Generic Top Level Domain Name (gTLD) Decisions

The arguments presented by the parties focus on a complicated set of facts relating to the allegation that Complainant is somehow improperly engaged in commercial activities triggering, among other things, a violation of the racketeering laws of the United States. Much of this discussion is well beyond any issue relevant to this proceeding.

Our substantive inquiry focuses instead on three issues: (1) are the Domain Names confusingly similar to a trademark in which the Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.

It is undisputed that the marks claimed by Complainant have not been registered. Instead, Complainant relies on common law rights. Under U.S. law, which is applicable to both parties, Complainant must prove prior use and distinctiveness to establish common law rights. In this case, the alleged marks FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER appear to be merely descriptive. Such marks may be protected if they have acquired distinctiveness or secondary meaning through use. The factors typically considered include (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) survey evidence. Home Mortgage Corp. v. Platinum Financial Group, [1998] USCA7 785; 149 F.3d 722 (7^th Cir. 1998); Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F 2.d 1519 (11^th Cir. 1991).

Here, the Complainant has failed to present any evidence of secondary meaning, except for the bald allegations of its complaint. Complainant merely alleges that trademarks have been continuously used since 1960 in connection with "countless civic activities and services to the Fort Lee community." Complainant lists various activities, but has included no exhibits or affidavits to support its claim.

The allegations of the Complainant are supported by certification that "the information contained in this Complainant is to the best of the Complainant's knowledge complete and accurate." Perhaps allegations made on that basis, if undisputed, might be sufficient to make a prima facie case. However, here those allegations are disputed. Respondent contends that Complainant's name is GREATER FORT LEE CHAMBER OF COMMERCE and denies that Complainant has made trademark use.

In support of its denial, Respondent has produced various materials relating to Complainant. These all prominently use the name GREATER FORT LEE CHAMBER OF COMMERCE. None display prominent use of FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. Respondent's denial is further supported by materials submitted by Complainant. For example, Annex 3, the whois record for Complainant's domain name registration for <ftleechamber.com>, identifies the organization as "Greater Fort Lee Chamber of Commerce." Similarly, Annex 5 is letter from Complainant's counsel to Respondent stating "This firm represent the Greater Fort Lee Chamber of Commerce."

Thus, the evidence submitted does not support Complainant's claim of right in the marks FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. However, based on the allegations of Respondent and the materials submitted with the response, I find that Complainant does use the name GREATER FORT LEE CHAMBER OF COMMERCE. If the Domain Names were deemed confusingly similar to that name, Complainant might prevail on the first element of its claim if the name had acquired secondary meaning. Therefore, we turn to examine the evidence of rights in GREATER FORT LEE CHAMBER OF COMMERCE.

In this regard, Complainant has presented no evidence. Indeed, by focusing on a claim of rights in FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER, Complainant has not even asserted rights in the mark GREATER FORT LEE CHAMBER OF COMMERCE.

Respondent's actions may be viewed as evidence of Complainant's rights in the mark GREATER FORT LEE CHAMBER OF COMMERCE. A deliberate intent to trade on another's mark may be considered evidence of secondary meaning. See Transgo, Inc. v. Ajac Transmission Parts Corp., [1985] USCA9 1384; 768 F.2d 1001, 1016 (9^th Cir. 1986)("Proof of exact copying, without any opposing proof, can be sufficient to establish secondary meaning"); RJR Foods, Inc. v. White Rocks Corp., [1979] USCA2 655; 603 F.2d 1058 (2d Cir. 1979)(defendant's intentional copying constitutes evidence of secondary meaning); Compare Co-Rect Products v. Marvy! Advertising Photography, 780 F.2d 1324 (8^th Cir. 1985)(intent is a factor in determining secondary meaning but is not conclusive).

Here, the evidence suggests that Respondent adopted a name similar to Complainant's name for the purpose of inducing Complainant to discontinue its support of a competing city directory site. This highly suspicious motive may constitute bad faith intent in support of Complainant's claim of rights, but I do not believe it is conclusive of those rights. Furthermore, based on the total record presented, I find I am unable to give Complainant the benefit of any doubt, for several reasons:

First, I believe Complainant's submission is not consistent its certification that the information contained in the Complainant is "complete and accurate." I believe Complainant has been disingenuous about its very name, calling itself "Fort Lee Chamber of Commerce" when in fact its name is "Greater Fort Lee Chamber of Commerce." I am surprised by this apparent attempt at deception. It seems so unnecessary if Complainant in fact had made trademark use of its name for 40 years. The deception raises doubt about Complainant's other claims.

In addition, Complainant's failure to submit any evidence in support of its claim of trademark rights is puzzling. The failure in the original complainant might be attributed to the belief that those rights were undisputed. However, Respondent did sharply dispute those rights. Nevertheless, Complainant continued in its omission when it submitted its Reply to the Response. The Reply, which consists of over three pages of small, single spaced type, addresses many of the points raised by Respondent (including laches, free speech, genericness and lack of confusion), cites numerous cases, but still ignores Respondent's basic point that Complainant has failed to prove any trademark rights in any marks identical or confusingly similar to the Domain Names.

It is a general proposition of United States law that the failure of a party to submit evidence in its control may permit an adverse inference the facts would not be favorable to that party. See Mondich v. Brown, WIPO Case No. D2000-0004 . That principle seems applicable here, given that Complainant's failure of proof was called to its attention in the Response but Complainant did not then submit evidence of its rights.

In weighing the record, we have on one hand Respondent's admission that Complainant uses the name GREATER FORT LEE CHAMBER OF COMMERCE; the appearance of bad faith registration and use; and Complainant's contested allegation that it has protectable trademark rights. On the other hand, we have Complainant's apparent deception about its actual name and its failure to present any evidence of its trademark rights after notice that its claim of rights was challenged. Even if we accept Complainant assertion that it has used its name for forty years, we have no evidence on the other relevant factors for determining secondary meaning. There is no evidence of the manner in which the name has been used during that period of time, the nature and extent to which the name has been advertised or promoted, the volume of services provided under the name or the reaction of the public to the name.

All things considered, I find that Complainant has failed to prove trademark rights in any mark that is identical or confusingly similar to the Domain Names. The record otherwise is inconclusive on those rights. Therefore, it is not necessary to consider further the other elements of Complainant's claim or Respondent's defenses. Perhaps Complainant's failure of proof could easily be overcome, and this decision is not intended to be prejudicial to its ability to prove its rights in another forum. Nevertheless, that failure of proof is controlling here.

For the reasons stated above, Complainant's request for transfer of the Domain Names is denied.

Mark V.B. Partridge
Sole Panelist

Dated: June 18, 2002