising, and has over $650 million in sales each year.
2. Respondent has created and maintains a website guide for the City of Pueblo, Colorado, which lists, inter alia, museums, artisans, theaters, charities, recreational areas, sports, cultural events, etc.
3. Respondent has for almost five years used the domain name "PUEBLO.ORG" as a service for tourists and residents.

DISCUSSION

Paragraph 4(a) of the ICANN 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.

The Panelist does not understand, nor is he willing to accept, Respondent’s concession that its domain name is identical to Complainant’s service mark, for it is not when appropriate domain names are considered. This is because a domain name combination must include a top-level domain which can be "com.," "net.," "org.," "gov.," or "edu.," among others. The combination also must include a second-level domain, which can be any word not already reserved in combination with the top-level domain. [See, Avery Dennison Corporation v. Jerry Sumpton (9^th Cir. 1999) [1999] USCA9 436; 189 F.3d 868, 871.

The top-level domain "org" customarily is in usage by non-profit or "miscellaneous" entities and not by a supermarket chain such as Complainant’s.

Professor McCarthy teaches us in 4 McCarthy (4^th ed. 1996) Trademarks and Unfair Competition, §25:72.1, as follows:

The 1997 IAHC (Internet International Ad Hoc Committee) recommended the adoption worldwide of seven new generic top level domains (gTLDs) in addition to existing ones:

• .firm (for companies)
• .shop (goods for sale)
• .web (world wide web activities)
• .arts (culture)
• .rec (recreation)
• .info (information)
• .nom (individuals’ web sites).

This new agreement is called the Generic Top Level Domain Memorandum of Understanding (gTLD-MoU) and was published on February 4, 1997. While implementation of the seven new top level domains was originally scheduled for 1998, transfer of Internet authority to ICANN in 1999 put that plan on hold. One reason for the opening of new top level domains was to permit more domain names to be available to companies with the same name. Under trademark law, several concurrent users can legally coexist in different territories (parts of the U.S. or in separate nations) or in different product and service markets. But there can only be one domain name. Thus, although there are several concurrent users of marks like ACME, BEST or NATIONAL, there can only be one ‘acme.com," "best.com," and "national.com." The new gTLDs would permit, for example, four different companies using the name or mark ACME to have "acme.firm" (for a furniture company); "acme.web" (for an Internet service provider); "acme.rec" (for an owner of a soccer team); and "acme.info" (for a trade journal). [Emphasis supplied.]

Thus, by a parity of reason, it must follow that the domain name of "PUEBLO.ORG" is not identical to the domain name of "PUEBLO.COM," or "PUEBLO.NET," either of which would be a more appropriate domain name by custom and usage for an enterprise such as Complainant’s. [See, Avery Dennison Corporation v. Jerry Sumpton, supra, at 880-881.]

Complainant, accordingly, has not established the first required element of the Policy.

By virtue of Respondent’s registration of its domain name prior to Complainant’s registration of its service mark, the Panelist must conclude that Respondent does have rights and legitimate interests in the domain name. [See, The Network Network v. CBS, Inc. (U.S.D.C. Central Dist. Calif. 2000) 54 U.S.P.Q.2d 1150.]

The Panelist has considered the circumstances, which, for purposes of Paragraph 4(a)(iii) of the Policy, would be evidence of the registration and use of the domain name in bad faith, as follows:

(i) Circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

There is no evidence supporting this factor.

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct. There is no evidence supporting this factor.

(iii) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.

There is no evidence of this factor.

Complainant, in addition, has cited several arbitral decisions, including American Vintage Wine Biscuits, Inc. v. Brown (WIPO, Case No. D2000-0010); and Telstra (WIPO Case No. D2000-0003), as establishing that a determination of bad faith registration and use may be inferred from the non-use of a domain name over a period of time.

The difficulty with Complainant’s cited authorities is that in each of them the Respondent defaulted, allowing the Panel to draw the adverse inference against the Respondent therein. Respondent here has not defaulted, but, to the contrary, has vigorously defended its registration and use of the domain name at issue.

In any event, the Panelist has concluded that Respondent is using the domain name and, indeed, is making a "fair use" of its domain name and is providing a service to tourists and to the residents of Pueblo, Colorado.

DECISION

The claim of Complainant Pueblo International, Inc. against Pueblo On-Line seeking to have the domain name of "PUEBLO.ORG" transferred to it, be and the same, is hereby denied.

Judge Irving H. Perluss (Retired)Dated: August 24, 2000

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