WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

City of Lake Worth v. John C. Becker, Inc.

Case No. D2003-0576

 

1. The Parties

The Complainant is the City of Lake Worth, Lake Worth, Florida, United States of America, represented by Edwards & Angell, LLP, United States of America.

The Respondent is John C. Becker, Inc., Lake Worth, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <lakeworthcity.com>, is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2003. On July 25, 2003, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On July 25, 2003, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on July 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 19, 2003. However, in response to the Respondentís request for more time, the Center granted the Respondent a ten (10) day extension until August 29, 2003. The Response was filed with the Center on August 28, 2003.

On September 3, 2003, the Complainant submitted a supplemental filing. Based on paragraph 12 of the Rules, the Panel has not found a need for supplemental filings from the parties and thus did not consider the Complainantís supplemental filing in reaching this Decision.

The Center appointed Dennis A. Foster as the sole panelist in this matter on September 3, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the governing authority of Lake Worth, a small city in Florida. The Respondent is a private business that uses variations of the Lake Worth name in its business. The Respondent registered the disputed domain name, <lakeworthcity.com>, on August 30, 1998.

 

5. Partiesí Contentions

A. Complainant

"www.lakeworth.org" is the Complainantís official website and provides information regarding the Cityís governmental departments, economic developments, tourist attractions, and civic activities. The website serves as a valuable resource for citizens residing in the City and tourists visiting the Lake Worth area (Complaint Annexes 5 and 6).

The <lakeworth.org> domain name utilized by the Complainant is specifically known to the consuming public as identifying the City and the departments, organizations, and resources provided by and affiliated with the City.

At the disputed domain name, the Respondent provides links to area attractions of the City and to the Respondentís various business ventures, including the Business to Business Association (Complaint Annex 8).

As a result of the Respondentís business activities, the Complainant and the areaís Better Business Bureau are currently conducting separate investigations.

The Respondentís domain name, <lakeworthcity.com>, is confusingly similar to the Complainantís <lakeworth.org> domain name.

The Respondent intentionally uses the disputed domain name to attempt to attract Internet users for financial gain by creating a likelihood of confusion with the Complainantís domain name as to the source, sponsorship, affiliation, and endorsement by the Complainant of the Respondentís services, businesses, and credibility.

Having operated a business within the City, the Respondent was well aware that the domain name he registered was confusingly similar to the Complainantís domain name.

The Respondent has no legitimate rights or interests in the disputed domain name as he has not been commonly known by this or a similar domain name, nor has he engaged in legitimate commercial, noncommercial or fair use of this domain name.

The similarities between the Complainantís and the Respondentís domain names misleadingly attract customers by creating the impression that the disputed domain name website is affiliated with or sponsored by the Complainant. The Respondent then offers commercial services to the customers attracted by this affiliation.

The Respondentís efforts to register and use the name of the Complainant in his domain name for his own business can be considered nothing other than having been done in bad faith, as such domain name can only be used by the Respondent for the primary purpose of improperly attempting to attract for financial gain Internet users whose intention in researching the subject domain name was actually to reach the Complainant.

This is not the first time that the Respondent has registered a domain name that is identical or confusingly similar to a name in which the Respondent has no legitimate rights. In SunFest of Palm Beach County, Inc. v. Electronic System Technologies, Inc., WIPO Case No. D2000-0631, October 3, 2000, the panel found the Respondent had registered the disputed domain names, <sunfest.com> and <sunfest.net>, in bad faith and with no legitimate right to register them.

The disputed domain name should be transferred to the Complainant.

B. Respondent

The Respondent offers computer support services such as custom database design, installation of and training on computer systems, local and wide area networks, hardware, software, computer forms, website hosting and design, and Internet access services.

The Respondent created the disputed domain name to help promote the City of Lake Worth, and the areaís merchants and attractions.

The Complainant has not demonstrated that it has a trademark or service mark in the name LAKEWORTHCITY. Accordingly, the Complainant has not shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047, May 7, 2001).

Respondent is not a competitor of the Complainant, so it can not be said that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. Finally, the Respondent is not using the domain name to attract for commercial gain Internet users to a website by creating confusion with the Complainant as to source, sponsorship, affiliation or endorsement.

The Complainant has not taken action against the holders of the domain names <lakeworth.net> and <lakeworth.com> that would be more similar to their website name, <lakeworth.org>. This case is brought as part of ongoing harassment by the Complainant against the Respondent. This is an attempt by the Complainant in an on-going effort to gain control of a widely popular website. On this ground, the Panel should make a finding of Reverse Domain Name Hijacking.

The Respondent is well established in the Lake Worth area and has sponsored the City of Lake Worthís largest annual festival, "The Lake Worth Street Painting Festival" for the past 5 years.

The Respondent has been using the disputed domain name since August 1998, for a bona fide offering of goods and services such as web hosting and web design.

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name, <lakeworthcity.com>, transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

A. Identical or Confusingly Similar

The Complainant, i.e., the City of Lake Worth, does not contend it has a registered trademark in the disputed domain name, <lakeworthcity.com>. Rather, the Complainant contends it has acquired trademark rights through use of the name, City of Lake Worth, to provide all of the services a city normally provides such as tourist services and commerce facilitation services. In this context, the Complainant operates a website at the domain name <lakeworth.org>.

The Respondent contends the Complainant has not acquired trademark rights in

its name, City of Lake Worth, because it is being used as a geographic name. The Respondent cites Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047, (May 7, 2001), as support for its contention.

The Panel agrees with the Respondent. In the Brisbane City Council case, the panel found that the City of Brisbane did not show that it had trademark rights in the disputed domain name, <brisbanecity.com>, even though the City of Brisbane, like the Complainant in the present Case, was offering customary municipal services using names that included City of Brisbane. The panel found that many other providers of goods and services would use City of Brisbane and thus the name of this city per se was not distinctive to the Complainant.

A panel reached a similar decision when disallowing the City of Salinas in California from asserting trademark rights arising from use relative to the disputed domain name <salinas.com> (City of Salinas v. Brian Baughn, NAF Case no. 97076, June 4, 2001). In the present Case, the Panel believes that any number of entities located in Lake Worth, Florida could use that cityís name geographically and descriptively in naming their goods and services.

There is wide consensus that geographic names per se do not have trademark rights under the Policy. The Panel notes that this also is the posture of United States federal trademark law (the Lanham Act, Title 15 United States Code, Chapt. 22, Subchapt. I, Sect. 1052). The Panel thus finds the Complainant has not satisfied its burden of proof under the Policy at paragraph 4(a)(i) to show that it has trademark or service mark rights in a name to which the disputed domain name is identical or confusingly similar.

Since the Policy requires that the Complainant prevail under all of paragraphs 4(a)(i-iii), the Panel does not need to reach the issues of whether the Respondent has legitimate rights or interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, or whether the Respondent registered and was using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

Reverse Domain Name Hijacking

The Respondent contends that the Complainant initiated this proceeding as part of a campaign to harass the Respondent (paragraph 15(e) of the Policy). The Panel does not see that the Complainant is intent on harassing the Respondent. Instead, it appears to the Panel that the Complainant actually thought it had trademark rights in its geographic name that could be recognized under the Policy. Even though the Panel finds the Complainant is wrong, the Panel does not believe the Complainant is acting in bad faith, and the Panel thus declines to find Reverse Domain Name Hijacking.

 

7. Decision

For all the reasons set out above, the Complaint is denied.

 


 

Dennis A. Foster
Sole Panelist

Dated: September 18, 2003