DECISION

Harbor Country Chamber of Commerce v. Laporte County Convention and Visitor's Bureau c/o Linda Bell

Claim Number:  FA0407000295289

PARTIES

Complainant is Harbor Country Chamber of Commerce (“Complainant”), represented by Christopher R. Putt of May Oberfell Lorber, 300 North Michigan, South Bend, IN 46601.  Respondent is LaPorte County Convention and Visitor's Bureau c/o Linda Bell (“Respondent”), represented by Michael S. Bergerson, 601 Franklin Street, Suite 200, Drawer K, Michigan City, IN 46360.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harborcountry-in.org>, registered with Bulkregister.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 12, 2004; the Forum received a hard copy of the Complaint on July 12, 2004.

On July 14, 2004, Bulkregister confirmed by e-mail to the Forum that the domain name <harborcountry-in.org> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 July 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 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@harborcountry-in.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <harborcountry-in.org> domain name is confusingly similar to Complainant’s HARBOR COUNTRY mark.

2. Respondent does not have any rights or legitimate interests in the <harborcountry-in.org> domain name.

3. Respondent registered and used the <harborcountry-in.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Harbor Country Chamber of Commerce, is a not-for-profit organization which promotes business and tourism in eight communities along Lake Michigan in the southwest corner of Michigan, located just north of the Indiana/Michigan state line.  Complainant was formed in 1981 when these eight communities started to cooperate in the interest of promoting business and tourism in the area.  Complainant was officially incorporated on February 9, 1983 and has used the HARBOR COUNTRY mark continuously since its original formation in 1981.

After continuous use of the HARBOR COUNTRY mark in promotional literature, advertising campaigns, and on its website at the <harborcountry.org> domain name. Complainant filed for registration of the mark with the United States Patent and Trademark Office on October 31, 2000.  The mark was officially registered on July 2, 2002 (Reg. No. 2,587,669).

Respondent promotes business and tourism in LaPorte County, which is located in Indiana adjacent to and directly across the state line from Complainant.  In about 1994, Respondent began a new advertising campaign that promoted LaPorte County as “Northern Indiana Harbor Country,” using Complainant’s HARBOR COUNTY mark after it had been in use by Complainant for about thirteen years. 

Respondent registered the <harborcountry-in.org> domain name on November 21, 1996.  Respondent is using the disputed domain name to divert Internet users to its own tourism website at <laportecountycvb.com>.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant began using its HARBOR COUNTRY mark in 1981 when Complainant was founded and has used the mark continuously and extensively since that time in association with its business and tourism promotions and advertising.  In 1983, Complainant officially became incorporated as the Harbor Country Chamber of Commerce and continues to operate under that title.  At the time of Respondent’s registration of the <harborcountry-in.org> domain name in 1996, Complainant had been using its mark continuously for approximately fifteen years.  The Panel finds that prior to its registration with the USPTO in 2002, Complainant had acquired common law rights in its HARBOR COUNTRY mark and that those rights predate Respondent’s registration of the disputed domain name.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum March 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

The <harborcountry-in.org> domain name registered by Respondent is confusingly similar to Complainant’s HARBOR COUNTRY mark because the domain name incorporates Complainant’s mark in its entirety, adding only a hyphen and the letters “in,” the postal abbreviation for the state of Indiana.  The mere addition of punctuation and a geographic term to a mark does not negate the confusing similarity of the domain name.  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark). 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<harborcountry-in.org> domain name, which contains Complainant’s HARBOR COUNTRY mark in its entirety.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <harborcountry-in.org> domain name to redirect Internet users to Respondent’s website, which promotes tourism for Respondent.  Therefore, Respondent is a direct competitor of Complainant for tourism in the area.  Respondent’s use of a domain name that is confusingly similar to Complainant’s HARBOR COUNTRY mark to redirect Internet users interested in Complainant’s services to a commercial website that offers Respondent’s competing services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business.”).

Finally, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <harborcountry-in.org> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its HARBOR COUNTRY mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <harborcountry-in.org> domain name, which contains Complainant’s HARBOR COUNTRY mark in its entirety, for Respondent’s commercial gain.  The domain name diverts Internet users who seek Complainant’s mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s HARBOR COUNTRY mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Furthermore, Respondent registered the <harborcountry-in.org> domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competes with Complainant in the tourism industry.  Furthermore, Complainant and Respondent are in the same market area competing for business in southwest Michigan and northern Indiana.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were registered and used in bad faith where Respondent registered domain names which infringed upon Complainant’s mark, had no resemblance to Respondent’s business name and where Respondent’s competing business was located one and a half blocks from Complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <harborcountry-in.org> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  August 18, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/984.html