National Arbitration Forum

DECISION

Long Pond Realty Inc. v. Lake and Country Real Estate

Claim Number: FA0410000347750

PARTIES

Complainant is Long Pond Realty Inc. (“Complainant”), represented by Alfred C. Frawley, of Preti, Flaherty, Beliveau, Panchios and Haley, LLC, One City Center, Portland, ME 04112.  Respondent is Lake and Country Real Estate (“Respondent”), represented by Chris A. Caseiro, of Verrill Dana, LLP, One Portland Square, Portland, ME 04101.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <longpond.com>, registered with Go Daddy Software, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2004.

On October 20, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <longpond.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 October 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 16, 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@longpond.com by e-mail.

A timely Response was received and determined to be complete on November 16, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on November 22, 2004.

A timely Response to the Additional Submission was received and determined to be complete on November 29, 2004.  

On November 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

   1.  Respondent’s<longpond.com> domain name is confusingly similar to      Complainant’s LONG POND REALTY INC. mark.

   2.  Respondent does not have any legitimate interest in the <longpond.com> domain          name.

   3.  Respondent registered and used the <longpond.com> domain name in bad faith.

B. Respondent

   1.  Complainant has no rights in and to a generic or geographical term.

   2.  Use of a merely descriptive term in a domain name does not preclude establishment of Respondent’s rights therein.

3.  Respondent was assigned the domain name by a third party and has legitimate rights and interests therein, and is not using the name in bad faith.

C. Additional Submissions

   1.  Complainant:

     a.  Respondent does not claim to do business under any variant of “Long Pond”

     b.  Respondent does not address the diversion of web traffic from Complainant’s site to its site.

     c.  Respondent’s argument is based solely upon the claimed fact that “Long Pond” is geographically descriptive.

   2.  Respondent: 

      a.  Complainant presents no evidence of actual confusion by customers.

      b.  Respondent uses the domain name fairly.

FINDINGS

“Long Pond” is a geographical reference, generic, and not protectable under the Policy.  The <longpond.com> domain name is not confusingly similar to Complainant’s LONG POND REALTY INC. mark, as the omission of the “REALTY” and the “INC.” distinguishes them.

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

The Panel finds that Complainant’s rights in the LONG POND REALTY INC. mark should not allow Complainant to exclude others from using just “long pond.”  “Long pond” is a geographical reference, generic, and thereby not protectable under the Policy.  See Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO Feb. 5, 2001) (“Geographic names can not be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by third parties is generally possible despite a trade-mark registration.”); see also Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001) (finding that Respondent has shown that SOREL is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL, as it is not exclusively associated with Complainant’s business).

Further, the Panel finds that the <longpond.com> domain name is not confusingly similar to Complainant’s LONG POND REALTY INC. mark.  The omission of the words “realty” and “inc” distinguishes the <longpond.com> domain name from the LONG POND REALTY INC. mark.  See FloridaFirst Bank v. Carlson, FA 143677 (Nat. Arb. Forum Apr. 10, 2003) (holding that as Complainant disclaimed the exclusive right to use “BANK”, apart from the FLORIDAFIRST BANK mark, the validity of the mark was to be determined by viewing the trademark as a whole and not just the words “FloridaFirst.” Hence, when viewing Complainant’s FLORIDAFIRST BANK mark as a whole, Respondent’s <floridafirst.com> domain name was not confusingly similar to the registered mark); see also Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <herald.com> is not identical or confusingly similar to a trademark in which Complainant has rights).

Rights or Legitimate Interests

The Panel finds that Complainant’s mark is merely descriptive, which does not preclude Respondent’s rights and legitimate interests in the domain name. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Coming Attractions, Ltd. v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding Respondent had the right to register the subject domain name, <comingattractions.com>, based upon the generic usage of the term "coming attractions").

Registration and Use in Bad Faith

Respondent’s intent does not matter.  Complainant does not have adequate rights in the LONG POND mark to bring a claim under the Policy, and, therefore, the Panel should not even consider bad faith.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that in order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s initial burden is to provide proof of “valid, subsisting rights in a mark that is similar or identical to the domain name in question”); see also FRH Freies Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that Complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights despite Complainant’s mark being the dominant feature of Complainant’s trade name).

DECISION

Having failed to established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

John J. Upchurch, Panelist
Dated: December 14, 2004

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