ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Michigan Economic Development Corporation of Lansing, Michigan. The respondent is Paul W. Steinorth Construction, Inc. of Traverse City, Michigan.
The domain name at issue is: travelmichigan.com
2. Procedural History
A complaint was submitted electronically through eResolution's website on June 22, 2000. The hardcopy of the complaint was received on June 26, 2000. Payment of fees was received on June 27, 2000. The choice of jurisdiction was received on June 28, 2000.
The eResolution clerk:
(1) confirmed the identity of the registrar for the contested domain name;
(2) verified the registrar's Whois database and confirmed all the required contact information for respondent;
(3) verified if the contested domain name resolved to an active web page;
(4) verified if the complaint was administratively compliant.
The inquiry leads the clerk of eResolution to the following conclusions: the registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested domain name resolves to an active web page and the complaint is administratively compliant.
An email was sent to the registrar by eResolution clerk's office to obtain a copy of the registration agreement on June 22, 2000. The requested information was received on June 27, 2000.
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 June 29, 2000. That date is the commencement date of the administrative proceeding.
On June 29, 2000, the clerk's office notified the complainant, the respondent, the concerned registrar, and ICANN of the date of commencement of the administrative proceeding.
All emails and faxes were successful.
The complaint, official notification and all the annexes were sent via UPS to the respondent. According to the UPS tracking system two of the three were delivered.
The respondent submitted a response via the eResolution Internet web site on July 18, 2000 and a signed version on July 21, 2000. The schedule of annexes was received on July 24, 2000.
On July 26, 2000, the clerk's office contacted a panelist and requested that he act as panelist in this case. He was unable to act in this case.
On July 31, 2000, the clerk's office contacted Mr. Kevin Trock, and requested that he act as panelist in this case.
On July 31, 2000, Mr. Kevin Trock accepted to act as panelist in this case and filed the necessary declaration of independence and impartiality.
On July 31, 2000, the parties were notified that Mr. Kevin Trock had been appointed and that a decision was to be, save exceptional circumstances, handed down on August 14, 2000.
Both the complainant and respondent requested permission to provide additional arguments. Permission was granted and the panel considered those arguments.
3. Factual Background
Complainant is a Michigan public body corporation, formerly a state agency of the state of Michigan. Complainant has filed an application with the Patent and Trademark Office to register the service mark TRAVEL MICHIGAN.
Respondent is a Michigan corporation that registered the domain name travelmichigan.com in 1996. This domain name resolves to an active web site that highlights recreational activities in the state of Michigan.
4. Parties' Contentions
Complainant contends that it has been using the mark TRAVEL MICHIGAN for over ten years and has a pending federal service mark application. Complainant contends that respondent knows or should have known that the state of Michigan owns the mark.
Respondent contends that it registered and has been using the domain name travelmichigan.com since 1996 and that the Michigan Travel Bureau was not renamed Travel Michigan until January 16, 1997. Respondent also contends that the newsletter that complainant cites as being proof of Travel Michigan mark being used, is an internal newsletter that is not generally circulated to the public. Additionally, respondent contends that prior to registering the domain name, travelmichigan.com, respondent (1) consulted an attorney, specializing in intellectual property, concerning the appropriate procedures for registering domain names; (2) conducted a federal trademark search and found no registration of the combination of words Travel Michigan; and (3) prior to registering the domain name travelmichigan.com, the respondent had no knowledge that the words Travel Michigan were being used in any format, on a newsletter, or otherwise, by the state of Michigan, or by any other persons.
5. Discussion and Findings
The complainant must prove the following three elements: (i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) respondent has no rights or legitimate interests in the domain name; and (iii) respondent has registered the domain name and is using it in bad faith. (ICANN policy, para. 4 (a)).
The respondent's domain name is identical or confusingly similar to the mark TRAVEL MICHIGAN. However, a major contention of this dispute is whether complainant has rights in the mark TRAVEL MICHIGAN. On June 16, 2000, complainant filed an application for a federal service mark with the Patent and Trademark Office (PTO) for the mark TRAVEL MICHIGAN. The basis for complainant's application with the PTO is that they have used the mark TRAVEL MICHIGAN since January 1, 1990 and the mark appeared on correspondence, publications, and advertising offering their services. Assuming arguendo, that complainant does have rights in the service mark TRAVEL MICHIGAN, that only satisfies the first of three elements of this domain name dispute.
Respondent has shown a legitimate interest in the domain name at issue. Respondent registered the domain name in 1996 and the contested domain name does resolve to an active web page. Respondent has used the domain name travelmichigan.com for travel agency services and for web-based portal services for businesses and customers related to travel in the state of Michigan. Complainant has not submitted any evidence that respondent is not using the domain name travelmichigan.com for legitimate interests. Complainant has failed to prove the second element of this domain name dispute.
Complainant has also failed to prove that respondent is using the domain name in bad faith. Evidence of bad faith may include registering the domain name (1) primarily for the purpose of selling, renting, or otherwise transferring the domain name for valuable consideration in excess of out-of-pocket costs directly related to the domain name; (2) in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; (3) primarily for the purpose of disrupting the business of a competitor; or (4) to intentionally attempt to attract, for commercial gain, Internet users to your web site by creating a likelihood of confusion with complainant's mark. (ICANN policy, para. 4 (b)(i-iv)). Complainant's only argument that respondent is using the domain name travelmichigan.com in bad faith is that "[r]espondent knows or should have known that the State of Michigan owns the mark Travel Michigan". This broad statement by complainant does not establish bad faith by the respondent. Respondent before registering the domain name travelmichigan.com consulted an attorney and performed a trademark search. There is no showing that respondent is trying to sell the domain name or disrupt or take customers away from complainant. Rather, the evidence shows that respondent is using the domain name for legitimate business reasons. Complainant has failed to prove the third requisite element under the ICANN policy.
For all the foregoing reasons, the Panel concludes that complainant has failed to prove that the respondent has no rights or legitimate interest in the disputed domain name or that it is using the domain name in bad faith. Accordingly, pursuant to ICANN policy, paragraph 4 (i), the Panel rules in favor of the respondent and denies complainant's request to transfer the domain name at issue.
This decision of the Administrative Panel in Case No. AF-00262 was rendered on the 10th day of August, 2000.
(s) Kevin Trock, Esq.