Generic Top Level Domain Name (gTLD) Decisions

Complainant is City of Salinas, Salinas, CA, USA ("Complainant") represented by G. Gervaise Davis III, Esq. of Davis & Schroeder, P.C. Respondent is Brian Baughn, Salinas, CA, USA ("Respondent") represented by John B. Berryhill, Esq.

The domain names at issue are <cityofsalinas.com>, <cityofsalinas.net>, and <cityofsalinas.org> registered with Network Solutions, Inc.

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three-member arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired) of Philadelphia, PA, Judge James A. Crary (Retired) of Ojai, CA and Judge, Ralph Yachnin (Retired) of Boynton Beach, FL. (the "Panelists" or the "Panel"). Each panelist has confirmed to the National Arbitration Forum, ("the Forum") that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 18, 2001; the Forum received a hard copy of the Complaint on April 18, 2001.

On April 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <cityofsalinas.com>, <cityofsalinas.net>, and <cityofsalinas.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On April 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding setting a deadline of May 9, 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@cityofsalinas.com, postmaster@cityofsalinas.net, and postmaster@cityofsalinas.org by e-mail.

A timely response was received and determined to be complete on May 9, 2001.

Both Complainant and Respondent filed timely additional submissions in accordance with the Forum’s Supplemental Rule 7.

On May 22, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Panelists.

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

Complainant is a municipal corporation chartered and existing under the California Constitution since the 1870s. Complainant claims to be the owner of common law trademark rights for CITY OF SALINAS.

Respondent registered the three top-level domain names: <cityofsalinas.com> on April 29, 1999; <cityofsalinas.net> on April 27, 1999; and <cityofsalinas.org> on April 27, 1999. Respondent has been using one or more of the domains names to link to a web site offering criticism of the government of the City of Salinas.

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:

It is clear that the domain names registered by Respondent, <cityofsalinas.com>, <cityofsalinas.net> and <cityofsalinas.org> are essentially identical to Complainant’s CITY OF SALINAS mark. However, Complainant must show more than that the mark and contested domain names are identical or confusingly similar to satisfy the ICANN Policy. The Policy requires that the Complainant first establish that it has protectible rights in the trademark CITY OF SALINAS. 15 USC Section 1052(e)(2) mandates that a geographically descriptive name is not eligible for trademark protection without proof that, through usage, it has become a unique source identifier. This trademark principle has deep historical roots. As early as 1872, the Supreme Court of the United States explained the rationale for this principle as follows:

Canal Co. v. Clark, [1871] USSC 18; 80 U.S. 311, 13 Wall. 311, 20 L. Ed. 581 (1872)

A leading trademark commentator elaborated on this principle: "descriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods. Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain." McCarthy on Trademarks and Unfair Competition, §14:1 at 14-4 (4th ed. 2001). Here, Complainant has failed to prove that the CITY OF SALINAS mark has acquired secondary meaning such that it may claim the exclusive right to use CITY OF SALINAS as a trademark.

The evidence of record is simply not sufficient to persuade the Panel that the unregistered mark CITY OF SALINAS performs the function of a trademark as required for purposes of the Policy. The evidence does not show that the mark distinguishes the goods or services of the Complainant, City of Salinas, from the goods or services of any other person. Indeed, there are many organizations, both commercial and non-commercial, providing goods or services in relation to the City of Salinas. See Exhibit 9 to Respondent’s response (listing other users of Salinas name). Each of these organizations (and presumably, there are others) has a bona fide interest in freely using the unregistered mark CITY OF SALINAS in relation to its goods or services. This Panel finds that the mark is descriptive of a geographical location, the City of Salinas. Under the circumstances, the unregistered mark is unable to, and does not, perform the function of a trademark. In other words, it does not serve as a unique source identifier and therefore does not qualify as a trademark in which Complainant has rights under the Policy.

Moreover, we are persuaded by the reasoning of the Panel in Brisbane City Council v. Warren Boulton Consulting PTY LTD, No. D2001-0047 (WIPO May 7, 2001), with respect to the limited applicability of the Policy to geographically descriptive marks. As the learned Panel noted in 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." 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").

In view of all the circumstances, the Panel concludes that Complainant has not met its burden of proof on the first prong, that the domain name is confusingly similar to a trademark in which Complainant has rights. Having failed to establish the very first element, the Panel need not determine whether the remaining two components have been established.

In light of the Panel’s findings, we find in favor of Respondent. Complainant’s request to transfer the domain names <cityofsalinas.com>, <cityofsalinas.net>, and <cityofsalinas.org> is hereby DENIED.

Honorable Nelson A. Diaz, Chief Panelist