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Generic Top Level Domain Name (gTLD) Decisions |
Greater Birmingham Convention and
Visitors Bureau v. Acme Information Services
Claim Number: FA0410000356351
PARTIES
Complainant
is Greater Birmingham Convention and Visitors Bureau (“Complainant”), 2200 9th Ave. North, Birmingham,
AL 35203. Respondent is Acme Information Services (“Respondent”),
represented by Robert Watts, 140 Lucerne Blvd., Birmingham, AL 35209.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <birmingham.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelist in
this proceeding.
Panelists
are Jeffrey M. Samuels, Judge Bruce E. Meyerson (Ret.), and Judge Karl V. Fink
(Ret.), as Chair.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
28, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 2, 2004.
On
October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <birmingham.com>
is 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
November 10, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of November 30, 2004 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@birmingham.com by
e-mail.
A
timely Response was received and determined to be complete on November 30, 2004.
On December 15, 2004, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Jeffrey M. Samuels and Judge Bruce E. Meyerson (Ret.) as
Panelists and Judge Karl V. Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Greater
Birmingham Convention and Visitors Bureau is a non-profit agency chartered for
the purpose of marketing and promoting the
greater Birmingham, Alabama area as
a premier destination for conventions, meetings, and tour and travel. The domain name, Birmingham, is identical to
the name which we wish to use for our marketing of the city of Birmingham.
The
respondent should be considered as having no rights or legitimate interests in
respect of the domain name of Birmingham as there
is no active web page that is
associated with this domain name, nor has there ever been an active web page
associated with this domain
name.
There
is no evidence of the Respondent’s use of, or 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.
There is no evidence that the Respondent (as an individual, business, or
other organization) has been commonly known by the domain
name.
There
is no evidence that the Respondent is making a legitimate noncommercial or fair
use of the domain name. The domain name
is not being used in good faith as there is no Birmingham trademark associated
with the Respondent and no web site
has been developed to promote Birmingham.
We
have inquired as to the cost of purchasing the domain name and were told that
“we were looking at around $25,000.00.”
B.
Respondent
Complainant
has no trademark or service mark rights in the geographical designation. In
order to prevail in a claim under the UDRP, Complainant must establish
protectable rights in the trademark he seeks to enforce. Complainant claims a trademark in the city
name of “Birmingham.” Complainant has provided no evidence that it has
registered any such
mark with the United States Patent and Trademark
Office or any state agency. As such,
the Complainant must establish that it has common law rights to the word
“Birmingham.”
The word “Birmingham” is nothing more than a
geographical designation. Complainant admits as much when it states that “the
trademark
on which the complaint is based is our city name, Birmingham.”
Complaint § 4(c). 15 U.S.C. § 1052(e)(2) mandates that a
geographically descriptive name is not eligible for trademark protection
without proof that,
through usage, it has become a unique source identifier.
Complainant
has failed to provide any evidence, much less to prove, that the “Birmingham”
mark has acquired secondary meaning such
that it may claim the exclusive right
to use “Birmingham” as a trademark.
There is no evidence whatsoever that the mark
“Birmingham” distinguishes the goods and services of the Birmingham Convention
and Visitors
Bureau from the goods and services of any other entity. A search of the Bellsouth Yellow Pages – a
popular regional phone book for businesses with names starting with
“Birmingham” in the
Birmingham Area returned 1236 results. Since the word “Birmingham” is unable to,
and does not, perform the functions of a unique source identifier, it does not
qualify as
a trademark in which Complainant has rights under the Policy. Accordingly, the domain name <birmingham.com>
cannot be identical or confusingly similar to a trademark or service mark in
which the complainant has rights.
Respondent
has rights and a legitimate interest in the domain name. Prior to any notice of the dispute, Acme
Information Services made use of the domain name and a name corresponding to
the domain name
in connection with a bona fide offering of services. From October 1994 through August of 1998,
Acme operated Birmingham Online, one
of the largest online systems in the state of Alabama. Respondent provided limited internet access
to hundreds of subscribers. All
subscribers received the use of a Birmingham.com email address. Electronic mail
was a fledgling endeavor in that day, and providing
internet email accounts was
a major aspect of the business.
Prior
to any notice of this dispute, Acme Information Services made use of the domain
name <birmingham.com> and the business name Birmingham
Online. The name Birmingham and the
domain name <birmingham.com> were used in our advertising.
Complainant fails to allege any facts or
circumstances which, if taken as true, would constitute bad faith on the part
of the respondent.
Acme
Information Services is the original registrant of the domain name <birmingham.com>.
The domain has been held by one owner for more than ten years. The owner of
this domain has never purchased another domain. The owner of this domain used it extensively in commerce for a
number of years without ever establishing a web presence. It has since
made the
decision to warehouse the domain until such time as the developer is ready to
re-launch the original Birmingham Online enterprise
via the World Wide
Web. The domain name <birmingham.com>
is not, nor has it ever been, for sale.
FINDINGS
For the reasons set forth below, the
Panel finds Complainant has not proven that the domain name should be
transferred.
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.
Respondent
argues that the “word ‘Birmingham’ is nothing more than a geographical designation.” Respondent notes that Complainant admits as
much in stating that the “trademark on which the complaint is based is (sic)
our city
name, Birmingham (Alabama).”
Respondent further states that 15 U.S.C. § 1052(e)(2) “mandates that a
geographically descriptive name is not eligible for trademark
protection
without proof that, through usage, it has become a unique source
identifier.”
15
U.S.C. § 1052 states:
“No
trademark by which the goods of the applicant may be distinguished from the
goods of others shall be refused registration on the
principal register on
account of its nature unless it . . . (e) Consists of a mark which . . . (2)
when used on or in connection
with the goods of the applicant is primarily
geographically descriptive of them [or] (3) when used on or in connection with
the goods
of the applicant is primarily geographically deceptively
misdescriptive of them...”
In
the leading cases decided under the Policy, in the context of geographic terms,
panels have cited Canal Co. v. Clark, [1871] USSC 18; 80 U.S. 311, 20 L.Ed. 581 (1872),
which Respondent also cites, for the rationale behind the foregoing principle.
“[I]t
is obvious that the same reasons which forbid the exclusive appropriation of
generic names or of those merely descriptive of
the article manufactured and
which can be employed with truth by other manufacturers, apply with equal force
to the appropriation
of geographical names, designating districts of country.
Their nature is such that they cannot point to the origin (personal origin)
or
ownership of the articles of trade to which they may be applied. They point
only at the place of production, not to the producer
. . .” Id. at 324.
See
City of Salina v. Baughn,
FA 97076 (Nat. Arb. Forum June 4, 2001); see also Glenwood Springs Chamber Resort Assoc., Inc. v. College Trans.,
Inc., FA
98825 (Nat. Arb. Forum Oct.
31, 2001). The leading cases also cite McCarthy,
which Respondent has similarly cited in its Response.
“[D]escriptive
geographical terms are in the ‘public domain’ in the sense that every seller
should have the right to inform customers
of the geographical origin of his
goods. Therefore, a seller must build
up good will and consumer recognition in a descriptive geographical term in
order to have a legally
protectable interest, and take the term out of the
public domain.” 1 McCarthy on Trademarks and Unfair Competition, § 14:1
at 14-4 (4th ed. 2001).
According
to the Lanham Act, 15 U.S.C. § 1127, a service mark is:
“[A]ny word, name, symbol, or device, or any combination thereof (1)
used by a person, or (2) which a person has a bona fide intention
to use in
commerce and applies to register on the principal register established by
this chapter, to
identify and distinguish the services . . . from the
services of others and to indicate the source of the services, even if that
source is unknown.” (Emphasis added).
The
Panel finds that the BIRMINGHAM mark fails to both identify the source of
Complainant’s services and distinguish such services
from those offered by
others. It is not uncommon for
merchants to attempt to use the name of a geographic place, such as where their
business is located, as a brand
name for goods or services. In this context, the public may regard such
a mark not as an identifier of a particular source of goods or services, but
rather as
the geographic origin of such goods or services. Therefore, there is an issue of whether the
geographic term is actually functioning as a source identifier of goods or
services, which
is a requirement for trademark protection. See 15 U.S.C. § 1127. The source identifying function of a mark
simply means that the consumer expects “all goods with the same mark
to come from a single, but anonymous or indistinguishable source.” 1 McCarthy on Trademarks and Unfair
Competition § 3:9 (4th ed. 2001). The
consumer need not be able to identify the source by its specific name. As Judge Jerome Frank has stated, "[i]t
matters not whether the customers know just who is the source.” Mastercrafters Clock & Radio Co.
v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 105
U.S.P.Q. 160 (2d Cir. 1955). Likewise,
Respondent argues and the Panel finds that there “is no evidence whatsoever
that the mark ‘Birmingham’ distinguishes the
goods and services of [Complainant]
from the goods and services of any other entity.” Response at 3[a]. See City
of Myrtle Beach v. Info. Centers, Inc., FA 103367 (Nat. Arb. Forum Mar. 8, 2002) (“The
CITY OF MYRTLE BEACH [mark] does not serve as a unique source identifier and
does not qualify as a trademark in
which Complainant has rights under the
policy.”); see also Glenwood Springs Chamber Resort Assoc. Inc. v. College
Trans., Inc., FA 98825 (Nat. Arb. Forum Oct. 31, 2001)
(finding that the term GLENWOOD SPRINGS failed to function as a trademark because
it did not “serve as a unique source
identifier”).
The
Panel finds that Complainant has failed to provide any proof that it uses the
BIRMINGHAM mark as a legitimate service mark.
In its argument pursuant to paragraph 4(a)(i) of the Policy, Complainant
fails to allege that the name “Birmingham” is a trademark
or service mark. Rather, Complainant states that the “domain
name, Birmingham, is identical to the name which we wish to use for our
marketing of the
city of Birmingham, Alabama.”
Complaint at 5[a.]. A concern for courts in granting trademark rights in a geographic
term takes into account other merchants who happen to operate in
the same
market and who have as much desire to use the same geographic term for their
own competing activities. Therefore,
such geographic terms are treated like any other descriptive mark. A mark is primarily geographically
descriptive if the primary significance of the term in the mind of the consumer
is to indicate
the geographic origin of the goods or services. See In re Nantucket, Inc., 677 F.2d
95 (C.C.P.A. 1982).
The
Panel finds the term “Birmingham” to be geographically descriptive. The Panel
must also determine whether the mark has acquired
distinctiveness through use,
as is the case with any other descriptive mark. In this regard, the Panel finds that Complainant has failed to
provide sufficient evidence that the term “Birmingham” has acquired
secondary
meaning in the mind of the public. See
City of Dearborn v. Mekled, FA
99602 (Nat. Arb. Forum Nov. 12, 2001) (finding insufficient evidence that “City
of Dearborn” is a protected common law mark and,
therefore, the request to
transfer <cityofdearborn.com> was denied); see also Gardner's Super Mkts. Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14, 2002) (“In determining
whether the Complainant's mark has acquired secondary meaning, one must
consider a variety of factors, including,
but not limited to, advertising,
promotion, sales, media coverage and the length, manner and exclusivity of use
of the mark by the
Complainant.”); see also 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
Complainant must
show that the public identifies the source of the product rather than the
product itself); see also Cyberimprints.com, Inc. v. Alberga, FA 100608
(Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove
trademark rights at common law because it did
not prove the CYBERIMPRINTS.COM
mark was used to identify the source or sponsorship of goods or services or
that there was strong
customer identification of the mark as indicating the
source of such goods or services).
Complainant has not proven this element.
For Complainant to prevail, it must prove
all three elements. Because of the
Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel
makes no ruling on this issue.
For Complainant to prevail, it must prove
all three elements. Because of the
Panel’s ruling on the issue of Identical and/or Confusingly Similar, the Panel
makes no ruling on this issue.
DECISION
Complainant
having failed to prove all three elements required under the ICANN Policy, the
Panel concludes and orders that relief
shall be DENIED.
Judge Karl V. Fink (Ret.), Chair
Judge Bruce E. Meyerson (Ret.) &
Jeffrey M. Samuels, Panelists
Dated: December 29, 2004
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