Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Collegetown Relocation, L.L.C., Princeton, NJ, USA ("Complainant") represented by Robert D. Frawley. The Respondent is Concept Software and Technologies Inc., Blacksburg, VA, USA ("Respondent") represented by Mark Rotenstreich, of Installinc.

The domain name at issue is "collegetown.net", 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.

P. Jay Hines as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 30, 2001.

On February 2, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "collegetown.net" 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 February 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@collegetown.net by e-mail.

A timely response was received and determined to be complete on February 23, 2001.

Complainant submitted an additional written statement within the appropriate time frame and in accordance with the requirements of Supplemental Rule 7 on February 27, 2000.

On February 28, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed P. Jay Hines as Panelist.

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

A. Complainant

Complainant owns the following U.S. service mark registrations and applications:

Complainant also owns the domain names "collegetown.com" and "collegetowns.com." Complainant has registered the fictitious trade name COLLEGETOWN in the state of New Jersey. Complainant claims use of the mark and trade name COLLEGETOWN, through its predecessor-in-interest, since June 28, 1995.

Complainant sent a cease and desist letter to Respondent on November 22, 2000, claiming infringement of its mark and offering reimbursement of registration costs for transfer of the domain name. On November 29, 2000, Complainant’s counsel received a voicemail message from Richard Heiter of Respondent indicating that Respondent had been acquired by InstallInc. The caller indicated that they were not aware of the ownership of the domain name, but would do what was necessary to resolve the matter. Complainant next sent a Domain Name Transfer Agreement to Mr. Heiter for execution.

On December 7, 2000, Complainant’s counsel received a letter from the General Counsel of InstallInc.com claiming that registration of the domain name "collegetown.net" does not infringe Complainant’s rights in its mark. The letter states that the domain name is not being used and that it was registered in good faith, Respondent being located in a college town.

Complainant alleges that Respondent had a duty to select, register and use a domain name that does not infringe upon the rights of any other party, citing Paragraph 2 of the Policy. Respondent, it claims, had at least constructive notice of Complainant’s Federal trademark registration and had a duty to investigate the extent of that interest to avoid infringing on its rights, citing Slep-Tone Entertainment Corp. v. Sound Choice Disk Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000). Neither Respondent nor its affiliates corresponded with Complainant before registering the "collegetown.net" domain name. Complainant alleges that Respondent has passively held the domain name since registering it on April 2, 1997. Complainant relies on Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) for the proposition that the passive holding of a domain name can be evidence of bad faith.

Complainant alleges that Respondent and its affiliates have registered and passively held other domain names which infringe registered trademarks. Concept Software and Technologies has registered "vthokies.com," "vt-alumni.com," vtalumni.com," and "collegebar.com," the last redirecting to "installinc.com." David Kaskel, President of InstallInc.com has registered "Efina.com," "homespire.com" and "homespire.net" EFINA and HOMESPIRE are registered trademarks held by third parties.

Complainant alleges that Respondent can never use the domain name "collegetown.net" without infringing on Complainant’s rights. While Respondent’s business may not be directly competitive with that of Complainant, it is in a real estate-related area. Thus, Internet users may be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the parties when in fact none exists. Finally, Complainant alleges that Respondent is unable to demonstrate any of the enumerated factors of legitimate interest in Paragraph 4(c) of the Policy.

B. Respondent

Respondent describes itself as the software development and programming subsidiary of InstallInc, an installation services company whose services are claimed to be unrelated to the Complainant’s business. Respondent claims it has never sold or offered to sell the domain name and has never attempted to trade on the goodwill created by Complainant’s COLLEGETOWN mark. Respondent claims that it had no actual knowledge of Complainant’s mark, relying on Meredith Corp. v. City Home Inc., D2000-0223 (WIPO May 18, 2000), and that it is unaware of any confusion between the COLLEGETOWN mark and Respondent’s domain name.

Respondent admits that it has never used the "collegetown.net" domain name. It distinguishes the Telstra case on the grounds that it involved a famous, coined mark rather than a term which is neither coined nor famous. Respondent states that its legitimate interest in the domain name relates to its intention of creating a web portal pertaining to college towns. Respondent relies on the following UDRP decisions involving descriptive terms: Countryhome.com (Meredith); Shutterbug.com (PRIMEDIA Special Interest Publications Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000)); Bigtoys.com (Kompan, Inc. v. George, FA 94324 (Nat. Arb. Forum Apr. 18, 2000)); Thriftys.com (Dylex Ltd. v. Yomtobianand, D2000-1304 (WIPO Dec. 22, 2000)); Agirlneedscash.com (Perry v. Ely, FA 94863 (Nat. Arb. Forum Sept. 19, 2000)). Respondent also relies on Hasbro, Inc. v. Clue Computing, 66 F.Supp.2^nd 117 (D. Mass. 1999) aff’d 232 F.3^rd 1 (1^st Cir. 2000) (Clue.com) and CT Solutions, Inc. v. Tooker, 15 F. Supp. 2^nd 986 (D.Or 1998) (cds.com).

Respondent challenges Complainant’s argument that Internet users may go to "colllegetown.net" when looking for Complainant and relies on the following cases for the proposition that initial interest confusion arises only in the context of identical or competitive goods or services. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3^rd 1036 (Ninth Cir. 1999); Network Network v. CBS, Inc., 54 USPQ2d 1150 (C.D. Cal. 2000) and Interstellar Starship Services v. Epix Inc., 2001 U.S. Dist. LEXUS 100 (D. Or. January 3, 2001). Respondent claims that it has legitimately registered a common, generic word as a domain name and that Complainant has not proven bad faith registration and use.

Complainant submitted an additional written statement. Complainant alleges that Respondent has failed to respond to its main allegations or to submit any evidence in support of its position. Complainant alleges that Respondent has misread the Meredith case and that Complainant was not charging Respondent with actual knowledge. Complainant agrees that the constructive knowledge afforded by Federal trademark registration does not equate to both full knowledge and bad faith motive in registering a domain name, but that holders of valid trademarks are protected from infringements of their marks by the Lanham Act, citing Cardservice International v. McGee, 950 F. Supp. 737 (E.D. VA 1997).

Complainant admits that the term "COLLEGETOWN" may be descriptive, but that it is distinctive as to Complainant’s use, as evidenced by its Federal registration. Complainant distinguishes the domain name cases relied upon by Respondent in that they all involved domain name registrants who had actually used or made demonstrable preparations to use the subject domain names. Hasbro and CT Solutions are likewise distinguishable. Complainant further distinguishes Interstellar and Network on the grounds that the defendants had actually used domain names on non-competing goods or services. Complainant contends that it has established use and corresponding trademark rights, while Respondent has made no use of the domain name "collegetown.net."

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.

The Complainant has proven its rights in the mark COLLEGETOWN established by both use and registration. Complainant’s Federal Trademark Registration No. 2,011,820 is prima facie evidence of the Complainant’s exclusive right to use of the term in connection with the services covered by the registration. Complainant was not required to demonstrate acquired distinctiveness or secondary meaning in order to obtain said registration and the Panelist does not consider the mark to be descriptive of the covered services. While the mark is composed of two dictionary terms, which, when taken together, could be descriptive of certain business activities, the composite mark is only suggestive of the Complainant’s services and therefore registrable and entitled to protection.

Respondent’s registered domain name is identical to Complainant’s Federal Trademark Registration No. 2,011,820. Accordingly, the Panelist finds that the subject domain name is identical to a service mark in which the Complainant has rights.

Respondent claims that it had a legitimate interest in registering the domain name "collegetown.net" because of its intention of creating a web portal pertaining to college towns. However, Respondent admits that it has never used the "collegetown.net" domain name and points to no demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Thus, it did not establish legitimate interest under Paragraph 4(c)(i).

Respondent has not alleged that it has been commonly known by the domain name (Paragraph 4(c)(ii)) or that it is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii). Nonetheless, "College town" is a common term with a readily understood meaning. Respondent is located in a college town and contends that it had a plausible reason for registering the domain name, namely, its intention of creating a web portal pertaining to college towns that would be conceptually similar to "sidewalk.com" or "digitalcity.com." It is conceivable that Respondent could make a legitimate noncommercial or fair use of the domain name. However, Respondent has not supported its contention with any evidence nor indicated why the .NET top level domain was selected. Respondent also did not present any evidence of third party use of "college town." Accordingly, the Panelist does not have sufficient information to make a finding with respect to Respondent’s legitimate interest in the domain name.

The Panelist does not believe that the Respondent’s statement that it would do what it had to to resolve the matter, while at the same time indicating that it was unaware of the domain name registration, amounts to registration primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant under Paragraph 4(b)(i). Such a statement was made in the context of settlement and may be considered inadmissible pursuant to Federal Rule of Evidence 408. LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000).

The Panelist does not believe that the conduct of a principal of Respondent’s parent can be attributable to the Respondent for the purpose of demonstrating a pattern of registering domain names in order to prevent trademark or service mark owners from registering corresponding domain names. Paragraph 4(b)(ii). The Panelist does not believe that the five noted domain names registered in the name of Concept Software and Technologies Inc. demonstrate a pattern of hoarding domain names for the purpose of cybersquatting. There is a connection between three of the domain names and Virginia Tech University, but there is no evidence regarding the purpose of these registrations.

Complainant is correct that, upon Federal registration, the public is charged with constructive notice of the claim of ownership of the mark, and non-owner use of it subsequent to that registration cannot be justified or defended by a claim of innocence, good faith or a lack of knowledge. Such constructive notice is imputed to Respondent. However, as in Meredith, constructive notice does not support a finding of bad faith registration; it speaks to use. Likewise, the Policy specifically requires that Complainant prove registration and use in bad faith. Telstra stands for the proposition that passive holding can, in certain circumstances, constitute a domain name being used in bad faith. However, the Panelist in Telstra indicated that with respect to factors 4(b)(i), (ii), and (iii), additional facts in the nature of bad faith intent are required. In Telstra, the Complainant’s trademark had a strong reputation and was widely known, the Respondent provided no evidence whatsoever of any actual or contemplated good faith use of the domain name, the Respondent took active steps to conceal its true identity and the Respondent actively provided and failed to correct false contact details in breach of its registration agreement. Thus, the circumstances indicated that the Respondent continued to act in bad faith, thus satisfying the "is being used in bad faith" component.

Complainant alleges that Respondent can never use the domain name "collegetown.net" legitimately because its services are related to real estate. Yet, it does not appear that Respondent’s parent, for which Respondent performs software development and programming, is a competing business. It appears from the respective web sites that the parties’ services are readily distinguishable, although they could be directed to the same class of purchasers. However, it is conceivable that the Respondent could make a legitimate non-competing or fair use of the domain name.

It follows that the domain name has not been registered primarily for the purpose of disrupting the business of a competitor. Paragraph 4(b)(iii). Likewise, it does not appear that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark. Paragraph 4(b)(iv). The record lacks evidence tending to show the intent element needed to support these factors of bad faith use. Therefore, the requirements of Paragraph 4(a)(iii) have not been proved by Complainant.

For the foregoing reasons, the Panelist finds that the Complainant failed to establish all three elements required by ICANN Policy Paragraph 4(a) and, accordingly, it is the decision of the Panelist that the relief requested by the Complaint be denied.