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Generic Top Level Domain Name (gTLD) Decisions |
Eminent Domains Inc. v. Target
Directories Corporation
Claim Number: FA0312000221175
PARTIES
Complainant
is Eminent Domains Inc. (“Complainant”)
represented by Sandra A. Jeskie, of Duane Morris LLP, One Liberty Place, Philadelphia, PA 19103. Respondent is Target Directories Corporation (“Respondent”) represented by Adam Aptowitzer, Suite 312 - 515
Chaplin Cres., Toronto, ON, Canada M5N 2N1.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <mysummercamps.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Fernando Triana, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 22, 2003; the Forum received
a hard copy of the
Complaint on December 29, 2003.
On
December 23, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <mysummercamps.com> is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant
of the name. Intercosmos Media Group,
Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a
Directnic.Com 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
December 31, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 20, 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@mysummercamps.com by e-mail.
A
timely Response was received and determined to be complete on January 20, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on January 23, 2004.
Respondent
also filed a timely Additional Submission, which was determined to be in
compliance with the Rules on January 28, 2004.
On January 29, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Fernando Triana,
Esq. as Panelist.
After the appointment of the Panel, Complainant filed a
document named “Second Additional Statement of Eminent Domains, Inc. in
Response
to Target Directories Corporation’s Additional Statement.” This
submission was sent by the Forum to the Panel on February 3, 2004,
pointing out
that it was not in compliance with Supplemental Rule No. 7, and was considered
to be deficient.
On February 5, 2004, the Panel received a submission
from Respondent, objecting to Complainant’s deficient filing of its “Second
Additional
Statement.” Another submission was received on February 10, 2004,
insisting in the deficiency of Complainant’s “Second Additional
Statement” and
requesting a chance to respond to the same.
As a consequence, on February 11, 2004, the parties
received the Panel’s “Order for Additional Submissions and Extending Time for
Rendering a Decision,” admitting Complainant’s “Second Additional Statement,”
granting Respondent a term due on February 16, 2004
to give response to such
statement, and extending the term to issue a decision until February 23, 2004.
A timely submission from Respondent was received on
February 16, 2004, in compliance with the Panel’s order.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has established rights in its SUMMERCAMPS.COM mark through
continuous and widespread use of the mark in
commerce from November 8, 1995.
The website related to the <summercamps.com> domain name soon became the
premier website for
finding summer camps online. By 2002, the
<summercamps.com> website received roughly 2 million hits and it offered
information
on over 17,000 camps. Complainant’s mark attained national
recognition when Complainant was interviewed live on Ziff Davis TV in
San
Francisco on March 23, 1999 and a summary of the <summercamps.com>
website was posted on Ziff Davis’ website for having
the best model for finding
summer camps on the Internet. According to Complainant, its long and extensive
use of SUMMERCAMPS.COM
has resulted in established goodwill in the mark, which
has been widely recognized by others as a source indicator for Complainant’s
services. The mark is distinctive and has also acquired secondary meaning.
Complainant’s mark SUMMERCAMPS.COM has sufficient association
with Complainant
such that common law trademark rights exist.
Respondent’s
<mysummercamps.com> domain name, registered in July 2003, is
confusingly similar to Complainant’s SUMMERCAMPS.COM mark. The only difference
is the addition
of the word “my” before “summercamps,” which fails to
differentiate the disputed domain name from Complainant’s mark and does not
create a new distinct mark capable of overcoming a claim of confusing
similarity. Respondent’s domain name has caused actual confusion
for
Complainant’s customers.
Complainant
alleges that Respondent has no rights to Complainant’s mark, SUMMERCAMPS.COM.
Until November 2003, Mr. Christian Veillette
and Mr. Evan Heltay, were listed
as contacts for the <mysummercamps.com> website and were employees
of Complainant. Mr. Heltay had access to SUMMERCAMPS.COM’S
confidential/proprietary business information, including SUMMERCAMPS.COM’s
extensive customer list containing
over 17,000 summer camps, its website design
and associated technology, its marketing and promotional strategies and
materials and
its financial accounts.
Mr. Veillette also had access to SUMMERCAMPS.COM’s proprietary
information concerning its website traffic statistics, website design
and
related technologies. Mr. Heltay and Mr.
Veillette were never authorized to use Complainant’s mark for any purpose other
than for SUMMERCAMPS.COM. Nevertheless,
the registration of the <mysummercamps.com>
domain name occurred during Mr. Heltay and Mr. Veillette’s ongoing business
relationship with Complainant.
Complainant
states that Respondent’s use of the domain name was done intentionally to
divert Complainant’s customers to Respondent’s
own site for commercial gain and
there is therefore no legitimate noncommercial, or fair use of the disputed
domain.
The
<mysummercamps.com>
website
falsely states that “in 2000-2001 over 1.3 million unique visitors accessed
[the site].” Complainant asserts that
Respondent is obviously referring to SUMMERCAMPS.COM’s traffic statistics
because <mysummercamps.com> had not even been registered until
July 2003. Respondent copied information from the SUMMERCAMPS.COM’s website.
Respondent, through
Mr. Heltay, also falsely informed SUMMERCAMPS.COM’s
customers and the critically important DMOZ directory, which establishes the website listing position
on the major search engines, that SUMMERCAMPS.COM had changed its name to <mysummercamps.com>.
These actions are neither a
bona fide offering of services, nor a legitimate non-commercial or fair use.
Respondent has attempted
to trade on Complainant’s name, reputation and
goodwill, in bad faith.
According
to Complainant, the <mysummercamps.com> domain name was registered
for the primary purpose of intentionally attracting, for commercial gain,
Internet users to Respondent’s
website by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation or
endorsement of
that website. As former business associates of Complainant, Mr.
Heltay and Mr. Veillette, had access to Complainant’s privileged
information
regarding Complainant’s website. Complainant states that Mr. Heltay tried to
disguise his registration of <mysummercamps.com> by using Target
Directories Corporation. Complainant further contends that Respondent’s false
suggestion of a non-existent affiliation
with Complainant is evidence of bad
faith.
As
a consequence, Complainant requests that the Administrative Panel issue a
decision that the contested domain name be transferred
to Complainant.
B.
Respondent
According
to Respondent, the Complaint is based on two fundamental misstatements: (i)
that the business associated with SUMMERCAMPS.COM
belongs to Complainant; and
(ii) that Complainant has rights to the domain name in question.
Respondent
asserts that Complainant is a domain name reseller, and has registered at least
39 domain names dealing with a variety
of topics. Complainant’s modus operandi
is apparently to set up a web page with nominal information concerning the
subject matter
of the URL and request that anyone interested in developing the
site contact them.
On
September 1st, 1999, Netpostmaster Inc. (“NPM”), entered into an
agreement with Complainant to develop a business of an online directory of
summer
camps and camp jobs for use by parents, summer camps and prospective
employees. The agreement stipulated that Complainant was to
incorporate a new
company called Summercamps.com Inc. whose sole asset would be ownership of the
URL <summercamps.com>, but
any assets of the business (except the name)
were to be developed and held by NPM. Despite its obligations, Complainant
never transferred
registration of <summercamps.com> into a separate
corporation and it remained the property of Complainant solely. Ownership
of
the business, business tools and assets (excluding the URL) remained with NPM.
Respondent
explains that from October 2000 until September 2001, Mr. Heltay was the
employee at NPM in charge of implementing NPM’s
obligations under the
agreement. In September 2001, Mr. Heltay’s status changed from employee to
independent contractor but he remained
responsible for NPM’s obligations under
the contract. In or about September 2002, NPM approached Mr. Heltay with an
offer to give
him the business, business tools and assets involved in the directory
business. Mr. Heltay accepted and ran the business as a sole
proprietor. Mr.
Heltay spoke with Complainant and they agreed to deal with questions regarding
ownership of the name and possible
payment at a later date. In the summer of
2003, Mr. Heltay proposed to compensate Complainant for the eight months he
spent operating
his business under <summercamps.com> and to purchase the
URL from Complainant. The negotiations failed so Mr. Heltay registered
<mysummercamps.com>
under his new business name of Target Directories Corporation and continued
his business under this name. Complainant has in turn
misappropriated the logo
and slogan without permission from Mr. Heltay.
Respondent
contends that Complainant has not met its burden to prove by a preponderance of
credible, relevant and admissible evidence
that the domain name is identical or
confusingly similar to a mark in which it has rights. The hits
<summercamps.com> received
by 2002 were not a result of Complainant’s use
of the mark but rather Mr. Heltay’s ongoing development of his business.
According
to Respondent, the term “summer camps” is a commonly used generic term used to
describe children’s camps run in the summer
months when most children are on
vacation from school. There is no commonly accepted substitute term for this
noun. Furthermore,
a simple search of the Google Internet search engine reveals
thousands of common uses of the phrase “summer camps” in connection
with camps
run by many different organizations, none of which are in any way related to
Complainant. Accordingly, it is a generic
phrase. No one can have exclusive
rights over a generic term. Under ICANN Policy, registration of a domain name
incorporating merely
a common word or term to use for a business, as here,
establishes Respondent’s legitimate interest.
Respondent cites several panels to support this.
If
the Panel finds that the term “summer camps” is not sufficiently generic,
Respondent submits that Complainant must demonstrate
that the term has acquired
secondary meaning. In order to establish secondary meaning Complainant must
establish that the public
associates the asserted mark with goods and services
provided particularly by Complainant. There is no evidence here of secondary
meaning as the term is understood in the case law. Complainant has not
registered this URL as a trademark under either American or
Canadian law. There
is no evidence submitted by Complainant that when Internet users use the term
“summer camps” they are expecting
goods or services provided by Complainant
(neither should there be as the principal business of Complainant is a domain
name reseller).
Complainant has not met the burden of proving secondary
meaning.
Mr.
Heltay has been carrying on the business of an online directory for summer
camps first as a sole proprietor and then under the
name of Target Directories
Corporation since 2002, and has earned his livelihood from the operation of
this business. Where Respondent
uses the domain name in connection with a
legitimate business he has a legitimate interest in the domain name. Mr.
Heltay’s legitimate
rights to the name <mysummercamps.com> precede
the Complaint by approximately 1.5 years.
Finally,
Respondent contends that it has acted in good faith in the registration and use
of the domain name <mysummercamps.com>. Complainant has failed to
prove all three (3) elements it is required to do under the Policy.
C.
First Additional Submissions
·
Complainant
In its
first additional submission, Complainant contends that it is false that
Complainant is nothing more than a “domain name reseller.”
Prior to
Complainant’s partnership with Netpostmaster (“NPM”) or Mr. Heltay’s
involvement with Summercamps.com, Inc., <summercamps.com>
had been
identified as having the best model for finding summer camps on the Internet.
Complainant
believes that nothing contained in the Response in any way diminishes
Complainant’s argument that the SUMMERCAMPS.COM
mark has acquired secondary
meaning. Complainant cites several previous panels’ decisions in this regard.
Complainant
states that by Mr. Heltay’s own admission, he made an offer to Complainant to
purchase the <summercamps.com> URL.
Hence, Mr. Heltay recognized the significant value of the
SUMMERCAMPS.COM mark owned by Complainant and further recognized that he
had no
interest in the mark.
Complainant
denies that it contacted NPM to “develop a business of an online directory of
summer camps and camp jobs.”
Complainant states that its site had long since achieved national
written and televised acclaim. NPM
contacted Complainant, after having seen the publicity surrounding the
<summercamps.com> site. NPM and
Complainant entered into an Agreement, so that NPM could provide Complainant
with virtual tour technology for the <summercamps.com>
site. In exchange,
NPM was given the opportunity to acquire equity in Summercamps.com only by
selling virtual tour advertising packages
on the <summercamps.com>
site. By the express language of the
agreement, if there was a default by NPM, it would have no rights in
Summercamps.com other than the
equity (if any) it had already obtained as the
result of its sale of the virtual tour packages. As of November, 2002, NPM had
failed
to provide any documentation of the requisite number virtual tour
packages at the preset determined price, which formed the basis
for any
potential equity. Hence, on November
27, 2002, Complainant, through its counsel, sent NPM a default letter. NPM
failed to cure the default and the agreement
was therefore void ab initio. As of November 27, 2002, NPM had acquired no
equity interest in Summercamps.com and thus, had no equity or rights whatsoever
to confer
upon Mr. Heltay.
Respondent’s
further assertions that Mr. Heltay ran Summercamps.com as a sole proprietor
also fail to comport with reality. Mr.
Heltay was nothing more than the Director of Sales of Marketing for
Summercamps.com. Complainant, not Mr. Heltay, fully funded
the business of
Summercamps.com, providing Mr. Heltay with monies to support the activities of
Complainant’s business and allowing
Mr. Heltay access to the income of
Complainant’s business during his relationship with Complainant. Respondent and Mr. Heltay’s misappropriation
of Complainant’s business assets are very serious and egregious offenses that
will be
properly addressed before a court of proper jurisdiction.
According
to Complainant, Respondent does not dispute the facts and supporting documents
showing that <mysummercamps.com> domain name was registered for
the primary purpose of intentionally attracting, for commercial gain, Internet
users to Respondent’s
website by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
that website. Respondent’s registration
of a copycat website, <mysummercamps.com>, is nothing more than an
obvious attempt to trade on Complainant’s well-established goodwill, name and
reputation. Mr. Heltay’s statistics on
web traffic for <mysummercamps.com> further evidences Respondent’s
success at diverting traffic from <summercamps.com>. These actions clearly
show that Respondent
exhibited bad faith.
The
parties submissions fully support Complainant’s claims that all three (3)
elements of the Policy are met. As
such, Complainant respectfully requests that <mysummercamps.com>
be transferred to Complainant.
·
Respondent
Respondent
insists that Complainant has the burden to provide proof of valid, subsisting
rights in a mark that is similar or identical
to the domain name in question. The evidence
submitted by Complainant purporting to show that its mark has
acquired secondary meaning is wholly insufficient for this purpose. Besides tTComplainant must show that the
public associates the mark with the services provided by Complainant. Mention on a single
television program, even many programs for many hours, does not
necessarily satisfy
this burden.
Complainant
implicitly asserts that if <summercamps.com> was the premier
online website for summer camps or had gained national
recognition it has de facto attained secondary meaning. Respondent
contends that this burden can only be satisfied where there is proof that the
average member
of the public associates SUMMERCAMPS.COM with an online summer
camp directory. There is no such evidence here and in fact, there
is evidence
to the contrary.
With
respect to the
cases cited by Complainant concerning findings of secondary meaning in
ordinary English words, Respondent states that in all cases the mark was
registered. Unlike
the marks cited by Complainant, SUMMERCAMPS.COM.COM
is not a registered trademark, and it retains its status as a string of generic
words.
Respondent
categorically denies that the domain name in question was registered and is
being used in bad faith. Respondent contends
that the business run under
SUMMERCAMPS.COM was legally owned by NPM and is now owned by Respondent.
Further, Respondent submits
that the testimonials, slogan/design, traffic
statistics and traffic are property (to the extent they are property) of the
business
owned and run by Mr. Heltay. Respondent submits that the fact that
both sites use them is not evidence of bad faith but rather a
legal difference
of opinion.
In
response to Complainant’s submission that it funded the business of
Summercamps.com, Respondent again points out that Complainant
must but has not
submitted any evidence of this claim. However, Respondent submits evidence that
it in fact absorbed all costs of
the business and also reimbursed Complainant
for expenses it incurred.
Respondent
denies Complainant’s allegation that it misled the DMOZ directory into believing
that the <summercamps.com> website
changed its name and puts Complainant
to strict evidentiary proof that such is the case. Finally, Respondent submits
that Mr. Heltay’s
statistics on web traffic should not be taken as evidence of
Respondent’s success at diverting traffic from <summercamps.com>
but
rather evidence that Mr. Heltay is using the experience he has to run a
successful business based on his own ingenuity, good
faith and hard work.
Respondent
presents a jurisdictional issue. Due to the fact that Complainant explicitly
states that some of the matters discussed
by the Response will result in court
action, Respondent admits that it is also considering legal action to recover
misappropriated
intellectual property. Whereas it was unclear from the Complaint
whether the Panel had jurisdiction to hear this dispute it is now
clear that
this dispute involves legal issues surrounding ownership rights of the business
and, it is therefore submitted, that the dispute is beyond the jurisdiction
of this Panel.
Respondent
submits that even if Mr. Heltay were legally incorrect, his belief that he was
legally entitled to the business is evidence
that Mr. Heltay registered <mysummercamps.com>
and uses it in good faith. That is, a mistake of law cannot be taken as evidence
of bad faith. Respondent requests that the Complaint
should be denied.
D.
Second Additional Submissions
·
Complainant
Complainant’s
Second Additional Submission is filed because Complainant feels that it is
necessary to correct numerous misstatements
of fact and law submitted by
Respondent.
Complainant
states that there is no jurisdictional issue which prevents this Panel from
transferring <mysummercamps.com> to Complainant. Although there
are issues relating to Respondent’s and Mr. Heltay’s misappropriation of
Complainant’s intellectual
property and business assets, they have not yet been
submitted to the court and there is nothing that prevents this Panel from
deciding
this case.
With
regard to its rights to the SUMMERCAMPS.COM mark, Complainant contends that the
Policy does not distinguish between registered
and unregistered marks. There is
sufficient evidence to demonstrate that Complainant has common law rights in
the mark. Complainant
has invested considerable time and effort in establishing
an association between SUMMERCAMPS.COM and its services for over seven
(7)
years. During that time, Complainant’s site was extensively visited on the
Internet and received 1,236,654 hits from November
1998 to July 1999. By 2001,
<summercamps.com> had 1.3 million visits to its site. These numbers were
used by Mr. Heltay in
a promotional piece prepared by him while in his position
as Director of Sales and Marketing for SUMMERCAMPS.COM. These figures
demonstrate
how the <summercamps.com> site has been relied upon by the
general public for its summer camp information. In addition, the
extensive
promotion performed by Complainant via print advertising, press, television,
tradeshows and search engine promotion have
resulted in the public uniquely
identifying SUMMERCAMPS.COM with Complainant. The mark has therefore
established sufficient secondary
meaning so that common law rights exist.
According
to Complainant, Respondent has not shown evidence to prove that it “owns” the
business. NPM owned no equity in SUMMERCAMPS.COM
and neither does Mr. Heltay.
Respondent’s claims that it and Mr. Heltay paid all expenses associated with
SUMMERCAMPS.COM are belied
by an overwhelming amount of evidence, which is
submitted by Complainant with this Second Additional Statement.
Complainant
contests Respondent’s evidence of the lack of confusion among the public.
Complainant asserts that the evidence filed
by Respondent consist of self
serving e-mails to costumers and is not sufficient to this end. On the
contrary, Complainant’s evidence
of confusion is composed of unsolicited
statements of costumers who are confused by <mysummercamps.com> and
Respondent’s improper statements about its relationship with Complainant. Even
Mr. Heltay expresses his confusion in response
to an e-mail inquiry about
SUMMERCAMPS.COM and <mysummercamps.com>.
Based
on the above, Complainant respectfully requests that this Panel immediately
transfer <mysummercamps.com> to Complainant.
This
Second Additional Submission from Complainant was considered by the Forum as
deficient in accordance with Supplemental Rule No.
7. Notwithstanding, the
Panel decided to consider this material as part of the file and take it into
account in this decision.
·
Respondent
Respondent
agrees that unregistered trademarks may be entitled to protection under the
Policy. However, in this case the mark in which
Complainant claims interests is
an unregistered generic term and in order to be entitled to protection
Complainant must demonstrate
that the mark SUMMERCAMPS.COM has acquired secondary
meaning. Respondent submits that the test in this regard is whether the public
associates the asserted mark with the goods and services of Complainant and it
is Complainant who has the burden of proof in this
regard.
Complainant
cites the number 1.3 million hits on the <summercamps.com> website as
evidence that the public associates SUMMERCAMPS.COM
with Complainant. The term
‘hit’ refers to a communication between the browser on an Internet user’s
computer and the computer server
upon which a website is hosted. When a browser
requests a webpage from a server, the html code and each graphic comprise a
separate
hit so that a site with 20 graphics would mean 21 hits, and each time
a user returns to that main page or the page is refreshed by
the user, the
error would be magnified. Hence, the ‘hits’ statistic is meaningless and
certainly does not refer to the number of
individual visitors to a site.
Therefore, the conclusion that the number of visitors to
<summercamps.com> represents a very
significant percentage of people
looking for summer camps is unfounded and misleading. The evidence submitted by
Respondent in previous
submissions supports the contention that SUMMERCAMPS.COM
was not a significant market player. Once the erroneous contention that
1.3 million
hits over eight months translates into 1.3 million visitors is corrected, a
substantial pillar of Complainant’s argument
that it has acquired common law
rights in the mark SUMMERCAMPS.COM falls.
Respondent
contends that Complainant has not submitted the necessary evidence to meet the
test that it has established common law
rights in the mark SUMMERCAMPS.COM. The
test which must be met is whether the public associates the mark with
Complainant, this requires
evidence not of Complainant’s actions, but rather
the public’s. All the evidence submitted by Complainant relates to the actions
of Complainant. Were the test whether Complainant attempted to create an
association in the public’s mind between the mark SUMMERCAMPS.COM
and
Complainant, such evidence might be relevant. However, the test is whether the
public has such an association not the extent
to which Complainant attempted to
create the association. Respondent submits that appropriate evidence to meet
the test could include, inter alia, evidence of market share, focus
group testing, or evidence of popular usage of the term “summer camps” in
connection with the services
of Complainant. No evidence of this type has been
submitted, for an obvious reason, the public does not associate the term “summer
camps” with Complainant.
Insofar
as Complainant suggests there is confusion over the issue of ownership of
Respondent’s business, such confusion over non domain
name issues suggests that
jurisdiction over the entire dispute rightfully belongs in a court. The
business of the online directory
was never owned by Complainant. Complainant
only owns and owned rights in the URL <summercamps.com>. Respondent
further submits
that the corporation Summercamps.com Inc. owns nothing of
relevance to this dispute. The agreement between Complainant and NPM describes
a joint venture relationship whereby NPM would continue to own the business and
over the course of the agreement would earn equity
in the domain name for
payment. Apparently, NPM never received this equity but that does not change
the nature of its ownership interest
in the business. Absent clear contractual
evidence to the contrary, the presumption must be that the entity which pays
the business
expenses, has the business knowledge, makes the business decisions
and operates the business on a day to day basis owns the business.
NPM
satisfied these criteria, and was within its rights to give that business to
Mr. Evan Heltay.
According
to Respondent, Complainant’s point regarding the payment of expenses of Respondent’s
business is unclear. As the registered
owner of the domain name under which
Respondent operated its business, Respondent and Complainant were involved in a
very tight symbiotic
business relationship. Respondent concedes that it was
probable and likely inevitable that Complainant would pay certain expenses
of
Respondent. However, Respondent offered
to reimburse Complainant for this amount. There is no evidence as to the nature
of amounts, if any, spent
by Complainant on Respondent’s business and whether
such amounts applied to expenses of Respondent’s business or Complainant’s.
However,
it is clear that Respondent was responsible for and paid the vast
majority of expenses associated with his business.
Complainant’s
comments that Respondent’s arguments are somehow diminished because it included
two emails to prove that there is no
confusion between <mysummercamps.com>
and SUMMERCAMPS.COM are particularly disingenuous. It was Complainant that
only provided two examples of such confusion in its Complaint,
and Respondent
only contacted those same two people for clarification. Furthermore, Respondent
again submits that it is Complainant’s
burden to prove the potential for
confusion not Respondent’s to disprove. Respondent again submits that
Complainant has failed to
meet its burden in this regard.
Based
on this and the previous submissions, Respondent requests that the remedy
sought by Complainant be denied. Furthermore, Respondent
requests that any
further submissions by Complainant be ignored as they are well beyond the
normal period for accepting submissions
and any further elongation of this
arbitration process constitutes undue hardship on Respondent.
This
Second Additional Submission from Respondent was considered by the Forum as
deficient in accordance with Supplemental Rule No.
7. Notwithstanding, the
Panel decided to consider this material as part of the file and take it into
account in this decision.
FINDINGS AND 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.”
Likewise,
paragraph 10 (d) of the Rules for Uniform Domain Name Dispute Resolution
Policy, provides that “[t]he Panel shall determine
the admissibility,
relevance, materiality and weight of the evidence.”
In the
present case, the Panel wants to place emphasis in the importance of the evidence
filed by the parties to prove their assertions,
which has been studied to
determine its relevance and weight in arriving to a decision. The Panel wishes
to clarify that the statements
that have been accompanied by evidence have been
given more importance than the mere statements made by the parties without
further
demonstration of their existence. Likewise, the Panel has taken into
account that each party has been emphatic in contesting most
of the evidence
filed by the other party.
Paragraph
4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(2)
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.
Complainant
contends that it has established common law rights in the SUMMERCAMPS.COM mark
through continuous and widespread use of
the mark in commerce since 1995.
Complainant also states that its mark has acquired secondary meaning, so that
the public clearly
identifies SUMMERCAMPS.COM with the goods and services
provided by Complainant. On the contrary, Respondent asserts that
SUMMERCAMPS.COM
is a generic term that cannot be entitled to trademark
protection, and that Complainant has not filed evidence to demonstrate that
the
expression has acquired secondary meaning.
It
is the Panel’s task to determine whether or not Complainant holds any trademark
rights over the term SUMMERCAMPS.COM. The worldwide
accepted definition of a
trademark, involves the concept of distinctive force as the most relevant
element. This distinctive force
gives a sign the capability to identify the
products or services of its owner and differentiate them from the products or
services
of other participants in the market. A sign lacks of enough distinctive
force when it is generic, confusingly similar to a previous
trademark, or
descriptive, among other causes.
In
the case of generic and descriptive terms, such condition must be analyzed in
connection with the kind of products or services
that are identified with the
sign. Taking into account that SUMMERCAMPS.COM is meant to identify a service
of providing information
on the Internet on the summer camps industry, such
sign can be considered as descriptive of the services identified by it.
SUMMERCAMPS.COM
could be generic if it was used to identify summer camps
directly. However, the service rendered through SUMMERCAMPS.COM does not
correspond to a summer camp, but rather a service of on-line information on
summer camps, which makes the sign a descriptive one.
A
descriptive term can achieve distinctive force when due to its use and
recognition by the consumer public, the word gets a secondary
meaning that
allows it to identify products or services without any risk of confusion in the
market. In this case the descriptive
term can become a trademark.
When
a sign is registered as a trademark before a Trademark Office, it is surrounded
by a presumption of existence of sufficient distinctive
force. The mere act of
registration is a recognition of the distinctiveness of the sign, so that the
owner is granted with an exclusive
right over the trademark, which entitles him
to prevent any third party from using the registered sign or any other sign
confusingly
similar to it.
Notwithstanding,
when the sign is not registered, such presumption of distinctiveness is not
present, and the trademark owner has
the burden to demonstrate that it has
achieved common law rights over the mark. Common law rights arise out of the
use of a mark
in commerce in connection with goods or services, and might only
exist in jurisdictions that acknowledge the existence of such rights,
as in the
case of the jurisdiction of the United States of America, country of
Complainant[1].
It
is not difficult to demonstrate the distinctive force of a fanciful or
arbitrary word that is used in commerce. However, when the
term is not
fanciful, but descriptive, the test of common law rights tends to be more
drastic, as it involves the proof of secondary
meaning.
In
the present case, the Panel has to determine whether or not the term
SUMMERCAMPS.COM is a common law trademark, and to that end,
the Panel will have
to consider whether or not SUMMERCAMPS.COM has achieved secondary meaning.
Concerning
common law trademarks, it is important to clarify that the Policy does not
distinguish between registered and unregistered
trademarks. This issue has been
addressed deeply by previous Administrative Panels, such as in the case of Museum
of Science v. Asia Ventures, Inc.[2]:
“As
to the first question, the wording of the Paragraph 4(a) (i) to "trademark
or service mark" has been interpreted by
numerous Panels in the past to
include both registered marks and the common law marks. See inter alia The
British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050;
United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case
No. D2002-0005, The Professional Golfers’ Association of America v. Golf
Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn
Institute of Arts and Sciences v Fantastic Sites, Inc. National Arbitration
Forum No. : FA0009000095560. With respect to the latter, the Complaint must
show that the mark has been in
continuous use (See United Artists
Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel
TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the
mark achieved secondary meaning ("distinctive character") in
association with the
Complainant. (See Australian Trade Commission v.
Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu
Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari
Yatirimlar A.S. v. Maksimum
Iletisim A.S., WIPO Case No. D2002-0726).”
Unregistered
trademarks are entitled to protection in several jurisdictions around the
world. In the present dispute, Complainant’s
claim of common law rights over
the sign SUMMERCAMPS.COM is supported by the acceptance of such rights by the
jurisdiction of the
United States of America.
The
test to determine whether or not a sign can be protected as a common law mark
is highly exigent. Although the elements to demonstrate
common law rights may
vary, the following has been accepted as evidence of common law trademarks by
previous Administrative Panels:
“1)
Advertising, marketing, or promotional use of the alleged common law mark
2)
Third Party references to the alleged common law mark
3)
Widespread evidence of recognition among Internet users
4)
Sales of services under and by reference to the alleged common law mark
5)
Appropriate showing of prior continuous use in a given product and territorial
market over a sufficiently long period of time.”[3]
Complainant
has provided documents aiming to prove common law rights over SUMMERCAMPS.COM
“through continuous and widespread use of
the mark in commerce from November 8,
1995.” Most of the evidence
filed by Complainant was contested by Respondent. Due to the fact that
Respondent contends that Complainant’s
sign cannot be protected as a trademark,
the evidence filed by Complainant will only suffice if it also leads to a
demonstration
of secondary meaning.
The
test of secondary meaning requires other elements not necessary for the test of
common law rights. Some of the factors that have
been used by other
Administrative Panels to determine whether a mark has acquired a secondary
meaning, are: “(1) advertising expenditures,
(2) consumer surveys linking the
mark to a source, (3) unsolicited media coverage of the service, (4) sales
success, (5) attempts
to plagiarize the mark, and (6) length and exclusivity of
the mark’s use.”[4] All of these
factors must lead the Panel to conclude that: “in the minds of the public, the
primary significance of [the mark <summercamps.com>] is to
identify [Complainant] as the source [of its website service] rather than the
[service] itself.”[5]
Complainant
in the present domain name dispute has filed evidence trying to demonstrate its
advertising expenditures, recognition
among the public and unsolicited media
coverage of the service, among other facts. The Panel notices that Complainant
has not provided
any piece of evidence that demonstrates that the consumer
links SUMMERCAMPS.COM with Complainant, such as consumer surveys. Likewise,
Complainant’s evidence of unsolicited media coverage of its services, is very
scarce. Despite the fact that Complainant placed emphasis
in demonstrating that
is has worked hard to promote its website, this does not suffice to show that
such efforts succeeded and that
the public links SUMMERCAMPS.COM with
Complainant and its services.
Complainant
failed to demonstrate that the public associates SUMMERCAMPS.COM directly with
the services rendered by Complainant. The
number of hits received by
Complainant’s website are not a proper indicator of Complainant’s mark
recognition among the public. Regardless
of the fact that Respondent contested
the validity of these hits, the Panel believes that there are many factors that
may affect
the number of visitors to a website. It is clear for the Panel that
SUMMERCAMPS.COM is a descriptive term for the service of on-line
information on
summer camps. The registration of such domain name by Complainant was probably
possible because it was made back in
1995, when the Internet boom was just
beginning. The registration of attractive domain names, which comprise generic
or descriptive
words, encompass a great business opportunity for their owners.
Notwithstanding, they must be aware of the fact that they do not
acquire
exclusive rights over such generic or descriptive words, and that third parties
can register domain names including such
words, accompanied by other words to
differentiate each domain.
Internet
pioneers registered attractive domain names, which made them easily found by
Internet users. When a user wants to look for
information on car sales on the
Internet, he would probably try one of two options: (i) use a search engine, or
(ii) enter the words
carsales and .com in the navigator, looking for a direct
source of information under <carsales.com>. The same happens with
Complainant’s site. A person looking for online information on summer camps,
would probably try <summercamps.com>
as a first option. This does not mean that the user is particularly looking for
Complainant’s site, but rather for information about
summer camps either
provided by Complainant or by any other party. The number of hits received by
Complainant’s website, even if
they translated into a number of real visitors,
is not an evidence of the public association between SUMMERCAMPS.COM and Complainant.
This
association between SUMMERCAMPS.COM and Complainant is particularly difficult
in the present dispute, taking into account that
Complainant, Eminent Domains,
Inc., does not seem to be a corporation devoted to the promotion of the summer
camps industry. On the
contrary, the corporate name of Complainant leads to
believe that its business is focused in the registration of domain names for
commercial gain, which is a plausible commercial activity, but is not precisely
the commercial activity carried out under the name
SUMMERCAMPS.COM. Due to the
fact that this argument was raised by Respondent within this proceeding, the
Panel visited Complainant’s
official website to obtain further information of
Complainant’s business. When visiting <eminentdomains.com>, the Panel
found
that Complainant announces itself as: “A domain name and web site
development corporation.” The web page shows a number of websites
owned and
developed by Complainant, such as: <antibiotics.com>, <fightacne.com>,
<frequentfliers.com>, <heartdisease.com>,
<mortgagecompanies.com>, <insurancecompanies.com>,
<skincareproducts.com> and of course, <summercamps.com>. The names of these sites show that
Complainant’s business is apparently the development of websites on a variety
of subjects, so different
among them, and not the business run through each
domain. Based on that, the Panel concludes that due to the nature of
Complainant,
it is very difficult to arrive to a finding of secondary meaning
in this case, since the public cannot easily link SUMMERCAMPS.COM
with
Complainant and its services. Additionally, the Panel notices that the name of
Complainant is not announced in Complainant’s
webpage <summercamps.com>, and hence, the
public is not clearly informed of the identity of the source of the services.
Another
factor used to determine the existence of secondary meaning, mentioned above,
is the exclusivity of the mark’s use. This is
again a critical factor in the
present dispute. Instead of being a term exclusively used by Complainant, the
word SUMMERCAMPS.COM
is composed of words that are commonly used in everyday
language, and particularly, in Complainant’s market. The term “SUMMERCAMPS”
and
its parts “SUMMER” and “CAMPS,” are English words used to designate camps that
are visited by young people during summer vacations.
Summer camps are very
popular in North America, where Complainant undertakes its business. As a
consequence, the words “SUMMER CAMPS”
are used by a vast number of participants
in the market of summer camps, including summer camps themselves, summer camps
providers,
summer camps visitors, etc. This is evidenced by entering the words
“summer camp” into a search engine like GOOGLE™, as mentioned
by Respondent.
The Panel visited this search engine on February 19, 2004, and found
approximately 1,500,000 results. The first ten
(10) results included
<summercamp.org>, <camppage.com>, <campsearch.com>,
<campstaff.com>, <acacamps.org>,
<gocamps.org>, and
<mysummers.com>. All of these
sites provide information and referrals to summer camps, the same service
offered by Complainant. All of them use the
words “summer camps” to promote
their services. Hence, the expression “SUMMERCAMPS” is not exclusively used by
Complainant, and therefore,
it is difficult for the public to associate such
words precisely with Complainant and not with any other of its competitors.
Moreover,
the addition of the suffix “.COM” does nothing to give distinctiveness to
SUMMERCAMPS.COM. Due to the fact that Complainant’s
services are rendered
through the Internet, and that Complainant is a commercial corporation, the
suffix “.COM” makes the term SUMMERCAMPS.COM
more descriptive.
In
order to further investigate the issue of exclusive use, the Panel undertook a
search before the United States Patent and Trademark
Office (“USPTO”). After
entering the words “SUMMER CAMP,” the USPTO Trademark Electronic Search System
showed forty (40) records,
including live and dead ones. The Panel reviewed all
the records and could evidence that there are more than twenty (20) marks
registered
before the USPTO, including the words “SUMMER CAMP.” However, all of
the marks registered to identify services related to summer
camps, specify that
no claim is made to the exclusive right to use “summer camps” apart from the
mark as shown. Some of these service
marks are:
-
ESF SUMMER CAMPS.
International Class 41. Reg. No. 2208138. Disclaimer: No claim is made to the
exclusive right to use “Summer Camps”
apart from the mark as shown.
-
THE ULTIMATE
SUMMER YOUTH CAMP. International Class 41. Reg. No. 2131503. Disclaimer: No
claim is made to the exclusive right to use
“Summer Youth Camp” apart from the
mark as shown.
-
CAMP DOGWOOD
SUMMER ACADEMY BETTER CHOICES BETTER CHANCES + GRAPHIC. International Class 41.
Reg. No. 2092869. Disclaimer: No claim
is made to the exclusive right to use
“Camp” and “Summer Academy” apart from the mark as shown.
-
CAMP CHANNEL –
BRINGING SUMMER CAMPS TO THE INTERNET. International Class 42. Reg. No.
2166777. Disclaimer: No claim is made to the
exclusive right to use “Summer
Camps” and “Internet” apart from the mark as shown. This example is very
interesting, taking into
account that the services identified by this mark are
identical or highly similar to the ones rendered by Complainant, i.e.,
“providing
a database of information on a global computer network regarding
summer camps for children.”
This
demonstrates that the words “SUMMER CAMP” and “SUMMER CAMPS” are not entitled
to trademark protection in the United States of
America when used in connection
with the summer camps industry.
Likewise,
the Panel found out that the only registered marks that include solely the
words “SUMMERCAMP” or “SUMMER CAMP,” without
disclaimers, designate goods or
services that do not include summer camps, and are therefore, neither
descriptive nor generic. This
is the case of the mark SUMMERCAMP, registered
under Reg. No. 2153697 to designate: “entertainment services, namely, live
performances
by a musical band,” included in International Class 41.
As
a fact that called the attention of the Panel, the USPTO search showed that
Complainant filed an application for the registration
of SUMMERCAMPS.COM, to
distinguish services of International Class 35. This service mark application
was filed on May 12, 1999 under
the Serial Number 75704111. The mark was filed
to identify “internet, electronic and on-line web site development and
maintenance
and promotion of the summer camp industry. Advertisement and
directory services of summer camps also.” The application appears as
abandoned
on March 29, 2000, after the applicant failed to respond to an Office Action.
Even though the particulars of this Office
Action are not disclosed, the Panel
believes that there are high chances that it referred to a request on the
distinctiveness of
the sign and the way in which it might be registered,
considering the services sought to be identified by it. This would mean that
Complainant might be aware of the lack of trademark rights that it has over the
expression SUMMERCAMPS.COM, and that it kept this
circumstance undisclosed to
the Panel on purpose. There are no other explanations to Complainant’s decision
of not informing the
Panel of this abandoned service mark application, moreover
when the merits of this case depend on the existence of such trademark
rights
on the head of Complainant.
The
panel in the case of Media West-GSI, Inc. v. EARTHCARS.COM, INC.[6],
concluded the following, that can be applied in its entirety to the present
controversy:
“The threshold -- and in this case, dispositive -- issue under
Paragraph 4(a) is whether Complainant has protectable "rights"
in the
mark to which it contends Respondent’s domain name is identical or confusingly
similar. (...) it is fair to infer from the
omission of any reference to
registration that the mark “freepressclassified.com” is not, in fact, registered
with the PTO or any
analogous authority. Consequently, Complainant does not
enjoy the benefit of any presumption of the exclusive right to use a mark
afforded by registration and must prove that its mark is distinctive. Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., [2000] USSC 26; 120
S. Ct. 1339, 1342 (2000).
To
be distinctive, a mark must, either inherently or through an acquired secondary
meaning, be capable of identifying the source of
a particular product or
service. Only marks that are arbitrary or fanciful in the sense of bearing no
logical relationship to the
product or service for which they are used, or
suggestive in the sense of requiring imagination to be associated with a
product or
service, are deemed inherently distinctive. Wal-Mart, 120 S.
Ct. at 1343. Complainant’s mark, <freepressclassified.com>, is not
arbitrary, fanciful, or suggestive; rather, it quite
plainly describes the very
service in connection with which it is used by Complainant: "a website
service contain[ing] classified
advertisements for a variety of products and
services." Complaint, ¶ 14. The joining of “freepress” with
"classifieds"
could add an element of distinctiveness to
Complainant’s mark if it were unique to Complainant. However, as Mr. Bonfigli’s
e-mail
correctly pointed out, and is sufficiently well known to be properly
subject of judicial notice, the use of "free press"
in the names of
English language newspapers is so ubiquitous that it can not plausibly be
argued that “freepressclassified.com” necessarily
points to The Burlington Free
Press rather than, to pick just one example, The Detroit Free Press, as the
source of the particular
Internet classified advertisement service.
(...)
The
extensive detail in which Complainant sets out its effort to promote its
website through advertising indicates its awareness that
the only route to the
recognition of its unregistered mark as protected is to have it classified as
descriptive. A descriptive mark
is one which portrays a characteristic of the
particular article or service to which it refers. Keebler Co. v. Rovira
Biscuit Corp., [1980] USCA1 237; 624 F.2d 366, 374 n.8 (1st Cir. 1980). Such marks are
entitled to protection only if they have acquired a "secondary
meaning." Wal-Mart, 120 S. Ct. at 1344; Big Star Entertainment,
Inc. v. Next Big Star, Inc., 2000 WL 420549*9 (S.D.N.Y.).
This
test requires a demonstration that the mark, by means of sufficient marketing,
sales, usage, and passage of time, has become
identified in the public mind
with a particular source of the goods or services. Id.; see also, Inwood Laboratories,
Inc. v. Ives Laboratories, Inc., [1982] USSC 106; 456 U.S. 844, 851, n. 11, [1982] USSC 106; 102 S. Ct. 2182,
n. 11 (1982); Bristol-Meyers Squibb Co. v. McNeil-P.P.C., Inc., [1992] USCA2 876; 973 F.2d
1033, 1040 (2d Cir. 1992). (...)
Complainant’s
dedication of significant resources to the promotion of its website through
advertising in its own Burlington Free Press
newspaper, on the radio and
through fliers, and its sales success as measured by the number of visits to
its website, while relevant,
are not, without more, sufficient to support a finding
that it has succeeded in creating a secondary meaning for its mark. It is
the
effect of such activities, not merely their extent, that shows actual
acquisition of a secondary meaning. Co-Rect Prods. Inc. v. Marvy!
Advertising Photography, Inc., 780 F.2d 1324, 1329 (8th Cir.
1985). Complainant has presented no evidence of consumer surveys, focus group
studies, or even substantial anecdotal evidence,
showing that consumers have
come to associate <freepressclassified.com> with The Burlington Free
Press. Likewise, Complainant
has provided no evidence of any independent or
unsolicited media coverage of its website service.
(...)
Whatever the length of use by one party, use of part or all of the mark by
third parties weakens the mark’s overall strength.
Big Star Entertainment,
Inc., 2000 WL 420 549*17; Streetwise Maps Inc. v. Vandam, Inc., [1998] USCA2 464; 159
F.3d 739, 744 (2d Cir. 1998).
In
sum, on the evidence available in this case, the Panelist cannot conclude that
"in the minds of the public, the primary significance
of [the mark
<freepressclassified.com>] is to identify [Complainant] as the source [of
its website service] rather than the
[service] itself." Inwood
Laboratories, supra. Since Complainant has failed to discharge its burden of
proof as to the threshold
element of its case under the ICANN Policy, par.
4(a), it is not necessary to reach the remaining elements: whether the domain
name
<freepressclassifieds.com> is identical or confusingly similar to
<freepressclassified.com.>, whether Respondent has
any rights or
legitimate interest with respect to <freepressclassifieds.com>, and
whether it has registered and used that domain
name in bad faith.”
Complainant’s
sign SUMMERCAMPS.COM is a descriptive and unregistered term, not entitled to
protection in the absence of sufficient
evidence of secondary meaning. The
evidence required in this case is far more exigent than the one required to
prove common law rights.
Complainant failed to support its allegation of
secondary meaning, due to the fact that the evidence presented by it does not
permit
to conclude that the public associates SUMMERCAMPS.COM with Complainant.
On the contrary, such association appears specially difficult
in the
circumstances found by the Panel.
Based
on all the foregoing, the Panel finds that Complainant does not have trademark
rights over the expression SUMMERCAMPS.COM and
then Complainant has failed to
meet the requirements of Policy ¶ 4(a)(i).
The finding with regard to the absence of
trademark rights in the part of Complainant, precludes the Panel from
considering this issue
of rights and legitimate interests. However, the Panel
notes that the parties are involved in a dispute over the same ownership of
the
business developed under the domain name <summercamps.com>, and now
carried out by Respondent through <mysummercamps.com>. The
parties’ allegations include matters of intellectual property infringement and
probably, of unfair competition. These conflicts
fall out of the competence of
this Administrative Panel and should be addressed, if that is the parties’
desire, before a Court of
Law.
As set forth above, since the Panel has
found that the domain name <mysummercamps.com> is not identical to
a trademark over which Complainant has rights, it would not be necessary to
study if Respondent has acted in bad
faith, as stated in the Complaint. The disagreements between Complainant and
Respondent, as seen in their submissions to this Panel, are beyond the borders
of a domain
name dispute, such as the one that was entrusted to this Panelist
for decision. Hence, it belongs to a Court of Law to resolve such
kind of
disputes between the parties.
DECISION
The
Panel has found that Complainant failed to prove that it has rights in its mark
for the purpose of satisfying Policy ¶ 4(a)(i).
Therefore, Complainant’s
request that the domain name <mysummercamps.com> be transferred
from Respondent to Complainant is DENIED.
Fernando Triana, Esq., Panelist
Dated: February 23, 2004
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