Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Old Sturbridge Inc., Sturbridge, MA, USA ("Complainant"). The Respondent is S.C.I. Management Inc., Sturbridge, MA, USA ("Respondent").

The domain name at issue is "oldsturbridgevillage.com", registered with Network Solutions.

The undersigned 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 a panelist in this proceeding.

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 18, 2001; the Forum received a hard copy of the Complaint on January 22, 2001.

On January 22, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "oldsturbridgevillage.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 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@oldsturbridgevillage.com by e-mail.

A timely response was received and determined to be complete on February 12, 2001.

On February 15, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed James Alan Crary as Panelist.

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

A. Complainant

Complainant has been operating under the name "Old Sturbridge Village" since 1946 and holds the registered mark OLDSTURBRIDGEVILLAGE (Serial Number 75-014,691) used in connection with entertainment, and educational services. It also holds a mark (775,816) for bowls, mugs, pitchers, pots, and plates, as well as a registration (77-055,061) for decorative porcelain, miniature houses, and a range of household goods. The Complainant also owns a 60-room lodging facility in Sturbridge, Mass.

Under the factual and legal grounds section of the complaint, the Complainant alleges respondent does not use the name or a similar one in operation of a business, and that Respondent has no right to do so since the Complainant holds the trademark.

Complainant asserts "by using the domain name" Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark and 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.

It was further alleged that Respondent has offered to sell the domain name to the Complainant for a valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.

No other particulars regarding the factual circumstances of the registration or use of the disputed domain name were set out in the complaint or supporting exhibits.

The Complainant asked that the domain name be transferred.

B. Respondent

A one-page letter addressed to the Forum case coordinator, Michelle Schaber was submitted by Respondent as its response. Respondent maintained that it had "released the domain name in question, OldSturbridgeVillage.com by not paying a renewal fee to Network Solutions".

Respondent asserted that this action "opens the name up to be registered by Old Sturbridge Village, Inc.", the Complainant herein.

Respondent further denied any intent to "illegally register the above domain name and intrude on any trademark".

Respondent asserted that the domain name was registered "believing that it was an open commercial domain name." Respondent hoped "to attract people interested in the Sturbridge area to that site". Respondent further asserted that "upon hearing from Old Sturbridge Village and their concerns, we had hoped to work together and share the domain name and not to misrepresent themselves." By not paying the renewal Respondent hoped to resolve the dispute.

No other factual particulars were set out by the Respondent relating to its registration and use of the domain name. There were no exhibits attached.

2. Respondent registered the disputed domain name oldsturbridgevillage.com.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy requires the 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 3b(ix) of the Rules requires Complainants to describe in accordance with the Policy the grounds on which the complaint is made. In particular,

Rule 3b(ix) also suggests that those aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable should be described.

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.

The evidence supported the finding that the disputed domain name oldsturbridgevillage.com is identical to Complainant’s mark. The ".com" suffix denoting second-level domain status in Respondent’s domain name does not affect the fact that the name is identical to the Complainant’s mark. See Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000), holding that juliaroberts.com is identical to Julia Roberts. See also Chernow Communications v. Kimball D2000-0119 (WIPO May 18, 2000).

Complainant’s trademark is founded on a geographical place name, descriptive in nature. The trademark does not afford the Complainant exclusive right to use the disputed domain name. There was no showing that Respondent was a competitor of Complainant engaging in educational services or producing pottery, etc. It is easy to imagine circumstances wherein the Respondent, a local business in Sturbridge, Massachusetts might make legitimate use of the domain name in some business operation wholly unrelated to Complainant’s. Respondent alludes to a legitimate use of the domain name "we were hoping to attract people interested in the Sturbridge area to that site".

The panel concluded that the Complainant has failed to describe why the Respondent should be considered as having no rights or legitimate interests.

It was concluded that the complaint and exhibits were sufficient to establish only the first element necessary to establish an abusive domain name registration. Complaint and supporting document does not prove the other elements and therefore must fail. The burden of proof is on the Complainant to establish not only bad faith use but also a bad faith registration. World Wrestling Federation v. Bosman D99-0001 (WIPO January 14, 2000).

The Complainant asserts registration and use in bad faith. The allegations simply paraphrase Policy 4(b)(i) and (iv). The Complainant does not describe why the domain name should be considered as having been registered in bad faith or used in bad faith. No particulars concerning Respondent’s conduct, the nature of its business, or any facts that would support a finding of bad faith, registration or use, were provided.

An offer to sell is alleged, but whether it was verbal, written, e-mailed or had to be inferred from other circumstances is in no way described as required by Paragraph 3b(ix) of the Rules.

Of course, the Respondent’s nondisclosive letter amounts to little more than a general denial, but the "must prove" language of Policy 4(a) applies to the Complainant. The Policy and rules impose no similar proof requirements on Respondent. The threshold burden of proof must be met by the complaint and supporting evidence. The burden of proof is shifted to a Respondent only when the complaint and supporting evidence demonstrate to the Panel that Complainant is entitled to relief. Here, the complaint which merely paraphrases Policy 4(a) to set forth a claim using conclusory terms, with no description of facts, and without supporting evidence is inadequate to meet the threshold burden of proof.

For the reasons set forth above, the Panel concluded that the Complainant is not entitled to relief under Policy 4(i), it is therefore ordered that the Respondent retain the disputed domain name.