DECISION

Drake A. Decker and Florida Suncoast Tourism Promotions, Inc. v. Karl Antwer and Antwer GmbH

Claim Number:  FA0404000263584

PARTIES

Complainant is Drake A. Decker and Florida Suncoast Tourism Promotions, Inc. (collectively, “Complainants”), represented by Michael Abejuela, of Dozier Internet Law, P.C., 4860 Cox Road, Suite 200, Glen Allen, VA 23060.  Respondent is Karl Antwer and Antwer GmbH (“Respondent”), Vogelsanger Str. 24/1, Koeln, DE 50816.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <floridatourism.com>, registered with Gkg.Net, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 28, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.

On April 29, 2004, Gkg.Net, Inc. confirmed by e-mail to the Forum that the domain name <floridatourism.com> is registered with Gkg.Net, Inc. and that Respondent is the current registrant of the name. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net, 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 May 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 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@floridatourism.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 14, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <floridatourism.com> domain name is identical to Complainant’s FLORIDA TOURISM mark.

2. Respondent does not have any rights or legitimate interests in the <floridatourism.com> domain name.

3. Respondent registered and used the <floridatourism.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainants claim rights in the FLORIDA TOURISM mark.  Complainants contend that they have used the FLORIDA TOURISM mark in connection with Complainants’ professional brochure distribution company for the Florida tourism market since 1998.

Complainants argue that they registered the disputed domain name <floridatourism.com> on August 3, 1998 with Network Solutions and renewed the name in June of 2003 for a period of nine years. 

Complainants argue that on November 19, 2003, Network Solutions transferred the registration for the disputed domain name to an account with the registrar Gkg.Net, Inc.  Respondents were listed as the registrants of the account.  Complainants contend that they did not authorize the transfer of the domain name registration.  Complainants stated in the Complaint that “[m]ost likely, Respondents hacked into Network Solutions database” and stole Complainants’ password to its account.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainants claim common law rights in the FLORIDA TOURISM mark as the result of the mark’s use since 1998 in connection with Complainants’ professional brochure distribution company for the Florida tourism market.

Distinctiveness associated with a mark is the determining factor in the establishment of common law rights in a mark.  Distinctiveness may take the form of either inherent distinctiveness or as the result of secondary meaning associated with the mark in the public’s mind.  In the instant case, the FLORIDA TOURISM mark is merely the combination of the geographic term “Florida” and the generic term “tourism,” which does not create an inherently distinctive mark.  Therefore, Complainants must provide the Panel with evidence that the FLORIDA TOURISM mark has acquired secondary meaning associated with the mark.  Although Complainants have asserted common law rights in the mark, no evidence has been advanced to support the assertion of common law rights in the mark.  Therefore, Complainant has failed to establish Policy ¶ 4(a)(i).  See Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity [and] . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions); 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).  

Moreover, the instant case is essentially a dispute that revolves around Complainants’ contention of fraud and theft by Respondent relating to the disputed domain name registration.  The Policy was designed to curb the online activity referred to as “cybersquatting” in order to facilitate and protect the growing Internet-based commercial activity conducted by trademark and service mark holders.  Therefore, since the instant case does not involve the practice of cybersquatting and is more accurately described as a fraudulent registration transfer, the Panel finds that this dispute may be more suitable in a court of law as it exceeds the scope of the Policy.  See Digital-Logic AG v. Krechman, FA 235827 (Nat. Arb. Forum Apr. 8, 2004) (“[T]he Panel finds that this dispute raises potential contractual issues and suggests fraudulent activity on the part of Respondent, which failed to complete the transfer of the domain name at issue and subsequently renewed the name.  Therefore, the Panel finds that the dispute is beyond the scope of the Policy.”); see also Commercial Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts).

Consistent with the foregoing, it is unnecessary to inquire into the remaining elements of the Policy as Complainant has failed to establish Policy ¶ 4(a)(i).  See Creative Curb v. Edgetec Int'l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).

DECISION

Complainant having failed to establish all of the elements required under the Policy, the Panel concludes that relief should be DENIED, and it is so ordered.

Louis E. Condon, Panelist

Dated:  June 28, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/694.html