National Arbitration Forum

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 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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