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ADMINISTRATIVE PANEL DECISION
Baltimore Gas and Electric Company v. National Material Supply Co., LLC.
Case No. D2001-0315
1. The Parties
Complainant is Baltimore Gas and Electric Company, a corporation located in Baltimore, Maryland.
Respondent is National Materials Supply Co., LLC, located in Saint Louis, Missouri.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is ("Domain Name"): <baltimoregasandelectric.com>
The registrar is Registrars.com
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was submitted on March 2, 2001. The Response was submitted on April 7, 2001.
On April 30, 2001, Mark V.B. Partridge was appointed Sole Panelist.
4. Factual Background
Complainant is a public utility serving Baltimore, Maryland. Its trade name, BALTIMORE GAS AND ELECTRIC COMPANY, has been in use since at least 1955. In 1998, the combined revenues of Complainant and its affiliates totaled about $3.4 billion. Complainant does not own any trademark registration for the mark BALTIMORE GAS AND ELECTRIC. The principal mark used in connection with its business appears to be BGE, which has been registered and used as a domain name for Complainant's website.
Respondent's primary business appears to be the sale of discounted industrial and commercial supplies. Respondent registered the Domain Name on January 5, 2000. The Domain Name is used for a site that provides a chart of information on utility rates in Baltimore. This site is rudimentary in presentation and appears to be unrelated to Respondent's commercial supply business. At one point, it appears the Domain Name led to Respondent's site dealing with commercial supplies. Respondent claims this was a temporary mistake by its website host. At another point, the utility information website included a photograph of two women in swimsuits in a suggestive pose. There is no indication that the photograph was used as a link to an adult entertainment site.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Respondent contends that this dispute is outside the scope of the Policy because Complainant lacks trademark rights in the trade name BALTIMORE GAS AND ELECTRIC."
Respondent further claims it has a legitimate interest because made bona fide use of the Domain Name to provide utility rate information.
Finally, Respondent denies that he has acted in bad faith.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
Here, the Domain Name is identical to Complainant's trade name. Since this is not disputed, the question turns to Complainant's rights in the name as mark.
To prevail on its claim, Complainant must establish enforceable trademark rights in its trade name. Since Complainant lacks a federal registration for its alleged mark, it must rely on common law rights. Such rights can arise from use. However, the fact that it has used the trade name for many years in itself is not sufficient. To serve as a trademark, the name must be used in a manner so that the public can come to recognize it as an indication of source. Since the name is descriptive, the Complainant must also show that the name has become distinctive as an indication of a single source, and is not simply viewed by the public as a description applicable to the goods or services from various sources.
The evidence presented by Complainant to support its claim of trademark rights is very weak. The materials submitted by Complainant include annual reports and pages from its BGE.com website. The only prominent use of the name appears on the cover of the company's 1955 annual report. The name also appears in text as a reference to the company. However, the primary mark used in the materials is BGE. We are given no evidence of consumer advertising or promotional materials in which the name is used as a mark Based on the materials submitted, it would seem that consumers would know Complainant by the mark BGE, not by its trade name.
Of course, the fact that Complainant has used BALTIMORE GAS AND ELECTRIC as its trade name since 1955 is an important consideration. Under U.S. trademark law, rights in a descriptive term can be found based on "proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." 15 U.S.C. 1052. But this requirement begs the question of whether Complainant has made had substantially exclusive and continuous use of BALTIMORE GAS AND ELECTRIC as a mark.
Complainant has the burden of establishing that the Domain Name is confusingly similar to a trademark or service mark in which it has rights. The Policy is specifically limited to trade mark rights. Although personal names and trade names that serve as trademark have been properly protected under the Policy, the Policy does not extend to protection of personal or trade names in which trademark rights have not been established. Based on the evidence presented, it would be difficult to find that Complainant has satisfied its burden of proof with respect to trademark rights in the name BALTIMORE GAS AND ELECTRIC. It is similarly difficult to find a lack of trademark rights in the face of more than 45 years of use. Because of the findings stated below, it is not necessary to reach a conclusion on this issue or to seek additional evidence of rights.
Paragraph 4(b) of the Policy states:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondents’] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondents] have engaged in a pattern of such conduct; or
(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on [Respondents’] website or location.
Here, there is no evidence that Respondent has tried to sell the Domain Name for profit. Although its website is rudimentary, I am unable, in the absence of further evidence, to draw the inference that the site is a sham intended solely for the purpose passively holding the Domain Name until someone makes a substantial purchase offer. There is no evidence that Respondent is engaged in a pattern of activity involving Domain Name speculation or that Respondent has provided false or misleading contact information. Although Respondent's motive for using the Domain Name is unclear, it does appear that he is otherwise engaged in a bona fide business of selling commercial supplies. In short, the facts presented are insufficient to support a conclusion that the site is a sham for the purpose of trafficking in the Domain Name.
It is also admitted that Respondent is not a competitor of Complainant, so there is no evidence of bad faith based on an attempt to disrupt the business of a competitor.
Finally, even if we were to assume that Complainant had trademark rights in its name and that Respondent's use of Domain Name attracted some Internet users to Respondent's site based on confusion with Complainant, the requirement of "use for commercial" gain does not appear to be met. Complainant does not allege that any aspect of Respondent's site is commercial. No goods or services are sold at Respondent's site. There is no evidence of any links on Respondent's site that leads to another commercial site or that results in an affiliate fee to Respondent. Although the Domain Name once directed users to Respondent's business site, it appears that was a temporary mistake and is not currently the case.
To support its claim of bad faith Complainant claims that Respondent has no ties with Baltimore and is not in the business of providing gas service or electric power. Complainant also claims that the content of the website is misleading and that the "swimsuit" photo will tarnish Complainant's reputation. The Policy, however, does not require the Respondent to demonstrate a bona fide purpose for selecting or use a Domain Name. In addition, while content is relevant to evaluating the use of a Domain Name, the Policy is not designed to address objections to the content itself. In this case, although Respondent's motives are unclear, perhaps even suspicious, I believe the evidence presented is insufficient to meet Complainant's burden of proof with respect to bad faith registration and use.
I conclude that Complainant has failed to prove that the Domain Name was registered and used in bad faith. Therefore, Complainant's request for transfer of the Domain Name <baltimoregasandelectric.com> is denied.
Dated: May 17, 2001