ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: GLENMAURA
Respondent: AMERICAN DISTRIBUTION SYSTEMS, INC.
Cases Numbers: AF-0144a;
AF-0144b
Contested Domain Names: AF-0144a: glenmaura.com;
AF-0144b: glenmauranational.com
Panel Member: Giovanni Ziccardi
 

 

1. Parties and Contested Domain Name.

The Complainant is Glenmaura, a company that operates within the real estate development and planning services industry. This company is headquartered in Glenmaura National Blvd, City of Mousic, Pennsylvania, USA.

The Respondent is American Distribution Systems Inc, a company headquartered in the City of Denver, Colorado, United States.

The domain names at issue are 'glenmaura.com' and 'glenmauranational.com'; the Registrar was Register.com.

The remedy sought is the transfer of the domain names to the Complainant.

2. Procedural History.

The electronic version of the Complaint form was filed on-line through eResolution's Website on March 9, 2000. The hardcopy of the Complaint Form was received on April 11, 2000. Payment was received on March 7, 2000.

Upon receiving all the required information, eResolution's Clerk proceeded to:

a. confirm the identity of the Registrar for the contested Domain Name;

b. verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

c. verify if the contested Domain Name resolved to an active Web page;

d. verify if the Complaint was administratively compliant.

The inquiry led the Clerk of eResolution to the following conclusions: the Registrar was Register.com, the Whois database contained all the required contact information, the contested domain name resolved to an active Web page and the Complaint was administratively compliant.

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 fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on April 14, 2000. That date is the commencement date of the administrative proceeding.

On April 14, 2000, the Clerk's office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

On April 26, 2000, the Clerk's Office requested the Complainant to choose a Mutual jurisdiction.

On May 5, 2000, upon his request, the Clerk's Office provided the Respondent with an id and a password, in order for him to file a Response online.

On May 5, 2000, the Respondent requested the Clerk's Office to grant him a delay in order to file his Response. A five-day delay was granted on May 6. The Response was due on May 10, 2000.

On May 10, 2000, the Respondent submitted, via eResolution's Internet site, his response. The signed version of the response was received on May 17, 2000.

On May 14, 2000, the Complainant provided the Clerk's Office with his choice of jurisdiction. On the same day, an email was sent to the Respondent in order to inform him of this choice.

On June 1, 2000, the Complainant provided eResolution with the missing coversheet.

On June 1, 2000, the Clerk's Office contacted the Registrar in order to receive a confirmation of a valid agreement in this case. The confirmation was received on June 8, 2000.

On June 9, 2000, the Clerk's Office contacted Giovanni Ziccardi, and requested that he would act as panelist in this case.

On June 9, 2000, Giovanni Ziccardi accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On June 12, 2000, the Clerk's Office forwarded a user name and a password to Giovanni Ziccardi, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On June 12, 2000, the parties were notified that Giovanni Ziccardi had been appointed and that a decision was to be, save exceptional circumstances, handed down on June 24, 2000.

On June 13, 2000 The Clerk's Office received from the complainant's representative an e-mail in which he requested to annex new documents to the complaint form.

On June 14, 2000 the Panelist accepted, upon the Complainant's representative request, to receive new material in this case. In consequence, the Complainant had until Friday 16, 2000 at noon, time of Montreal, to send the new material to the Clerk's Office. According to the Regulation, the Complainant provided the Respondent with a copy of this material. Then the Respondent had until Friday 23, 2000 at noon, time of Montreal, to answer to this material, and only to this material.

The Respondent did not answered to the new material.

On June 14, 2000, the Panel decided to hand down a decision on June 30, 2000, after the examination of the new material annexed.

3. Factual Background.

The Complainant, Glenmaura, is a company that operates within the real estate development and planning services industry.

The mark Glenmaura is used to market real estate, both residential and commercial, within Northeastern Pennsylvania. By the way, Glenmaura National, is the name of the main road leading through the property of the Respondent, and has been in use since 1992.

The mark Glenmaura, and Glenmaura National, is used in the advertisements of the company, and have been doing so for many years.

The Respondent registered the domain names at issue but there are no active Web sites at these addresses: only temporary pages.

4. Parties' Contentions.

A. Complainant.

The Complainant declares that intends to use this domain on the Internet to continue successfully marketing his services of real estate development, administration, and planning services. The company plans on utilizing the site as a point of sale for its services and assets, as have been using the Glenmaura trademark for the past 10 years in order to build a recognizable name in the industry.

According to the Complainant, the domain name holder should be considered as having no rights to, or legitimate interests, in Glenmaura.com.

The Respondent, according to the Complainant, has registered the Glenmaura domain in an effort to garner site traffic from a trademark, which has been in heavy promotion, and advertising for ten years. This was established in an effort to attract visitors and reap commercial gains, of which the trademark holder has rightfully earned and been awarded rights to by the Commonwealth of Pennsylvania, United States of America.

Glenmaura requests that the ownership of the domain name in issue be transferred to the Complainant.

Last but not least, Respondent registered the domain to prevent Glenmaura from "reflecting the mark in a corresponding domain name".

B. Respondent.

According to the Respondent, the word 'Glenmaura' is neither distinctive nor famous, but it is a generic street name and the name of a geographic region in Pennsylvania.

Respondent declares that has had active Web sites under both domain names since late December 1999, and that Complainant can not claim rights to the words 'national', 'glen' or 'maura' separately, as United States Trademark law does not recognize exclusive rights to generic names or surnames.

According to the Respondent, complainant offered virtually no evidence to support that the name Glenmaura distinguishes its services from those of its competitors or that it has any competitors, that the name at issue has acquired substantial goodwill or any goodwill and that the name at issue has been in heavy promotion and advertising for ten years or any promotion and advertising.

Concerning the sites and the temporary pages, the Respondent declares that these sites are being developed into public not-for-profit comedy forums and serve as gateways to a larger array of public forums with which Respondent engages in social commentary and political satire.

Therefore, Respondent's use of the subject domain names is a legitimate non-commercial and fair use of a mark as provided under ICANN UNDRP 4(a)(ii).

Finally, according to the Respondent, Complainant does not offer evidence that would support finding that Respondent acted in "bad faith" as defined by ICANN UNDRP 4(b)(i), and Complainant offered no evidence and failed to prove that Respondent registered or acquired the domain names with an intent to disrupt the business of competitor as provided by ICANN UNDRP 4(b)(iii).

5. Discussion and Findings.

A. Copy or Similarity.

The domain name at issue is identical to the trademark Glenmaura.

This trademark was awarded to the Hemingway Development Corporation by the Commonwealth of Pennsylvania, in April of 1991.

The Panel, according to the Complainant's statements, believes that the term Glenmaura has no meaning or significance other than as a trademark identifying Glenmaura's services and assets and distinguishing them from those of competitors, and this mark has been in use since 1991.

As proved by the annexed documentation, Glenmaura was awarded its mark on April 22, 1991, was deemed as entity number 2021132, and the Glenmaura name was recorded amongst International Class 37 marks. Prior to this award, the mark was used by Glenmaura as early as July of 1990.

As documented in the body of a letter coming from Schimelfenig and Schimelfenig, attorney at law, the state of Pennsylvania registered the mark Glenmaura in 1991, and the Commonwealth of Pennsylvania's Department of State notes, in a document addressed to Glenmaura dated April 22, 1991, that "the Hemingway Development Corporation, is the owner of the mark, and no other person has the right to use such mark in this Commonwealth, either in the identical form or in any such near resemblance thereto as might be calculated to deceive or to be mistaken therefore".

Also the word 'glenmauranational' is strictly connected to the Glenmaura mark. Glenmaura National is a boulevard, which the Hemingway Development Corporation began using in 1991, to mark the area known as such. This boulevard runs through the land trademarked as Glenmaura.

B. Illegitimacy.

Fist of all, there is no active website under 'glenmaura.com' or 'glenmauranational.com'. The Respondent has no legitimate interest in the name 'Glenmaura'.

Respondent has not established any rights or legitimate interests in respect of the domain name under any of the circumstances set forth in Paragraph 4 (c) of the ICANN Policy. The domain names in issue were not used and there was not a bona fide offering of goods or services.

According to this Panel, the pages containing Glen and Maura's National Psychic Match (with the indication of 'non commercial' 'temporary host') are a clear attempt to mask the real will of the Respondent.

C. Bad faith.

As stated by the Complainant, first of all is 'strange' that the respondent intended to use the domain names for non-commercial uses registering two domain names including the 'Glenmaura' word with the .com extension.

Second, the temporary pages seem to host factious characters and the dual registration is a clear attempt to use the 'Glenmaura' mark.

According to this Panel, Respondent did register the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant.

The Panel does not believe that Respondent did not acquire the domain names to deprive Complainant of the alleged mark and that his intent was to use the subject domain names for legitimate, non-commercial social commentary.

6. Conclusions. v The evidence, submissions of the parties, examination of documents, ICANN Regulations compel this Panel to conclude and decide that:

- The domain names 'glenmaura.com' and 'glenmauranational.com' registered by American Distribution Systems, Inc. are identical and confusing similar to the registered mark of Glenmaura, a mark in which the complainant has rights, and incorporate the mark 'Glenmaura'.

- American Distribution Systems Inc. has no legitimate interest in respect of that domain names, has not been commonly known by this domain name, and is not making legitimate non commercial or fair use of the domain names.

- The domain names at issues were registered and are being used in bad faith by American Distribution Systems, creating a likelihood of confusion with respect to complainant's mark as to its source, affiliation or sponsorship of Respondent's Web site.

The Respondent failed to prove any of the three circumstances set out in ICANN Policy at Paragraph 4 (c).

Accordingly, the Complainant's request is granted and, in accordance with Paragraph 3 (c), the Panel orders that the registration of the domain names at issue, 'glenmaura.com' and 'glenmauranational.com' be transferred from American Distribution Systems Inc. to Glenmaura.

This done and signed in Castelfranco Emilia, Modena, Italy, on June 30, 2000.

(s) Giovanni Ziccardi

Presiding Panelist