DECISION

Discover New England v. The Avanti Group, Inc.

Claim Number: FA0208000123886

PARTIES

Complainant is Discover New England, Stowe, VT (“Complainant”) represented by Matthew R. Johnson.  Respondent is The Avanti Group, Ridgefield, CT (“Respondent”) represented by Stephen S. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <discovernewengland.com>, registered with Domain Bank.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

R. Glen Ayers, James A. Carmody, and G. Gervaise Davis III served as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 26, 2002; the Forum received a hard copy of the Complaint on August 27, 2002.

On August 29, 2002, Domain Bank confirmed by e-mail to the Forum that the domain name <discovernewengland.com> is registered with Domain Bank and that the Respondent is the current registrant of the name.  Domain Bank has verified that Respondent is bound by the Domain Bank 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 August 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 2002 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@discovernewengland.com by e-mail.

A timely Response was received and determined to be complete on October 8, 2002.

Complainant’s additional submissions were received on October 14, 2002.

On October 23, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed R. Glen Ayers, James A. Carmody, and G. Gervaise Davis III as Panelists.  R. Glen Ayers served as chair.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a “joint non-profit regional tourism marketing organization” comprised of the state tourism offices of the New England states.  Complainant hired Respondent, a web designer, to create a website to promote “Discover New England.”  According to a Letter Agreement, dated July 17, 1996, Respondent received a license to use Complainant’s intellectual property, including its name.  Respondent was authorized to register a domain name for the project.  The Letter Agreement specified that the domain “address” would become the property of Complainant at the termination of the contract set out in the Letter Agreement.

Thereafter, the domain name was registered.  Then, in 1999, the contractual relationships with Respondent were terminated, but Respondent did not transfer the domain name to Complainant. The Letter Agreement was terminated.

Subsequently, Complainant received a registration for a mark, DISCOVER NEW ENGLAND.  Complainant asserts that it has common law trademark rights in the name dating from at least 1993.

The Complaint also asserts that Respondent has refused to “cease and desist” use of the domain name and that it has attempted to sell its rights in the name to third parties.  This, says Complainant, constitutes bad faith.

The Complaint is somewhat cursory and does not address the issue of whether Respondent has rights in the name.

B. Respondent

Respondent, in an overly long Response, first asserts that Complainant has no legal existence and cannot bring this action.

Next, Respondent points out that there is no evidence of use by Complainant which would have created common law rights prior to the recent registration of the mark.  By affidavit, Respondent attempts to show that it registered the domain name before it began dealing with Complainant.

Respondent also notes that this is a contract dispute, not covered by the ICANN Rules and Policies.

Respondent asserts that it had and has rights in the name, and asserts that Complainant has failed to carry its burden as to that element of the required proof necessary to prevail in a domain name dispute.  As Respondent points out, it has rights in the domain name under the Letter Agreement executed in 1996 and that it made use of the name for some time.

Respondent then goes on to argue that the alleged mark, common law or registered, is extraordinarily weak, being comprised of three generic words forming a common phrase.

Respondent denies that it acted in bad faith – pointing out that the registration was clearly not in bad faith and arguing that there is no evidence of bad faith use.

While Respondent provides much detail for this argument, in summary, Respondent basically argues a “no evidence” point.

Finally, Respondent asserts a claim for “reverse domain name hijacking.”

C. Additional Submissions

Complainant timely filed an additional submission, which will be considered.

Complainant in its additional submission for the first time attempts to support its claim of common law mark existence prior to the (very recent, i.e., 2002) registration of the mark. As to the weakness of the mark, the Complainant suggests that the mark must be fine because the U.S. Patent and Trademark Office (“USPTO”) issued a registration.

As to bad faith, Complainant says that if Respondent registered the domain prior to entering into the Letter Agreement, the Respondent must have been intending, in bad faith, to register the name with the intent to sell the registration to Complainant as of the time or prior to the time of the Letter Agreement.  Complainant also offered evidence of an attempt to sell the domain name registration for $90,000.

The additional submission never really addressed the issue of rights in the name, one of three elements necessary for Complainant’s case.

FINDINGS

As Respondent says, this is a contract dispute and not suitable for consideration in this forum and by this Panel.

Complainant alleges that it licensed the name, “Discover New England,” the name was used with permission by Respondent to register the domain name, and now, and notwithstanding clear contract language, Respondent will not give the name back.  Adjudication of such disputes is for the courts of the various states and the courts of the United States.  This forum is charged with determining (1) whether Complainant has a mark (and Complainant has done a very poor job in showing any common law mark as of the date of the registration of the name); (2) whether Respondent has or had at registration any rights in the name; and, (3) whether Respondent acted in bad faith.

There is insufficient evidence to determine any of these issues; since the burden is on Complainant, the relief requested must be denied.  (If this Panel had the ability to decide contract claims, the result might very well be different.)  In particular, it seems clear that, at least at the time of registration, Respondent did have rights in the name and that the registration and use were not in bad faith as of the date of registration.  Conversely, the pleadings and exhibits seem to show a contract has been breached and that a court of competent jurisdiction could order specific performance – or the transfer of the domain name. 

Given the facts and circumstances, the Panel declines to consider the issue of reverse domain name hijacking asserted by Respondent.

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.

Identical and/or Confusingly Similar

While Complainant holds a service mark issued in 2002, which is identical to the domain name, Complainant has failed to show that it held a common law mark as of the date of the registration of the domain name.  Obviously, it is difficult to show the existence of a common law mark in three generic words describing a relatively common activity.  See generally Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000).

Rights or Legitimate Interests

As of the date of the registration of the domain name, Respondent had rights or legitimate interests in the name, if for no other reason than that Complainant had licensed the use of the mark as a domain name or authorized the use of the mark as a domain name.  If the right to use the name has been terminated by contract, Respondent certainly made preparations for use and used the domain name before any attempt to cancel the contract occurred.

Registration and Use in Bad Faith

There is no evidence of registration or use in bad faith by Respondent as that term is used in the Rules and Policies (although there may well be bad faith in a contract context).  The Panel is troubled by the sale offer, but to determine that the offer was in bad faith would require consideration of contract and contract defenses, all of which is beyond the jurisdiction of the Panel.

DECISION

The relief requested is DENIED and the domain name shall not be transferred; the Respondent’s requested relief concerning reverse domain name hijacking is DENIED.

R. Glen Ayers, Chair

R. Glen Ayers, James A. Carmody, and G. Gervaise Davis III, Panelists

Dated:   November 6, 2002

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