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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Travel Berkeley Springs, Inc. v. Glens Country Estate
Claim Number: FA0101000096347
PARTIES
The Complainant is Travel Berkeley Springs, Inc., Berkeley Springs, WV, USA ("Complainant") represented by Ivan Hoffman. The Respondent is Glens Country Estate, Berkeley Springs, WV, USA ("Respondent") represented by Norwood Bentley, of Bowles Rice McDavid Graff & Love, PLLC.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is "berkeleysprings.org," "berkeleyspringswv.com," and
"berkleysprings.com" registered with Network Solutions, Inc.
PANEL
The undersigned Daniel B. Banks, Jr., panelist, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 2, 2001; the Forum received a hard copy of the Complaint on December 28, 2000.
On January 9, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "berkeleysprings.org," "berkeleyspringswv.com," and
"berkleysprings.com" 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. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 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@berkeleysprings.org, postmaster@berkeleyspringswv.com, and postmaster@berkleysprings.com by e-mail.
A timely response was received and determined to be complete on January 30, 2001.
On February 12, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
1 - Berkeley Springs, West Virginia, is a very old and historic town, founded in 1776 by George Washington when he discovered the now famous waters in what became America's first health spa.
2 - Complainant was incorporated as a non-profit organization in February, 1990,
"…to enhance the economy of Berkeley Springs and Morgan County through promotion and development of the travel and tourism industry."
3 - Over the years since it was incorporated, Complainant has spent extensive sums marketing the slogan "The Country's First Spa" as well as the name of the town.
4 - As a result of the efforts of Complainant, the town name has enjoyed world famous notoriety and has been written about extensively in newspapers and magazines.
5 - The name Berkeley Springs has developed a secondary meaning that has attached to that town name and, in the minds of the public interested in spas, the name refers to the specific locale and is not merely a generic geographic reference.
6 - Complainant is the official town body nominated and in charge of the marketing and promotion of the publicity for the town of Berkeley Springs and, in such capacity, has worked long and hard to develop a goodwill around its services.
7 - As a result of the foregoing, Complainant claims to be the owner of all rights of trademark and unfair competition including all goodwill in and to the mark "Berkeley Springs" for travel and tourist related services as a result of the name and mark having acquired a secondary meaning that attaches to the name of the historic town and to the services provided by Complainant.
8 - As part of its official duties, Complainant operates a web site with the domain name www.berkeleysprings.com, which was registered by Complainant on November 11, 1996.
9 - Respondent is a local resident in the county in which the town of Berkeley Springs is located and owns a small 7 room inn called the Glens Country Estate which has a web site at www.wvglens.com.
10 - Respondent was a member of the Board of Complainant and as such, his web site was linked to Complainant’s web site so that potential customers could be referred to Respondent's site.
11 - After a dispute arose involving complaints about Respondent's inn, Complainant delinked Respondent from Complainant's web site and thereafter, Respondent resigned from Complainant's Board.
12 - As the dispute continued, Respondent took out a full-page advertisement in the local newspapers accusing Complainant of "diversionary tactics".
13 - Respondent thereafter registered an extensive base of domain names all containing the name of the town or misspellings thereof.
14 - According to a list (Exhibit I) provided by Complainant, Respondent has reserved 54 domain names containing the name of the town or misspellings thereof and has reserved 20 other domain names, including jeannemozier.com and philmaggio.com who are members of Complainant's board and susanwebster.com who is the mayor of Bath, West Virginia.
15 - In addition, Respondent has reserved the domain name wayoutinwestvirginia.com which is the name of a copyrighted book of Ms. Mozier.
16 - Respondent's only purpose in obtaining all of these domain names is to prevent their use by Complainant and thus have no legitimate business purpose.
17 - At all times prior to the dispute between Complainant and Respondent, Respondent's business was called The Glens and did not contain any mention of Berkeley Springs.
18 - Subsequent to notification by Complainant about the conduct, which is the subject of this Complaint, Respondent sent out press releases and announcements stating that he was changing the name of The Glens Inn to The Berkeley Springs Spa and Inn.
19 - Respondent had no legitimate interest in the name Berkeley Springs prior to notification to it of the dispute involving the domain names.
20 - The domain names in question are identical or confusingly similar to Complainant's rights of trademark and secondary meaning.
21 - Respondent has no right or legitimate interest in the disputed domain names.
22 - Respondent has never been commonly known by the disputed domain names.
23 - Respondent has registered the disputed domain names in bad faith primarily for the purpose of disrupting the business of Complainant.
1 - Respondent has been in business in Berkeley Springs for ten years, during which time, the name of the business has changed four times reflecting the evolution of the business.
2 - The most recent change in Respondent's business is the addition of a spa and concurrent revision of the name from The Glens Country Estate to the Berkeley Springs Spa and Inn.
3 - The Respondent's name of The Berkeley Springs Spa and Inn give it a legitimate interest in the domain names in dispute.
4 - Respondent registered the disputed domain names as follows:
5 - Respondent's name change occurred prior to notification of the complaint by counsel for the complainant.
6 - Respondent acquired the spa property in August, 1999 and construction was begun in November of that year.
7 - Respondent used or made demonstrable preparations to use the name The Berkeley Springs Spa and Inn prior to any notice of the dispute as evidenced by invoices as early as March, 2000 for advertising, for business cards for licensed cosmetologists and massage therapists, mailing materials and signs for the new business.
8 - Respondent has no interest in diverting Internet traffic from the Complainant.
9 - Complainant has completely removed any linkage of Respondent from its web site on the pretext that Respondent operates an establishment of poor quality and that the proprietors of the Spa and Inn are rude to their clientele.
10 - Respondent has provided outstanding service to more than 20,000 guests, served over 65,000 meals and sold over 7,500 licensed massages over the past ten years.
11 - Complainant seeks to preclude Respondent from advertising in any meaningful way on the Internet.
12 - The disputed domain names were registered for the legitimate purpose of attracting people to the town and to the Respondent.
13 - Respondent has no intention to rent or sell the domain names in question to the Complainant or any other entity or person.
14 - Respondent does not seek to prevent the owner of the mark from reflecting the mark in a corresponding domain name.
15 - Complainant and Respondent are not competitors because Complainant is merely a resource for information and promotion of tourism and as such, does not book rooms, prepare meals or make reservations at the spas in town.
16 - Respondent is a for profit entity that does provide rooms, meals and makes reservations for its customers.
17 - Berkeley Springs is a geographic locale and the town's name is generic. Use of the town name by legitimate businesses connected to the town is not violative of Complainant's rights.
18 - The trademark "Berkeley Springs" was registered in January, 1976 by Berkeley Club Beverages, Inc., of Berkeley Springs, West Virginia, a bottler and distributor of natural spring water.
19 - The mark "Berkeley Springs" is used by a great many business located in Berkeley Springs.
20 - The mark refers to a geographic area and to the natural waters flowing from the springs at Bath, West Virginia, which is the town's name but the post office designation is Berkeley Springs.
21 - The mark "Berkeley Springs" has not an attached meaning related to the services of promoting tourism in Morgan County.
22 - There is no proof that the Complainant has the rights it claims in "Berkeley Springs".
23 - The domain names in dispute are similar or identical to the Complainant’s but the Complainant is not the exclusive champion of the town and its tourist related businesses.
FINDINGS
1 - It is admitted by Respondent that the Domain Names in question are similar or identical to the Complainants name.
2 - The Complainant does not have exclusive rights to use the name "Berkeley Springs" nor does the evidence support a finding that said name has acquired a secondary meaning to the services provided by Complainant. Also, it appears from the evidence that the Respondent does have a legitimate interest in using the name in that it made demonstrable preparations to use the name prior to the dispute made the basis of this Complaint.
3 - The evidence does not support a finding that the disputed domain names were registered in bad faith.
DISCUSSION
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:
(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.
In reviewing the Complaint and the Response, the main issues in this case are under ICANN Policy 4(a)(I) "no rights or legitimate interests," and Policy 4(a)(iii) "bad faith." And, this dispute likely turns on Complainant's rights in the mark under Policy 4(a)(I).
Identical and/or Confusingly Similar
The Respondent, in its response states "That the domain names in dispute are similar or identical to that of the Complainant is obvious" but goes on to contend that there is no proof that the Complainant has the rights it claims.
Rights or Legitimate Interests
Respondent contends that the BERKLEY SPRINGS mark is a geographic locale; thus, it is generic and not distinctive of any single business or entity. See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that other geographical locations in the United States and other countries may share the name "Cape Harbor" or "Cape Harbour" does not preclude that name from becoming associated with a particular provider of products or services in a limited geographic area).
Respondent also contends that Complainant failed to prove that the mark holds a secondary meaning related to the services of promoting tourism. See Lowestfare.com LLA v. US Tours & Travel, Inc., AF 0284 (eResolution Sept. 9, 2000) (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning the complainant must show that the public identifies the source of the product rather than the product itself). Thus, Respondent contends that Complainant does not have common law rights in the mark.
The Complainant's evidence does not support a finding that it has a superior right to the use of the name "Berkeley Springs" to the exclusion of the Respondent or any other entity. Indeed, the evidence is clear that there are many businesses in Berkeley Springs that use that name as a part of their business name. And the evidence is clear that the trademark "Berkeley Springs" is registered and owned by an entity other than the Complainant.
Registration and Use in Bad Faith
Respondent contends that the domain names were registered and are being used in good faith. Respondent claims no intent to deceive Internet users, to cause confusion with Complainant’s website or mark, or to prevent Complainant from using its mark in a domain name. See Loris Azzaro BV, SARL v. Asterix, D2000-0608 (WIPO Sept. 4, 2000) (refusing to transfer the domain name where "Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence").
There is no evidence to support a finding that Respondent registered the disputed domain names for the purpose of selling renting or otherwise transferring the name to others; that they were registered for the purpose of preventing the owner (Complainant is not the owner) of the trademark from reflecting the mark in a corresponding domain name; that it was registered for the purpose of disrupting the business of a competitor (Complainant and Respondent do not compete); nor by using the domain names, Respondent has intentionally attempted to create a likelihood of confusion with Complainant's mission.
DECISION
It is the decision of the undersigned that the Complainant's request that the disputed domain names be transferred is hereby denied.
Honorable Daniel Banks
Retired Circuit Judge
Arbitrator
Dated: February 16, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/338.html