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Lee Procurement Solutions Co. v. getLocalNews.com, Inc. [2005] GENDND 128 (7 January 2005)


National Arbitration Forum

National Arbitration Forum

DECISION

Lee Procurement Solutions Co. v. getLocalNews.com, Inc.

Claim Number: FA0411000366270

PARTIES

Complainant is Lee Procurement Solutions Co. (“Complainant”), represented by Dana M. Craig, of Lane & Waterman, LLP, 224 18th Street, Suite 500, Rock Island, IL 61201.  Respondent is getLocalNews.com, Inc. (“Respondent”), P.O. Box 156830, San Francisco, CA 94115.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bettendorfnews.com>, registered with Network Solutions, 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.

Hon. Nelson A. Diaz as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 22, 2004.

On November 19, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <bettendorfnews.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 13, 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@bettendorfnews.com by e-mail.

A timely Response was received and determined to be complete on December 13, 2004.

On December 20, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that it has trademark interests in the name “Bettendorf News,” and that the disputed domain name is identical and/or confusingly similar to Complainant’s mark.  Complainant further asserts that Respondent is using the disputed domain name to direct Internet users to Respondent’s website in direct competition for the advertising revenues and readership of Complainant.  Further, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.  Finally, Complainant asserts that the disputed domain name was registered and is being used by Respondent in bad faith.   

B. Respondent

In response, Respondent asserts, among other things, that the term BETTENDORF NEWS is comprised of primarily geographically descriptive and generic terms.  Respondent further asserts that its interactive online website is distinguishable from the goods associated with Complainant’s Iowa state trademark registration, namely, periodic community newspaper and other publications in association therewith.  Ultimately, Respondent asserts that Complainant has proven no protectible trademark rights in the term BETTENDORF NEWS.  As to registration and use in bad faith, Respondent asserts that it has not registered the disputed domain name in bad faith.

FINDINGS

Complainant Lee Procurement Solutions Co. is an Iowa Corporation with its principal place of business in Davenport, Iowa.  Complainant is a wholly owned subsidiary of Lee Enterprises, a Delaware Corporation also having  its principal place of business in Davenport, Iowa.  In Bettendorf, Iowa, a community that neighbors Davenport, Lee Enterprises prints a weekly newspaper called the “Bettendorf News.”  The newspaper has been known and published as the Bettendorf News since 1961, prior to its acquisition in 1975 by Lee Enterprises.

Lee Enterprises registered BETTENDORF NEWS as a trademark in the State of Iowa on April 9, 1993.  On October 1, 2002, Lee Enterprises assigned the mark and goodwill to Complainant.  Complainant entered into a licensing agreement with Lee Enterprises, Incorporated that permits Complainant to use the "Bettendorf News" mark in Iowa for “periodic community newspaper and other publications in association therewith.”  The Bettendorf News currently has a circulation exceeding 9,600. 

Respondent is the current registrant of the <bettendorfnews.com> domain name, which is registered with Network Solutions, Inc.  Respondent’s firm GetLocalNews.com publishes an interactive online website which allows the public to post articles, stories, and comments directly to the front page of the <bettendorfnews.com> site. 

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

Respondent argues that Respondent’s domain name is not identical to Complainant’s mark because of the addition of the generic top-level domain.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter").  Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <bettendorfnews.com>, is nearly identical, if not identical, to Complainant’s BETTENDORF NEWS mark, both phonetically and in appearance and spelling, and is therefore confusingly similar.  The Panel notes that the lack of a space between the word “Bettendorf” and the word “news” is insignificant in determining confusing similarity.

Respondent further argues, however, that Complainant cannot satisfy the requirements of Policy ¶ 4(a)(i) because Complainant’s mark is merely a combination of the geographically descriptive term “Bettendorf” and the generic term “news.”  See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (“genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that Complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business); see also 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 Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[G]eographic terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner . . .[t]o hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question.").

Complainant has failed to provide proof that its mark has gained secondary meaning.  Complainant makes a mere recitation of secondary meaning in the Complaint.  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [a]lthough Complainant’s WELLSERV product and related services may be well-known among relevant consumers, that is a finding that must be supported by evidence and not self-serving assertions.); see also Lowestfare.com LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000)  (finding that marks classified as descriptive cannot be protected unless secondary meaning is proven and to establish secondary meaning Complainant must show that the public identifies the source of the product rather than the product itself). 

As the cases cited above show, and many others which could be cited here, the names of cities, counties, states, countries, and geographical areas are, in all but the most exceptional cases, available to all to refer to a geographical location.  To hold otherwise would preempt the nominative or descriptive use necessary to refer to the location in question.   

Complainant has not proven this element.

Rights or Legitimate Interests

The Panel finds that Respondent has rights and legitimate interests in the disputed domain name because it was registered for use in connection with Respondent’s interactive Internet newspapers that allow the public to post articles, stories and comments directly to its site, dubbed “Citizen Journalism.”  See SFX Entertainment, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

Additionally, Respondent contends that the domain name is being used to provide news relating to Bettendorf, Iowa.  Thus the Panel concludes that such use constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” in concluding that Respondent was making a bona fide offering of goods or services with the disputed domain name); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name).

The Respondent is using the <bettendorfnews.com> domain name for a website that links to an online forum where the public may post news, stories, and comments, particularly, in connection with Bettendorf, Iowa. The domain is therefore being used to describe the content of the site. The Panel finds that this is a legitimate interest in the domain name. 

Complainant has not proven this element.

Registration and Use in Bad Faith

Complainant alleges that there is customer confusion, particularly by its own customers expecting to find familiar material at this domain address. Complainant did not, however, provide any evidence of such confusion or that this was Respondent’s intended design.  Where the domain name is comprised of geographically descriptive or generic terms, it is difficult to conclude that there is a deliberate attempt to confuse. It is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them. There are several other enterprises that use the term "Bettendorf News," therefore one cannot conclude that Complainant must necessarily be the special target. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).  Ultimately, Complainant offers no evidence that Respondent registered the domain name in bad faith.   See Loris Azzaro BV, SARL v. Asterix & De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.”).

Additionally, because Complainant’s mark is comprised of primarily geographically descriptive and generic terms, the Panel concludes that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that Respondent’s constructive notice of Complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Trump v. olegevtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that <porntrumps.com> does not infringe on Complainant’s famous mark TRUMP, since Complainant does not have the exclusive right to use every form of the word “trump”).

Furthermore, Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

Complainant has not proven this element.

DECISION

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

Hon. Nelson A. Diaz, Panelist
Dated: January 7, 2005


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