1. Parties and Contested Domain Name

The Complainant in this proceeding is Clifton Park Center, of 22 Clifton Country Road, Clifton Park, NY 12065. The Respondent is ICOM, of 636 Plank Road Centre, Suite 102, Clifton Park, NY 12065. The contested domain names are cliftonparkcenter.com and shopcliftonparkcenter.com (hereafter the “Contested Domain Names”).

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution’s Website on April 19, 2001. The hardcopy of the Complaint Form and annexes were received on April 24, 2001. Payment was received on April 24, 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar’s Whois Database and confirm all the essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar of the contested domain names is NETWORK SOLUTIONS, INC., the Whois database contains all the required contact information, the contested domain names resolve to an inactive Web page and the Complaint is administratively compliant.

An email was sent to the Registrar by eResolution Clerk’s Office to obtain confirmation and a copy of the Registration Agreement on April 19, 2001. The requested information was received April 23, 2001.

The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk’s Office fulfilled all its responsibilities under Paragraph2(a) in forwarding the Complaint to the Respondent, notifying theComplainant, the concerned Registrar and ICANN on April 26, 2001. This date is the official commencement date of the administrative proceeding.

All emails were delivered. All the faxes were successful.

The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

On May 11, 2001, the Respondent submitted, via eResolution Internet site, its response. The signed version of the response was received on May 14, 2001.

3. Factual Background

This proceeding involves a dispute between parties claiming right to use the term “Clifton Park Center.” The Complainant operates a retail shopping mall known as “Clifton Park Center,” located in Clifton Park, New York. Complaint, 4(b). In addition to being the name of a shopping mall, “Clifton Park Center” has for more than 100 years been the name of one of seven hamlets that make up the Town of Clifton Park, New York. Response, Annex 1. The Respondent has registered numerous domain names that consist of or incorporate the term “Clifton Park.” Complaint, Annex 1. The Respondent utilizes at least one of these domains, cliftonpark.org, to operate a community oriented web site which sells advertising space to businesses and organizations located in the Clifton Park area. Complaint, 4(c). On May 10, 2000, the Respondent registered the Contested Domain Name cliftonparkcenter.com. On December 8, 2000, the Respondent registered the Contested Domain Name shopcliftonparkcenter.com. For some period following its registration of the Contested Domain Names, the Respondent posted a picture of the Complainant’s signage on an internet web site located at the cliftonparkcenter.com domain, and used the domain to divert visitors to the Respondent’s proprietary cliftonpark.org web site. Id., 4(c).

4. Parties' Contentions

The Complainant’s Contentions:

The Complainant asserts that it has used the trade name “Clifton Park Center” for “the identification, promotion, and leasing of its retail shopping center located in Clifton Park, New York, USA.” The Complainant asserts that the contested “cliftonparkcenter.com” domain name is identical to the Complainant’s trade name. The Complainant further asserts that the contested “shopcliftonparkcenter.com” domain name is virtually identical to the Complainant’s trade name and differs only in the addition of the word “shop” which the Complainant asserts is a common variant for domain names used in the shopping center industry.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Names because the Respondent is not commonly known by the either of the Disputed Domain Names; does not use the Disputed Domain Names in connection with the bona fide operation of goods and services; and does not otherwise possess any other rights or legitimate interests in the Disputed Domain names.

The Complainant further asserts that the Respondent has registered and used the Disputed Domain Names in bad faith as demonstrated by the following: First, the Complainant asserts that the Respondent registered the Disputed Domain Names and “other multiple similar and confusing domain names” not at issue in this proceeding without the Complainant’s knowledge or permission in connection with an unsolicited attempt to procure web site development work from the Complainant. Second, the Complainant asserts that the Respondent operates a commercial web site under the domain name “cliftonpark.org” in connection with which the Respondent sells advertising space to businesses and organizations in the Clifton Park, New York area. The Complainant further asserts that the Respondent diverts visitors from the disputed cliftonparkcenter.com domain name to the Respondent’s cliftonpark.org internet web site, and that the Respondent has displayed a photograph of Complainant’s signage on the web site located at the disputed cliftonparkcenter.com domain. Third, the Complainant asserts that the Respondent has refused to transfer the Disputed Domain Names in exchange for its actual costs “and other consideration,” and that the Respondent has indicated that the price the Complainant would have to pay to obtain transfer of the domain names is in the high five to low six figures.

The Respondent’s Contentions:

The Respondent asserts that the Complainant has no legitimate claim to exclusive use of the term “Clifton Park Center” because since the early 1800’s that term has been used to identify a geographic portion of the Town of Clifton Park, New York. The Respondent further asserts that the disputed cliftonparkcenter.com domain name should be used by the Clifton Park community at large rather than by the Complainant. The Respondent also asserts that the Complainant only began use of the trade name “Clifton Park Center” on November 17, 2000, more than six months after the Respondent registered the cliftonparkcenter.com domain name. The Respondent further asserts that the automatic redirection of visitors from the cliftonparkcenter.com domain to the Respondent’s cliftonpark.org web site was the result of a miscommunication between the Respondent at its webmaster, and that such redirection was stopped when brought to the Respondent’s attention. The Respondent further asserts that its lack of bad faith is demonstrated by its several attempts to negotiate a mutually agreeable resolution of this dispute between the parties.

5. Discussion and Findings

To prevail on its claim under the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Complainant must establish three elements: first, that the Contested Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; second, that the Respondent has no rights or legitimate interests in respect of the Contested Disputed Domain Names; and, third, that the Contested Domain Names were registered and are being used in bad faith. Policy, 4.a. The Complainant bears the burden of establishing each of these elements. Id.; see also Bournstein d/b/a Roseville On-Line v. Williams, (eResolution Case No. AF-0388) (the Complainant must establish elements for relief under Policy); Michigan Economic Development Corp. v. Paul W. Steinorth Construction, Inc. (eResolution Case No. AF-0262) (same).

Similarity Of The Contested Domain Names To A Mark In Which The Complainant Has Rights:

To establish that the Contested Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant must first establish that it does, in fact, have trademark or service mark rights to the “Clifton Park Center” trade name. The Complainant does not claim, and has failed to prove, that it has registered the term “Clifton Park Center” as a trademark or service mark with the United States Patent And Trademark Office, or any state agency. Thus, the Complainant must establish that it has common law trademark rights to the term “Clifton Park Center.”

Common law trademark rights arise from the adoption and actual use of a word, phrase, logo, or other device to identify goods or services with a particular party.” First Bank v. First Bank Sys., Inc., 84 F.3d 1040, 1044 (8th Cir. 1996). “To create trademark rights . . . a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark . . . or any similar exclusive right.” J. Thomas McCarthy, 2 McCarthy On Trademarks And Unfair Competition §16.1 at 16-3. “Terms that are descriptive of the geographic location or origin of goods and services are regarded by the law as not being ‘inherently distinctive’ marks. Since geographically descriptive terms are not inherently distinctive, they can be protected as trademarks only upon proof that through usage, they have become distinctive.” Id. § 14.1 at 14-3.

The Respondent has produced evidence demonstrating that the term “Clifton Park Center” has for more than 100 years been the name of one of seven hamlets making up the Town of Clifton Park New York. Response, Annex 1. The Respondent further asserts that the term “Clifton Park Center” has “identified a portion of historic Clifton Park remote from the mall since the early 1800s.” The Complainant asserts that “’Clifton Park Center’ is used by the Complainant for the identification, promotion, and leasing of its retail shopping center located in Clifton Park, New York.” The Complainant has not, however, alleged any facts regarding the duration, continuity, or extent of its use of the “Clifton Park Center” trade name. Given the Complainant’s proximity to the geographic “Clifton Park Center,” the Complainant has failed to establish that its use of the term in association with a retail shopping mall is inherently distinctive as opposed to geographically descriptive. The Complainant has similarly failed to assert facts which demonstrate that its trade name has become distinctive through use. For example, the Complainant has failed to assert facts demonstrating the quantity of its commercial use of the trade name, the amounts spent in promotion and advertising in association with the trade name, the scope of publicity given the trade name, or any facts showing wide exposure of the trade name to relevant consumers. See American Scientific, Inc. v. American Hospital Supply Corp., [1982] USCA9 1816; 690 F.2d 791 (9th Cir. 1080) (discussing evidence of secondary meaning). Given that the Complainant has failed to establish either that its use of the term “Clifton Park Center” is inherently distinctive or has acquired distinctiveness through actual use in commerce, I find that the Complainant has failed to demonstrate that it has trademark rights in the term “Clifton Park Center.”

The Respondent does not dispute that the Contested Domain Names are identical or confusingly similar to the term “Clifton Park Center” to which the Complainant claims rights. The contested cliftonparkcenter.com domain name differs from “Clifton Park Center” only in that it is not capitalized, deletes spaces between the words of the term and adds the top level domain suffix “.com.” These minimal differences are necessitated by the technical restrictions on internet domain names and are inconsequential in determining the similarity between an internet domain name and claimed trademark. See Brookfield Communications, Inc. v. West Coast Ent. Corp., [1999] USCA9 225; 174 F.3d 1036, 1054 n. 7 (9th Cir. 1999); Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp.2d 1003, 1005 (D. Minn. 1998) (finding domain name “post-it.com” the same as “Post It” trademark); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) (finding domain name “epix.com” the same as “Epix” trademark). Accordingly, the contested cliftonparkcenter.com domain name is, for purposes of the Policy, identical to the Complainant’s “Clifton Park Center” trade name. The contested shopcliftonparkcenter.com domain name is very similar to the “Clifton Park Center” trade name, given that the trade name is used in connection with a retail shopping mall. Whether the domain name is “confusingly similar” to the Complainant’s trade name, however, depends at least in part to the scope of trademark protection afforded the Complainant’s trade name. Because the Complainant has failed to demonstrate common law trademark rights in the “Clifton Park Center” trade name, the Complainant has provided no basis on which to assess whether the contested shopcliftonparkcenter.com domain name is “confusingly” similar to the Complainant’s trade name. Accordingly, I find that the Complainant has failed to demonstrate that the Contested Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent’s Rights And Interests In Respect Of The Contested Domain Names:

The Respondent has not claimed, and has failed to establish, that it falls within any of the specific circumstances demonstrating legitimate interests in a domain name enumerated in section 4.c of the Policy. The Policy enumerates these specific circumstances, however, “without limitation,” and the failure to demonstrate these circumstances does not necessarily mean that a respondent has no legitimate rights or interests in a contested domain name. As discussed above, the Respondent has demonstrated longstanding use of “Clifton Park Center” as a descriptive term identifying a specific geographical region of the Town of Clifton Park, New York. The Respondent asserts that it considers the Contested Domain Names community resources which should be used by the Clifton Park and Clifton Park Center communities as a whole. For some period of time the Respondent utilized the contested cliftonparkcenter.com domain as an automatic link to the Respondent’s commercial cliftonpark.org web site, which does purport to serve as a community resource. The contested cliftonparkcenter.com currently resolves to a web site which provides a hypertext link to the cliftonpark.org web site. This use is consistent with the Respondent’s stated intent to utilize the Contested Domain Names as a community resource for those in the Clifton Park community. The Respondent’s use of the contested cliftonparkcenter.com domain, if done in a manner not misleading to consumers, is a legitimate fair use of the domain. See Shirmax Retail Ltd. v. CES Marketing Group, Inc. (eResolution Case No. AF-0104). Accordingly, I find that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the Contested Domain Names.

The Respondent’s Alleged Bad Faith:

The Complainant asserts three grounds on which it bases its contention that the Complainant has registered and used the Contested Domain Names in bad faith. First, the Complainant asserts that the Respondent registered the contested cliftonparkcenter.com domain without the Complainant’s knowledge or permission in an attempt to secure a contract to design a web site for the Complainant’s shopping center. The Complainant registered the cliftonparkcenter.com domain on May 10, 2000. The Complainant has not alleged, and has asserted no facts to establish, the date on which it first used term “Clifton Park Center” in connection with its operation of a shopping mall. The Respondent asserts that such use began on November 17, 2000. As discussed above, common law trademark rights arise from use of a term in commerce. Without use, there can be no trademark rights. La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc. [1974] USCA2 279; 495 F.2d 1265, 1274 (2nd Cir. 1974). Based upon the evidence presented, I find that at the time the Respondent registered the contested cliftonparkcenter.com domain, the Complainant had not begun use of the “Clifton Park Center” trade name. Accordingly, the Complainant had no claim to trademark rights in the term. The Respondent’s registration of an available domain name prior to the Complainant’s acquisition of trademark rights in the term “Clifton Park Center” does not evidence “bad faith” under the Policy. See Passion Group, Inc. v. Usearch, Inc. (eResolution Case No. AF-0250) (“because the registration of the domain name occurred before the first use by the complainant of the trademark, it could not have been done ‘to prevent the owner of the trademark . . . from reflecting the mark in a corresponding domain name’”).

The Complainant next asserts that Respondent has utilized the contested cliftonparkcenter.com domain name to divert viewers to the Respondent’s proprietary cliftonpark.org web site, and has deliberately attempted to create a likelihood of confusion with the Complainant’s trade name by posting a photograph of the Complainant’s signage on the web site maintained at the cliftonparkcenter.com domain. As discussed above, mere use of a domain to divert viewers to another web site is not necessarily illegitimate. See Shirmax Retail Ltd. v. CES Marketing Group, Inc. (eResolution Case No. AF-0104). The unauthorized use of the Complainant’s signage is evidence of an attempt to improperly trade upon the goodwill associated with the Complainant’s trade name. Given the fact that the Respondent registered the domain prior to the Complainant’s first usage of the “Clifton Park Center” trade name, I do not find that on balance that the Respondent’s unauthorized use of the Complainant’s signage demonstrates that the Respondent “registered and used” the contested cliftonparkcenter.com domain in bad faith.

Finally, the Complainant asserts that the Respondent has rejected an offer to transfer the Contested Domain Names in exchange for its actual costs and other consideration, and “has indicated that the price Complainant would have to pay to obtain transfer of the domain names is ‘in the high five to low six figures.’” As support for this assertion, the Complainant refers to Annex 3, a one page letter which appears to reflect the parties’ efforts in January 2001 to resolve this dispute. The letter appears to relate solely to the cliftonparkcenter.com domain. On its face, the letter makes no express offer to sell either of the Contested Domain Names. Rather, the portion of the letter quoted by the Claimant states in full “My board believes the Clifton Park Center name is worth in the high five to six figures.” Complaint, Annex 3. In the letter, the Respondent appears to assert that it will suffer a loss of advertising revenue on its cliftonpark.org web site if it transfers the contested cliftonpartkcenter.com domain and expresses a desire to reach a “win-win solution” to the parties dispute. Id. The letter concludes by inquiring “[w]hat incentives can you offer which I can bring to my board.” Id. The letter could fairly be read to invite an offer from the Complainant to purchase the contested cliftonparkcenter.com domain for an amount in excess of the Respondent’s costs of registration. Even so, the letter does not demonstrate that the Respondent registered either of the Contested Domain Names “primarily for the purpose of selling . . . the domain name registration[s], to the complainant who is the owner of the trademark or service mark . . . .” Policy, 4(b). Even if the Respondent had such an intent, however, the Respondent registered the contested cliftonparkcenter.com domain before the Complainant began its commercial use of the “Clifton Park Center” trade name. Accordingly, the Complainant had no rights in the trade name which could be infringed at the time of registration.

Evaluating the Complainant’s contentions collectively, I find that the Complainant has failed to demonstrate that the Respondent has registered and used the contested cliftonparkcenter.com domain in bad faith. The Complainant has failed to assert any facts to demonstrate that the Respondent has registered and used the contested shopcliftonparkcenter.com domain in bad faith. Accordingly, I similarly find that the Complainant has failed to meet its burden of demonstrating the Respondent’s bad faith with respect to the shopcliftonparkcenter.com domain.

6. Conclusion

For the reasons stated above, I find that the Complainant has failed to establish the elements necessary to obtain the relief it seeks under the Policy. Accordingly, the complaint is dismissed.

7. Signature

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