Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Teresa Christie, an individual doing business as the Mackinac Island Florist, with a principal place of business on Mackinac Island, Michigan, USA.

The Respondent is James Porcaro, an individual doing business as Weber’s Floral and Gift and as Weber’s Mackinac Island Florist, with a principal place of business in Sault Ste. Marie, Michigan, USA.

The domain names at issue are <mackinacislandflorist.com>, <mackinacislandflorist.org> and <mackinacisland.net> (the Domain Names). The registrar with which the Domain Names are registered is Abacus America, Inc. d/b/a Names4ever (the Registrar), located in San Diego, California, USA.

The Registrar has provided full contact details for the domain name.

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint in hardcopy and by email on May 15 and 29, 2001. On May 25, 2001, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.

The Center sent the Registrar a Request for Registrar Verification. On June 13 and 15, 2001, the Registrar transmitted to the Center via e-mail its Registrar Verification Response confirming that the Domain Names are registered with the Registrar and that the Respondent is the current registrant of the Domain Names.

The Center completed a Formalities Compliance Review, and notified the Complainant of certain deficiencies in the Complaint, which was then amended. The Center verified that the Complaint as amended satisfied the formal requirements of the ICANN Uniform Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Dispute Resolution Policy (the Uniform Rules), and the Supplemental Rules for Uniform Domain Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Uniform Rules, and the Supplemental Rules.

On June 19, 2001, the Center transmitted to the parties, with copies to the Registrar and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding.

On July 8 and 12, 2001, the Center received Respondent’s Response to the Complaint by email and in hard copy. The Center notified the Respondent of certain deficiencies in the Response, which was then amended.

The Center invited Dana Haviland to serve as the sole panelist. On August 20, 2001, after having received a Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

Complainant is an individual doing business as the Mackinac Island Florist, with a principal place of business located on Mackinac Island, Michigan. Complainant has operated the florist business there since May 1997 and has used the name Mackinac Island Florist since April 1998. Complainant registered the business name The Mackinac Island Florist with the County of Mackinac, Michigan on April 17, 1998. Complaint, Annex 1. Complainant registered The Mackinac Island Florist as a trademark with the State of Michigan on November 6, 2000. Complaint, Annex 2.

Respondent is an individual operating a business known as Weber’s Floral and Gift in Sault Ste. Marie, Michigan, which was acquired from a previous owner and which has now utilized that name for over 40 years. Weber’s also has a florist shop in St. Ignace, Michigan, which, according to Respondent, is approximately four miles from Mackinac Island and has "done business on Mackinac Island from its St. Ignace location longer than Complainant." On June 1, 2000, Respondent registered the business name Weber’s Mackinac Island Florist with the County of Mackinac, Michigan. Response, para. 12. According to the Registrar’s WHOIS database entries reflected online at <www.networksolutions.com>, Weber’s Floral and Gift registered two of the Domain Names, <mackinacislandflorist.org> and <mackinacislandflorist.net> on June 1, 2000. Respondent James Porcaro is listed as the administrative contact for the registrant. On June 14, 2000, Respondent applied for a U.S. trademark for Weber’s Mackinac Island Florist as a service mark, describing its goods and services as retail florist shops. Response, Exhibit 1. The WHOIS database shows that Respondent registered the Domain Name <mackinacisland.com> on behalf of Weber’s Floral and Gift on March 7, 2001.

The Complainant contends that the Domain Names registered by the Respondent are identical or confusingly similar to Complainant’s trademark The Mackinac Island Florist, in which Complainant asserts common law and state registration rights. Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Names. Finally, Claimant contends that the Respondent, a competitor, has registered and is using the Domain Names in bad faith.

Respondent denies the allegations of the Complaint and denies that the Complainant has any trademark rights in the term Mackinac Island Florist on the grounds that the term is geographically descriptive and not inherently distinctive. Respondent contends that one location of his florist business is near, if not on, Mackinac Island, and that he sells his goods and services there. He contends that the mark, Weber’s Mackinac Island Florist, for which he has sought U.S. trademark registration, is distinctive and can be registered as a trademark because of the inclusion of the Weber name together with the geographical description.

Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:

- that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- that the respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The evidence shows that the Domain Names <mackinacislandflorist.com>, <mackinacislandflorist.org> and <mackinacislandflorist.net> registered by the Respondent are identical or confusingly similar to the Complainant’s mark, The Mackinac Island Florist. The .com, .org and .net suffixes are ignored for purposes of this analysis. See, e.g., Fairchild Publications, Inc. v. Saeid Yomtobian, ICANN Case No. D2000-1003.

Respondent contends, however, that the Complainant has no trademark rights in her business name, The Mackinac Island Florist, because the name is merely geographically descriptive. Respondent states that "Terms that are descriptive of geographic location or origin of goods and services are regarded by law as not being ‘inherently distinctive’ marks." Respondent argues that under U.S. and Michigan law, a geographically descriptive term may not be registered as a trademark unless it has been used for five years and thus acquired a "secondary meaning", and that Complainant has used the term for less than four years. Respondent argues that his recently adopted trade name, Weber’s Mackinac Island Florist, is distinctive and may be registered as a trademark because it also incorporates the Weber name.

It is important to note that this ICANN proceeding is limited in scope. Whether or not Complainant’s mark could be registered under United States law is not at issue here; in fact, it was not. Further, Respondent’s claim that the State of Michigan erred in registering the Complainant’s mark is not within the jurisdiction of the Panel. The Panel notes that the parties are presently engaged in two other legal proceedings, one before the U.S. Patent and Trademark Office in which Complainant opposes the registration of Respondent’s mark, Weber’s Mackinac Island Florist, and the other in the Circuit Court of Mackinac County, Michigan, wherein Complainant seeks to restrain the Respondent from utilizing the name Mackinac Island Florist. The issues in those proceedings are not within the scope of this administrative proceeding for resolution of domain name disputes, which involves only a claim for transfer of the Domain Names in question, and requires only that the Complainant satisfy the three elements of proof set forth in Paragraph 4(a) of the Policy. Issues of rights to registration, trademark infringement, and unfair competition are not before this Panel. Pursuant to Rule 18(a) of the Uniform Rules, however, the Panel has exercised its discretion to render a decision in this proceeding with respect to Complainant’s claim for transfer of the Domain Names.

It is undisputed that the Claimant has not registered or applied to register her mark with the U.S. Patent and Trademark Office. However, the record shows that the Claimant has operated a florist business on Mackinac Island under the name The Mackinac Island Florist since April 1998, and registered the mark as a trademark with the State of Michigan, Department of Commerce and Industry Services, Bureau of Commercial Services on November 6, 2000. The exact date of the registration of the Domain Names by Respondent does not appear in the documents submitted by either party. The Panel has reviewed the entries for the Domain Names on the WHOIS service online at <networksolutions.com>, which reflect information from the Registrar that two of the Domain Names were registered in June 2000 and one in March 2001, all at least two years after the Complainant’s use of The Mackinac Island Florist mark had commenced in April 1998. Thus the Complainant’s use of the mark precedes the registration of each of the Domain Names, and the Complainant’s registration of the mark with the State of Michigan precedes the registration of the Domain Name <mackinacislandflorist.com>.

The fact that the Complainant has used the mark for less than five years may or may not be relevant to federal or state registration rights, but is not in itself determinative of the existence of common law trademark rights, which arise from the fact of use rather than the passage of any specified length of time. Similarly, the Panel declines to parse the differences between the distinctiveness of the parties’ respective marks, The Mackinac Island Florist versus Weber’s Mackinac Island Florist, and notes merely that neither mark consists solely of the Mackinac Island geographic designation. Moreover, the State of Michigan has in fact granted registration of the Complainant’s trademark, and the Panel has no power to nullify that determination. If the Respondent wishes to contest the registration by the State of Michigan, it may seek to do so in another forum. Here, even if Complainant is not entitled to any presumption of secondary meaning by virtue of registration under federal or state law, the evidence is sufficient to show that Complainant’s mark has acquired secondary meaning through continuous and extensive use by the Complainant in the limited geographic area where both parties conduct their business, for several (though not five) years prior to the Respondent’s registration and use of the Domain Names. The panel considers that the evidence is thus sufficient to set forth a prima facie case that the Complainant had common law trademark rights in its mark at the time of the registration of the Domain Names. See Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, ICANN Case No. D2000-1435 (geographically descriptive name of complainant’s real estate development with state but no federal trademark registration was not entitled to presumption of secondary meaning by virtue of registration, but evidence showed mark had acquired secondary meaning through continuous and extensive use for three years, meeting burden of proof with respect to complainant’s rights in trademark for purposes of first element of claim for abusive domain name registration ).

Thus, the Panel holds that for purposes of a claim for transfer of the Domain Names, the Complainant has shown the existence of rights in the mark sufficient to satisfy the requirements of the first element of a claim under Paragraph 4(a) of the Policy.

The evidence demonstrates that the Respondent has no legitimate right or interest in the Domain Names, which incorporate the Complainant’s mark Mackinac Island Florist. The location of Respondent’s place of business is not on Mackinac Island, and there is no evidence that the origin of the goods and services he sells is Mackinac Island. Further, the Respondent does not do business as The Mackinac Island Florist, but as Weber’s Floral and Gift or, at best, as Weber’s Mackinac Island Florist, though there is no evidence in the record of any actual use by Respondent of the latter name and Respondent has not submitted copies of the business license and trademark applications which might have included statements re its use. Had Respondent utilized its own newly licensed business name of Weber’s Mackinac Island Florist in its domain name registrations, the result herein might be different. However, Respondent has shown no legitimate right or interest in the Domain Names incorporating only the term Mackinac Island Florist.

Paragraph 4(c) of the Policy sets forth three ways whereby a domain name registrant may show a right or interest in a domain name, but Respondent has made no such showing here. Respondent does not use a name corresponding to the Domain Names, is not commonly known by the Domain Names, and is not making a legitimate noncommercial or fair use of the Domain Names. The evidence shows that the Respondent is a competitor of the Complainant and well aware of the Complainant’s use of the mark in question, and, as discussed below, gives rise to a conclusion that the Respondent’s use of the mark was not fair use but in bad faith.

The evidence is thus sufficient to establish the second element of a claim under Paragraph 4(a) of the Policy for transfer of the Domain Names.

Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location."

Here, bad faith registration and use are evidenced by Respondent’s knowledge of Complainant’s prior use of the mark; the existence of competition between the parties; the Respondent’s use of the Complainant’s mark rather than Respondent’s Weber’s Mackinac Island Florist in the Domain Names; the Respondent’s registration of both the .org and .net Domain Names and the subsequent addition of the .com Domain Name, thus precluding the Complainant from use of its mark in all three principal top level domains; and the misleading nature of the use of the geographically descriptive term Mackinac Island Florist with respect to Respondent’s business, since Mackinac Island is neither the location of the business nor the source of its goods or services, but merely one of any number of markets for those goods and services. The Complainant has also submitted some evidence of actual confusion resulting from Respondent’s use of the Domain Names.

The Panel finds that the evidence shows bad faith registration and use of the Domain Names under paragraphs 4(b)(ii), (iii) and (iv) of the Policy, thus establishing the third element of the claim for transfer.

For all of the foregoing reasons, it is the decision of the Panel that the Complainant has satisfied the burden of proof as to each of the essential elements of a claim under Paragraph 4(a) of the Policy, and that the Complainant’s claim for transfer of the Domain Names <mackinacislandflorist.com>, <mackinacislandflorist.org> and <mackinacislandflorist.net> is therefore granted.

Dana Haviland
Sole Panelist

Dated: September 17, 2000