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Generic Top Level Domain Name (gTLD) Decisions |
Lee Procurement Solutions Co. v.
getLocalNews.com, Inc.
Claim Number: FA0411000366270
PARTIES
Complainant
is Lee Procurement Solutions Co. (“Complainant”),
represented by Dana M. Craig, of Lane & Waterman, LLP,
224 18th Street, Suite 500, Rock Island, IL 61201. Respondent is getLocalNews.com,
Inc. (“Respondent”), P.O. Box 156830, San Francisco, CA 94115.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bettendorfnews.com>,
registered with Network Solutions, 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.
Hon.
Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
18, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 22, 2004.
On
November 19, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <bettendorfnews.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 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 13, 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@bettendorfnews.com by e-mail.
A
timely Response was received and determined to be complete on December 13, 2004.
On December 20, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hon. Nelson A. Diaz as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it has trademark interests in the name “Bettendorf News,” and that
the disputed domain name is identical
and/or confusingly similar to
Complainant’s mark. Complainant further
asserts that Respondent is using the disputed domain name to direct Internet
users to Respondent’s website in
direct competition for the advertising
revenues and readership of Complainant.
Further, Complainant contends that Respondent is not using the disputed domain
name in connection with a bona fide offering of goods
or services. Finally, Complainant asserts that the
disputed domain name was registered and is being used by Respondent in bad
faith.
B.
Respondent
In
response, Respondent asserts, among other things, that the term BETTENDORF NEWS
is comprised of primarily geographically descriptive
and generic terms. Respondent further asserts that its
interactive online website is distinguishable from the goods associated with
Complainant’s Iowa
state trademark registration, namely, periodic community
newspaper and other publications in association therewith. Ultimately, Respondent asserts that
Complainant has proven no protectible trademark rights in the term BETTENDORF
NEWS. As to registration and use in bad
faith, Respondent asserts that it has not registered the disputed domain name
in bad faith.
FINDINGS
Complainant
Lee Procurement Solutions Co. is an Iowa Corporation with its principal place
of business in Davenport, Iowa.
Complainant is a wholly owned subsidiary of Lee Enterprises, a Delaware
Corporation also having its principal
place of business in Davenport, Iowa.
In Bettendorf, Iowa, a community that neighbors Davenport, Lee
Enterprises prints a weekly newspaper called the “Bettendorf News.”
The newspaper has been known and published as
the Bettendorf News since 1961, prior to its acquisition in 1975 by Lee
Enterprises.
Lee
Enterprises registered BETTENDORF NEWS as a trademark in the State of Iowa on
April 9, 1993. On October 1, 2002, Lee
Enterprises assigned the mark and goodwill to Complainant. Complainant entered into a licensing
agreement with Lee Enterprises, Incorporated that permits Complainant to use
the "Bettendorf
News" mark in Iowa for “periodic community newspaper
and other publications in association therewith.” The Bettendorf News currently has a circulation exceeding
9,600.
Respondent is
the current registrant of the
<bettendorfnews.com> domain name, which is registered
with Network Solutions, Inc.
Respondent’s firm GetLocalNews.com publishes an interactive online
website which allows the public to post articles, stories, and
comments
directly to the front page of the <bettendorfnews.com> site.
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 Respondent’s domain name is not identical to Complainant’s mark
because of the addition of the generic top-level
domain. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1147 (9th
Cir. 2002) ("Similarity of marks or lack thereof are context-specific
concepts. In the Internet context, consumers are aware
that domain names for
different Web sites are quite often similar, because of the need for language
economy, and that very small
differences matter"). Under paragraph 4(a) of the Policy, it is
clear that the domain name registered by Respondent, <bettendorfnews.com>,
is nearly identical, if not identical, to Complainant’s BETTENDORF NEWS mark,
both phonetically and in appearance and spelling,
and is therefore confusingly
similar. The Panel notes that the lack
of a space between the word “Bettendorf” and the word “news” is insignificant
in determining confusing
similarity.
Respondent
further argues, however, that Complainant cannot satisfy the requirements of
Policy ¶ 4(a)(i) because Complainant’s mark
is merely a combination of the
geographically descriptive term “Bettendorf” and the generic term “news.” See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000)
(“genericness, if established, will defeat a claim of trademark rights, even in
a mark which is
the subject of an incontestable registration”); see also SOCCERPLEX,
INC. v. NBA Inc., FA 94361 (Nat.
Arb. Forum May 25, 2000) (finding that Complainant failed to show that it
should be granted exclusive use of the
domain name <soccerzone.com>, as
it contains two generic terms and is not exclusively associated with its
business); see also Neusiedler Aktiengesellschaft v. Kulkarni,
D2000-1769 (WIPO Feb. 5, 2001) (“Geographic names can not be monopolized by
registering a trademark or company name. The use of
geographic terms as such in
domain names or otherwise by third parties is generally possible despite a
trade-mark registration.”);
see also Pocatello Idaho Auditorium Dist. v. CES
Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[G]eographic terms are rarely, if ever, protected by trademark law
because to do
so would preclude others from using such words in a descriptive
manner . . .[t]o hold otherwise would preempt the nominative or descriptive
use
necessary to refer to the location in question.").
Complainant
has failed to provide proof that its mark has gained secondary meaning. Complainant makes a mere recitation of
secondary meaning in the Complaint. See
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 . . . [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
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).
As
the cases cited above show, and many others which could be cited here, the
names of cities, counties, states, countries, and geographical
areas are, in
all but the most exceptional cases, available to all to refer to a geographical
location. To hold otherwise would preempt
the nominative or descriptive use necessary to refer to the location in
question.
Complainant
has not proven this element.
The Panel finds that Respondent has
rights and legitimate interests in the disputed domain name because it was
registered for use
in connection with Respondent’s interactive Internet
newspapers that allow the public to post articles, stories and comments
directly
to its site, dubbed “Citizen Journalism.” See SFX Entertainment, Inc. v. Cushway, D2000-0356 (WIPO
July 10, 2000) (finding that the Respondent had rights and legitimate interests
in the domain name where he began
demonstrable preparations to use the domain
name in connection with a bona fide offering of goods or services).
Additionally,
Respondent contends that the domain name is being used to provide news relating
to Bettendorf, Iowa. Thus the Panel
concludes that such use constitutes a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and that
Respondent has rights or legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (finding that “Respondent is using the domain <groceryoutlet.com>
for a website
that links to online resources for groceries and similar goods.
The domain is therefore being used to describe the content of the
site,” in
concluding that Respondent was making a bona fide offering of goods or services
with the disputed domain name); see also Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed
domain name to make a bona fide offering of services
bestowed rights and
legitimate interests in the domain name).
The Respondent is using the <bettendorfnews.com>
domain name for a website that links to an online forum where the public may
post news, stories, and comments, particularly, in connection
with Bettendorf,
Iowa. The domain is therefore being used to describe the content of the site.
The Panel finds that this is a legitimate
interest in the domain name.
Complainant
has not proven this element.
Complainant
alleges that there is customer confusion, particularly by its own customers
expecting to find familiar material at this
domain address. Complainant did
not, however, provide any evidence of such confusion or that this was
Respondent’s intended design. Where the
domain name is comprised of geographically descriptive or generic terms, it is
difficult to conclude that there is a deliberate
attempt to confuse. It is
precisely because generic words are incapable of distinguishing one provider
from another that trademark
protection is denied them. There are several other
enterprises that use the term "Bettendorf News," therefore one cannot
conclude that Complainant must necessarily be the special target. See Lumena
s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000)
(finding no bad faith where the domain name involves a generic term, and there
is no direct
evidence that Respondent registered the domain name with the
intent of capitalizing on Complainant’s trademark interest). Ultimately, Complainant offers no evidence
that Respondent registered the domain name in bad faith. See Loris Azzaro BV,
SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000)
(“Mere belief and indignation by Complainant that Respondents have registered
and are using the
Domain Name in bad faith are insufficient to warrant the
making of such a finding in the absence of conclusive evidence.”).
Additionally,
because Complainant’s mark is comprised of primarily geographically descriptive
and generic terms, the Panel concludes
that Respondent did not register or use
the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc.,
D2000-0223 (WIPO May 18, 2000) (finding that Respondent’s constructive notice
of Complainant’s registered mark was insufficient
to support a finding of bad
faith registration); see also Trump v. olegevtushenko, FA 101509 (Nat.
Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not
infringe on Complainant’s famous mark TRUMP,
since Complainant does not have
the exclusive right to use every form of the word “trump”).
Furthermore,
Respondent’s rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(a)(ii), allow a finding that there
was no bad faith registration or
use under Policy ¶ 4(a)(iii). See Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that Respondent did not register or use the
domain name <metagen.com> in bad faith
where Respondent registered the
domain name in connection with a fair business interest and no likelihood of
confusion was created);
see also DJF
Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1,
2000) (finding Respondent has shown that it has a legitimate interest in the
domain name because
Respondent selected the name in good faith for its website,
and was offering services under the domain name prior to the initiation
of the
dispute).
Complainant
has not proven this element.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Hon. Nelson A. Diaz, Panelist
Dated: January 7, 2005
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