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ADMINISTRATIVE PANEL DECISION
Fort Lee Chamber of Commerce v. Carmine A. DeMarco
Case No. D2002-0291
1. The Parties
Complainant is the Fort Lee Chamber of Commerce, a New Jersey Corporation located in Fort Lee, New Jersey, United States of America.
Respondent is Carmine DeMarco, a resident of Cliffside Park, New Jersey, United States of America.
2. The Domain Names and Registrar
The domain names at issue are:
(the Domain Names).
The registrar is CSL GMbH, Rathausufer 16, Dusseldorf, Germany.
3. Procedural History
This administrative proceeding was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was received on March 27, 2002.
The Response was received on April 30, 2002.
Mark V. B. Partridge was appointed Panelist on May 22, 2002.
The Complainant submitted a Reply to the Response on May 15, 2002. Respondent object to that submission and sought leave to file a Surreply. Leave to file a Surreply was granted on June 4, 2002, and the additional submission was received June 11, 2002. All submissions have been considered in rendering this opinion.
4. Factual Background
Complainant asserts that it has used the trademarks FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER in commerce to promote civic activities for over 40 years. The Complainant has not obtained any registrations for those marks. Other than the allegation by its attorneys, Complainant has submitted no evidence relating to the length, extent or nature of its alleged use of the claimed trademarks. The record indicates that Complainant's official name is GREATER FORT LEE CHAMBER OF COMMERCE.
It appears that Complainant sponsors or is otherwise affiliated with business directory web site located at <fortlee.com>. Complainant receives advertising revenue from the site in exchange for its sponsorship.
Respondent is the Vice President of Benevanto Publishing, Inc, doing business as Virtual Town Pages ("VTP"). VTP is engaged in the business of creating and operating online advertising directories for local communities. It operates such directories in the area of Fort Lee, New Jersey, including "Fort Lee Online" (<fortleeonline.com>), "Edgewater Online" (<edgewateronline.com>), and "Cliffside Park Online" <cliffsideparkonline.com>.
Respondent is also the webmaster for the Borough of Fort Lee and maintains the official web site at <fortleenj.org>. VTP has created the official web site for the Fort Lee Film Commission and has been contacted by the Fort Lee Public Library to work on its web site. VTP also voluntarily maintains web sites for the Edgewater Business Alliance and the Cliffside Park Chamber of Commerce.
VTP began operating Fort Lee Online in or around November 1999. Respondent claims that Complainant changed the format of the <fortlee.com> web site in or around June 2000 to imitate the format of VTP's site <fortleeonline.com>. Also in June 2000, a representative of VTP, Karen DeMarco, Respondent's wife, met with Complainant about becoming a member of Complainant's organization. Respondent learned at that meeting that Complainant had an arrangement with the operator or <fortlee.com> for payment to Complainant of some advertiser monies.
Respondent registered the Domain Names on June 16, 2000.
On June 29, 2002, Respondent met with Complainant and advised that its involvement with the <fortlee.com> web site created a conflict of interest with VTP as a prospective member. In his follow-up message, Respondent stated: "I was . . . very disappointed to visit the Fortlee.com web site after our meeting, and see that they are now officially "co-sponsored" by the Fort Lee Chamber of Commerce."
On July 20, 2000, Complainant wrote Respondent about transfer of the Domain Names. On August 8, 2000, Respondent wrote Complainant stating:
"With respect to the domain name issue raised in your letter, I would like to first clarify some confusion. You used the term "return" of domain names; however, those domain names were purchased directly by Virtual Town Pages and were never owned by the Greater Fort Lee Chamber of Commerce, therefore they could not be "returned." We own many domain names, including those pertaining to a number of surrounding towns, but are not in the business of selling same. If we were to become a member of your organization and there was a domain name of our that you were interested in using, we would be glad to maintain a free web site for the Chamber at the we address—however, that scenario could only occur of course if the conflict of interest were no longer present and the Chamber was no longer competing with use in the sale of Internet directory listings and web site creation, since we certainly would not allow any of the domain names that we own to be used to divert visitors to a competing web site."
5. Parties’ Contentions
Complainant contends that the Domain Names are confusingly similar to marks in which Complainants have rights; that the Respondents have no right or legitimate interest in the Domain Names; and that the Domain Names were registered and used in bad faith.
Respondent denies that Complainant has trademark rights in the mark FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. Respondent also claims that Complainant's claims should be barred by the doctrines of laches and unclean hands.
6. Discussion and Findings
The arguments presented by the parties focus on a complicated set of facts relating to the allegation that Complainant is somehow improperly engaged in commercial activities triggering, among other things, a violation of the racketeering laws of the United States. Much of this discussion is well beyond any issue relevant to this proceeding.
Our substantive inquiry focuses instead on three issues: (1) are the Domain Names confusingly similar to a trademark in which the Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Names; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
It is undisputed that the marks claimed by Complainant have not been registered. Instead, Complainant relies on common law rights. Under U.S. law, which is applicable to both parties, Complainant must prove prior use and distinctiveness to establish common law rights. In this case, the alleged marks FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER appear to be merely descriptive. Such marks may be protected if they have acquired distinctiveness or secondary meaning through use. The factors typically considered include (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) survey evidence. Home Mortgage Corp. v. Platinum Financial Group, 149 F.3d 722 (7th Cir. 1998); Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F 2.d 1519 (11th Cir. 1991).
Here, the Complainant has failed to present any evidence of secondary meaning, except for the bald allegations of its complaint. Complainant merely alleges that trademarks have been continuously used since 1960 in connection with "countless civic activities and services to the Fort Lee community." Complainant lists various activities, but has included no exhibits or affidavits to support its claim.
The allegations of the Complainant are supported by certification that "the information contained in this Complainant is to the best of the Complainant's knowledge complete and accurate." Perhaps allegations made on that basis, if undisputed, might be sufficient to make a prima facie case. However, here those allegations are disputed. Respondent contends that Complainant's name is GREATER FORT LEE CHAMBER OF COMMERCE and denies that Complainant has made trademark use.
In support of its denial, Respondent has produced various materials relating to Complainant. These all prominently use the name GREATER FORT LEE CHAMBER OF COMMERCE. None display prominent use of FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. Respondent's denial is further supported by materials submitted by Complainant. For example, Annex 3, the whois record for Complainant's domain name registration for <ftleechamber.com>, identifies the organization as "Greater Fort Lee Chamber of Commerce." Similarly, Annex 5 is letter from Complainant's counsel to Respondent stating "This firm represent the Greater Fort Lee Chamber of Commerce."
Thus, the evidence submitted does not support Complainant's claim of right in the marks FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. However, based on the allegations of Respondent and the materials submitted with the response, I find that Complainant does use the name GREATER FORT LEE CHAMBER OF COMMERCE. If the Domain Names were deemed confusingly similar to that name, Complainant might prevail on the first element of its claim if the name had acquired secondary meaning. Therefore, we turn to examine the evidence of rights in GREATER FORT LEE CHAMBER OF COMMERCE.
In this regard, Complainant has presented no evidence. Indeed, by focusing on a claim of rights in FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER, Complainant has not even asserted rights in the mark GREATER FORT LEE CHAMBER OF COMMERCE.
Respondent's actions may be viewed as evidence of Complainant's rights in the mark GREATER FORT LEE CHAMBER OF COMMERCE. A deliberate intent to trade on another's mark may be considered evidence of secondary meaning. See Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1016 (9th Cir. 1986)("Proof of exact copying, without any opposing proof, can be sufficient to establish secondary meaning"); RJR Foods, Inc. v. White Rocks Corp., 603 F.2d 1058 (2d Cir. 1979)(defendant's intentional copying constitutes evidence of secondary meaning); Compare Co-Rect Products v. Marvy! Advertising Photography, 780 F.2d 1324 (8th Cir. 1985)(intent is a factor in determining secondary meaning but is not conclusive).
Here, the evidence suggests that Respondent adopted a name similar to Complainant's name for the purpose of inducing Complainant to discontinue its support of a competing city directory site. This highly suspicious motive may constitute bad faith intent in support of Complainant's claim of rights, but I do not believe it is conclusive of those rights. Furthermore, based on the total record presented, I find I am unable to give Complainant the benefit of any doubt, for several reasons:
First, I believe Complainant's submission is not consistent its certification that the information contained in the Complainant is "complete and accurate." I believe Complainant has been disingenuous about its very name, calling itself "Fort Lee Chamber of Commerce" when in fact its name is "Greater Fort Lee Chamber of Commerce." I am surprised by this apparent attempt at deception. It seems so unnecessary if Complainant in fact had made trademark use of its name for 40 years. The deception raises doubt about Complainant's other claims.
In addition, Complainant's failure to submit any evidence in support of its claim of trademark rights is puzzling. The failure in the original complainant might be attributed to the belief that those rights were undisputed. However, Respondent did sharply dispute those rights. Nevertheless, Complainant continued in its omission when it submitted its Reply to the Response. The Reply, which consists of over three pages of small, single spaced type, addresses many of the points raised by Respondent (including laches, free speech, genericness and lack of confusion), cites numerous cases, but still ignores Respondent's basic point that Complainant has failed to prove any trademark rights in any marks identical or confusingly similar to the Domain Names.
It is a general proposition of United States law that the failure of a party to submit evidence in its control may permit an adverse inference the facts would not be favorable to that party. See Mondich v. Brown, WIPO Case No. D2000-0004 . That principle seems applicable here, given that Complainant's failure of proof was called to its attention in the Response but Complainant did not then submit evidence of its rights.
In weighing the record, we have on one hand Respondent's admission that Complainant uses the name GREATER FORT LEE CHAMBER OF COMMERCE; the appearance of bad faith registration and use; and Complainant's contested allegation that it has protectable trademark rights. On the other hand, we have Complainant's apparent deception about its actual name and its failure to present any evidence of its trademark rights after notice that its claim of rights was challenged. Even if we accept Complainant assertion that it has used its name for forty years, we have no evidence on the other relevant factors for determining secondary meaning. There is no evidence of the manner in which the name has been used during that period of time, the nature and extent to which the name has been advertised or promoted, the volume of services provided under the name or the reaction of the public to the name.
All things considered, I find that Complainant has failed to prove trademark rights in any mark that is identical or confusingly similar to the Domain Names. The record otherwise is inconclusive on those rights. Therefore, it is not necessary to consider further the other elements of Complainant's claim or Respondent's defenses. Perhaps Complainant's failure of proof could easily be overcome, and this decision is not intended to be prejudicial to its ability to prove its rights in another forum. Nevertheless, that failure of proof is controlling here.
For the reasons stated above, Complainant's request for transfer of the Domain Names is denied.
Mark V.B. Partridge
Dated: June 18, 2002