DECISION

Oneida Tribe of Indians of Wisconsin v. WorldShadow
Claim No.:  FA0408000318911

PARTIES

Complainant is Oneida Tribe of Indians of Wisconsin (“Complainant”), represented by Lori S. Meddings, of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Milwaukee, WI  53202.  Respondent is WorldShadow c/o Lester Harms (“Respondent”) P.O. Box 46, Oneida, WI 54155.

REGISTRAR OR DISPUTED DOMAIN NAME

The domain name at issue is <oneidatribe.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this Proceeding.

Mark McCormick, Panelist

PROCEDURAL HISTORY

Complaint submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2004; the Forum received a hard copy of the Complaint on August 30, 2004.

On August 30, 2003, Tucows Inc. confirmed by e-mail to the Forum that the domain name <oneidatribe.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 September 3, 2004, a Notification of Complaint and Commencement of Administrative Proceedings (the “Commencement Notification”), setting a deadline of September 23, 2004 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 postmaster@oneidatribe.com by e-mail.

An incomplete Response was received on September 23, 2004; however, the hard copy of the Response was received after the deadline.

On October 5, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES CONTENTIONS

Complainant.

Complainant claims the trademarks to ONEIDA and ONEIDA TRIBE, claiming to have the right to bring a complaint pursuant to the ICANN policy.  Complainant first claims rights under the policy because it holds the registration of the ONEIDA design mark.  It also claims that it has common law rights in the ONEIDA mark, implying that it has established secondary meaning as to the source of the mark.  Complainant asserts that Respondent’s <oneidatribe.com> domain name is confusingly similar to Complainant’s ONEIDA mark.

Complainant also contends that Respondent has no rights or legitimate interest in the domain name.  It asserts that the ONEIDA mark is not a descriptive word in which Respondent might have an interest but is a fanciful word used and known to identify the Oneida Tribe and its related services.  Complainant alleges that Respondent is not commonly known by the domain name, is not making a legitimate non-commercial or fair use of the name but is using it in connection with a commercial operation. 

Complainant also contends that Respondent registered his domain name in bad faith.  It asserts that Respondent has engaged in a pattern of conduct to prevent Complainant from reflecting the mark in corresponding domain names, has disrupted legitimate business of Complainant and its ability to provide its own services and has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of its website. 

Respondent.

Respondent contends that its domain name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights.  The domain name is not linked, colored or formatted in a manner similar to the ONEIDA service mark or claimed trademark.  ONEIDA TRIBE is comprised of two words to form a domain name that was available in the open market.  Respondent on his website shows a disclaimer of any affiliation with any of the business and gaming models of Complainant and identifies Respondent as a private Oneida individual, who is a member of the Oneida Tribe. 

Respondent asserts he has a legitimate right and interest in using the domain name because as a member of the Oneida Tribe he has rights provided by the Oneida Constitution to use the name ONEIDA. 

Respondent contends he is providing a community service to the Oneida people by operating a web portal that can be used by tribe members to promote their skills and resources to others. 

Respondent denies that he has registered and used the domain name in bad faith.  He contends the website is a community service venture to promote the Oneida people and their businesses.  He said he established the website after discussing it with other tribe members who believed it would be beneficial in enabling them to promote their skills and businesses.  He contends he has not copied the business or gaming models of the Complainant.  He says the domain name is not for sale. 

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.

FINDINGS

Timeliness of Response

Respondent submitted the hard copy of his Response after the 20-day deadline.  He had made an incomplete response that was timely.  The Panel finds no basis exists for penalizing Respondent for the late filing of the more complete hard copy of his Response.  To do so would exalt form over substance in these circumstances.

Identical or Confusingly Similar

Complainant’s registration of ONEIDA as a design mark gives it rights over the word ONEIDA in conjunction with the appurtenant design, but it does not entitle Complainant to a presumption that the design mark, exclusive of the design, is inherently distinctive and has acquired secondary meaning.  See Charles Nofal Inc. v. Cho, FA 114330 (Nat. Arb. Forum Aug. 2, 2002).  In addition, the word “ONEIDA” is a geographical term which, by itself, is not protected.  See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002).

The Panel thus finds for Respondent on Complainant’s contention that Respondent’s domain name is identical or confusingly similar. 

Rights and Legitimate Interests 

Complainant asserts that Respondent is using the domain name to promote web design services.  Respondent admits that he is doing so but contends he is doing so to provide a service to the tribe of which he is a member and insists that as a member of the tribe and its tribal council he has rights and legitimate interests in the domain name.  Respondent has not demonstrated that he is using the domain name for a non-commercial purpose.  On the other hand, Respondent’s use of the domain name to promote web design services appears to be a bona fide offering of goods or services to members of the tribe within the meaning of Policy ¶4(c)(i).  This is a fair use of the name and does not infringe rights of Complainant within the meaning of Policy ¶4(c)(iii). 

The Panel concludes that Respondent has rights and legitimate interests in the domain name. 

Registration and Use in Bad Faith

The record does not show that Respondent is commercially benefiting from the domain name.  Nor does it appear that Respondent is a competitor of the Complainant.  Indeed, it appears that Complainant and Respondent each seek to promote the interests of the members of the tribe, but in different ways.  The web portal services offered by Respondent have not been shown to infringe the materially different goods and services offered by Complainant. 

The Panel finds that Complainant has failed to meet its burden to prove that Respondent acted in bad faith. 

DECISION

Because Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.

Mark McCormick, Panelist
Dated:  October 18, 2004

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