NATIONAL ARBITRATION FORUM
DECISION
Charlotte Center City Partners v. Sirius Networks
Claim Number: FA0812001239513
PARTIES
Complainant is Charlotte Center City Partners (“Complainant”), represented by
Candice Langston, of Charlotte Center City Partners, North Carolina, USA.
Respondent is Sirius Networks (“Respondent”), represented by Zak Muscovitch, of
The Muscovitch Law Firm, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <charlottecentercity.com>, registered with Godaddy.com,
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on
December 21, 2008; the National Arbitration Forum received a hard copy of the
Complaint on December 26, 2008.
On December 22, 2008, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <charlottecentercity.com> domain name is registered with
Godaddy.com, Inc. and that the Respondent is the current registrant of the name.
Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 6, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2009
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@charlottecentercity.com by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
On February 4, 2009, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Respondent’s domain name charlottecentercity.com is identical to the Complainant’s
domain name (and trade name) of charlottecentercity.org with the exception of the
extension.
The Complainant was formed by local business and government leaders (under the name
of Uptown Development Corporation in 1979) to facilitate and promote the economic and
cultural development of the urban core of Charlotte, North Carolina. In 1997, Uptown
Development Corporation’s name was legally changed to Charlotte Center City partners.
The name change was part of a larger marketing and communications plan that focused
on promoting a geographical area in the urban core of Charlotte called “Charlotte Center
City.” The Complainant uses the reference of “Charlotte Center City” (and the domain
name charlottecentercity.org) to communicate news and events, information about living
and working in Charlotte Center City as well as cultural, sporting, dining, and
transportation options within the area.
The Respondent has no rights or legitimate interest in the disputed domain name. It was
registered in 2004; almost seven years after the Complainant first used “Charlotte Center
City” for communication and marketing their services.
Respondent has never used the domain name “Charlotte Center City” in connection with
a bona fide offering of goods or services.
Respondent has never been commonly known by the name “Charlotte Center City” or
referenced the name in any connection with any products or services specifically
targeting “Charlotte Center City” businesses, homes, or retail.
Respondent is not making legitimate noncommercial or fair use of “Charlotte Center
City” but is using it to promote its web design, marketing, and hosting firm. Complainant
does not support or endorse Respondent’s company for any of their goods or services.
The domain name is registered and being used in bad faith.
On October 6, 2008 an email was sent informing the Respondent of the Complainant’s
desire to obtain the domain name and offering to reimburse any direct costs associated
with purchasing the domain name. On October 10, 2008, Larry Bowens, from the
Respondent’s company, spoke with Valerie L. Risch and stated that they would not be
willing to transfer or sell the domain name to the Complainant.
Respondent registered and is using the disputed domain name to intentionally attempt to
attract, for commercial gain, Internet users to its websites to promote its web design,
marketing, and hosting firm.
B. Respondent
The complainant does not claim that it is the exclusive resource for all activities that
occur within the area known as Charlotte Center City, not does the Complainant claim
that it has a monopoly of the use of the descriptive geographical term, Charlotte Center
City.
Charlotte Center City is one of three Municipal Service Districts in Charlotte. Municipal
Service Districts (“MSD’s”) are established under the Municipal Service Act and are
intended to revitalize an urban area.
The Respondent registered the domain name, CharlotteCenterCity.com (the “Domain
Name” or the “Disputed Domain Name”) on or about September 3, 2006. The
Respondent purchased the Domain Name from a third-party previous registrant who had
it listed for sale on BuyDomains.com. According to the Whois archive records, the
previous registrant created and registered the Domain Name on or about November 11,
2004.
Complainant could have registered the Domain Name, at any time prior to its original
creation on or about November 11, 2004. The Complainant in 1997 changed its name to
Charlotte Center City partners. No one, the Respondent included, made any attempt to
prevent the Complainant from registering the Domain Name if it had chosen to do so.
The Respondent decided to register the Domain Name in order to build a portal site that
focused on the huge growth area of the city which is called Charlotte Center City. The
Respondent recognized that there was a business service opportunity for the Respondent
that was consistent with its web development and marketing business. The Respondent
searched for available domains that would serve as the domain name for its project and
identified CharlotteCenterCity.com, however it was available only through
Buydomains.com which owns and sells premium names. Respondent has undertaken
bona fide preparations to use the Domain Name, as further explained under “Legitimate
Interest.”
Complainant has no trademark or service mark and the Complainant does not allege that
it does.
Without a trademark or service mark upon which to base a UDRP Complaint, the
Complainant must be dismissed. The Complainant is misusing the UDRP in order to get
the .com version of a domain name that it wants.
In the absence of registration of the mark, a Complainant must establish common law
trademark rights by demonstrating sufficiently strong identification of is mark with the
public showing the mark has acquired secondary meaning. It is next to impossible to
establish common law trademark rights and secondary meaning in the geographical
location such as “CHARLOTTE CENTER CITY,” because the name of a place is free to
be used by all and is not subject to a monopoly.
Complainant is not alleging that it has a trademark for Charlotte Center City Partners, nor
does it claim that the Domain Name is confusingly similar with such a term. The
Domain Name is nearly identical to a geographical location, and not confusingly similar
with the Complainant’s corporate name.
The use of a geographic identification in a domain name is analogous to the use of a
generic descriptive term in a domain name. It has been long held that where a domain
name is generic, the first person to register it in good faith is entitled to the domain name.
This is considered a “legitimate interest.”
The Respondent has an inherent legitimate interest in what is a clearly a descriptive and
common term denoting a particular place. Countless persons unaffiliated with the
Complainant regularly and freely use the term “Charlotte Center City,” and are fully
entitled to do so, as is the Respondent. A corporate search for the “Center City” with the
North Carolina Secretary of State shows a total of 28 corporations which all feature the
descriptive term, “Center City..
Respondent has prepared to use the Domain Name in connection with its planned
directory web site about Charlotte Center City. Respondent attached a chart which shows
all of the “Center City” domain names which the Respondent registered to use in
association with the Domain Name, which was prepared on November 3, 2007, prior to
any notice of the dispute.
Without the Complainant having trademark rights, it is impossible for the Respondent to
have registered the Domain Name in bad faith; to find otherwise would render the UDRP
absolutely meaningless.
Generic and descriptive words and phrases will generally not be transferred to a
Complainant even when a Complainant has a trademark.
There is no evidence that the Respondent registered the domain name in order to interfere
with the Complaint, nor is there any evidence that the Respondent has engaged in a
pattern of such conduct, nor is there any evidence of any attempt to sell the domain name
to the Complainant.
The fact that the subject domain name is composed solely of a common generic
descriptive geographical place name phrase weighs heavily against a finding of bad faith.
Absent direct proof that a descriptive term domain name was registered solely for the
purpose of profiting from the Complainant’s trademark rights, there can be no finding of
bad faith registration and use.
The Respondent requests that the Panel make a finding of Reverse Domain Name
Hijacking against the Complainant, pursuant to Rule 15(e) of the Rules. The complainant
has used the Policy in bad faith in an attempt to deprive a registered domain-name holder
of a domain name.
FINDINGS
For the reasons set forth below, the Panel finds that Complainant has not established that
it is entitled to the relief requested.
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.
Identical and/or Confusingly Similar
Respondent highlights the fact that Complainant does not have a registered trademark or
service mark in the CHARLOTTE CENTER CITY mark. Respondent alleges that
Complainant has not submitted sufficient evidence of secondary meaning for common
law rights associated with the CHARLOTTE CENTER CITY mark. The Panel agrees
and the Panel finds that Complainant has not established rights in the CHARLOTTE
CENTER CITY mark under an analysis of Policy ¶ 4(a)(i). See Hugo Daniel Barbaca
Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing
to find common law rights where the complainant provided little evidence showing the
extent of its use of the mark over the three years that the complainant claimed to have
been using the mark); see also Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14,
2005) (finding no common law rights where the complainant did not present any credible
evidence establishing acquired distinctiveness).
Complainant has failed to satisfy Policy ¶ 4(a)(i).
Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it
has failed to establish rights in the CHARLOTTE CENTER CITY mark, the Panel
declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec
Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the
complainant must prove all three elements under the Policy, the complainant’s failure to
prove one of the elements makes further inquiry into the remaining elements
unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA
836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s
rights or legitimate interests or its registration and use in bad faith where the complainant
could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Although the Panel has found that Complainant has failed to satisfy its burden under the
Policy, this does not necessarily require a finding of reverse domain name hijacking on
behalf of Complainant in bringing the instant claim. See ECG European City Guide v.
Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found
that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude
on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v.
Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name
hijacking requires bad faith on the complainant’s part, which was not proven because the
complainant did not know and should not have known that one of the three elements in
Policy ¶ 4(a) was absent).
The Panel finds that reverse domain hijacking has not been proven.
DECISION
Complainant having failed to established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <charlottecentercity.com> domain name REMAIN
with Respondent.
_
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 25, 2009
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