ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
Complainant is Lowestfare.com LLC, Respondent is US Tours & Travel, Inc., and the contested domain name is «thelowestfare.com.»
2. Procedural History:
The electronic version of the Complaint form was filed on-line through eResolution's website on July 17, 2000. The hardcopy of the Complaint Form was received on July 24, 2000. Payment was received on the same date.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office 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 confirm the name of the billing contact and to obtain a copy of the Registration Agreement on July 18, 2000. The requested information was received July 20, 2000.
The Clerk's Office 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's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on July 31, 2000. That date is the commencement date of the administrative proceeding.
On July 31, 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 August 22, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the first one to respond to the complaint. It also informed the parties that according to ICANN Rules Art.5 (ix)(e)"If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"
The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the UPS tracking system, all were delivered.
On August 28, 2000, the Clerk's Office contacted Ms. Diane Cabell, and requested that she acts as panelist in this case.
On August 28, 2000, Ms. Diane Cabell, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On August 29, 2000, the Clerk's Office forwarded a user name and a password to Ms. Diane Cabell, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On August 29, 2000, the parties were notified that Ms. Diane Cabell had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 11, 2000.
3. Factual Background
The Complainant (formerly Global Discount Travel Services, LLC) operates a website under the domain name "lowestfare.com" where it offers travel services. The home page, topped by a bold logo, features discounted fares and includes a search utility entitled "Lowestfare Fare Finder." Neither of these terms includes the "™" symbol alerting others to mark use. Complainant submitted letters from banner ad vendors indicating that it has used the domain name in advertising on several well-trafficked sites on the Internet for at least two years. In April of 1999, the Complainant changed its corporate name to "Lowestfare.com, LLC" and in January 2000, applied for a US federal service mark registration on a design incorporating the domain name.
The date of the Respondent's current registration with Network Solutions, Inc. for the disputed domain name "thelowestfare.com" is June 1999. This domain immediately transfers the viewer to a web page at http://www.us-tours.com/ which offers travel services at "the best price available" and prominently displays the Respondent's corporate name and contact information, but does not use the phrase "lowest fare" other than as the referring URL.
4. Parties' Contentions
Although the Complaint was delivered to the Respondent's address as indicated on the latter's whois registration, Respondent did not reply.
Complainant alleges that it has mark protection in the term "lowestfare.com" having used it for electronic retailing of travel services since 1996. It has invested "tens of millions of dollars promoting its mark and name" and has earned "hundreds of millions of dollars over the years selling its services identified by its mark and name." The complaint lists these expenses including "450,000,000 banners and badges and links per month." Complainant alleges that Respondent has acted in bad faith and lacks rights or legitimate interest in the disputed domain name, but does not supply any evidence to support these claims.
5. Discussion and Findings
Under Section 4(a) the UDRP Policy, Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain holder has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain (thelowestfare.com) is clearly confusingly similar to Complainant's domain and corporate names (lowestfare.com) although less similar to Complainant's logo, which has distinctive typeface, coloring and design elements. It is the design mark for which Complainant seeks federal registration. More significantly, it is not clear that Complainant has sufficient rights under common law to block Respondent's present use.
"Lowest fare" is not only a descriptive term; it is a self-laudatory descriptive designation. Marks categorized as "descriptive" cannot be protected unless secondary meaning is proven. See 2 McCarthy on Trademarks and Unfair Competition 11:15 (4th ed.).
"Secondary meaning for a descriptive term is a matter of fact, to be determined from relevant evidence probative of probable customer reaction….Proof that others are using a term descriptively on the same or closely related goods, is evidence tending to rebut alleged secondary meaning in a descriptive term." 2 McCarthy on Trademarks and Unfair Competition 11:25 (4th ed.). A search on a single search engine (google.com) using the keywords "lowest fare" produced over 6,000 responses mostly from travel-related enterprises that are using this term on their websites, incuding most major airlines.
"To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72 L.Ed.2d 606 (1982). Complainant supplied evidence of heavy online advertising under it's alleged mark, however this is not dispositive of the question.
The Trademark Board has resisted registration of self-laudatory phrases in particular. The Board stated that terms such as "Best Car in America," "Best Hotel in the State" and "Best Restaurant in Town" are mere "trade puffery" used only as self-laudatory messages and "should be freely available to all competitors in any given field to refer to their products or services.... " In the opinion of the Board such terms, including the applicant's "The Best Beer in America," while not generic, should not be registered even upon a showing of secondary meaning. In re Boston Beer Co., 47 U.S.P.Q.2d 1914 (T.T.A.B. 1998).
"A top level domain indicator like '.com' does not turn an otherwise unregisterable designation into a distinctive, registrable trademark. Thus, for example, adding a '.com' to a generic term, such as bankingnews.com would not change the basic generic nature and the composite will probably be found generic and unregisterable for the service of providing information in the field of banking. " 1 McCarthy on Trademarks and Unfair Competition s 7:17.1 (4th ed.) citing, e.g., In re Putman Publising Co., 39 U.S.P.Q.2d 2021 (T.T.A.B. 1996) ("Food & Beverage On-Line" held merely descriptive of an on- line news and information service updated daily for the food processing industry). The USPTO refuses protection for extensions such as "inc." and ".com." Examination Guide No. 2-99, Mark Composed, In Whole or In Part, of Domain Names at http://www.uspto.gov/web/offices/tac/notices/guide299.htm.
A complex fact-based judgment concerning the validity or strength of the Complainant's alleged mark is not one that is intended to be made by the UDRP. See Section 4(c) of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 25, 1999 at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm. This is certainly not a simple case where a certificate of registration has been supplied or where common law recognition of a distinctive mark can be easily ascertained. The Panel cannot, as a matter of judicial notice, accept as fact that "lowestfare.com" has become distinctive enough to establish a trademark right in the Complainant.
This problem bleeds into the issues of Respondent's rights, legitimate interest and bad faith. Respondent also offers travel services and claims "lowest fares." To this observer, it appears that the use of the domain name "thelowestfare.com"is simply for the purpose of leading consumers to a source of lowest fares. As such, it is being used merely to describe Respondent's services as it does for thousands of other travel agencies online. This is the kind of legitimate interest that US law protects when it discourages use of descriptive marks.
A comparison of the two website index pages does not show any effort by the Respondent to copy the Complainant's particular logo, nor do the words "lowestfare.com" appear anywhere on the page, other than in the referer URL. Similarity is only in the choice of domain name. In the material provided by Complainant, the Respondent identifies itself distinctively in very large and impressive typeface including its address and contact information and a solicitation for business. On its face, it appears to be a bona fide offer and Complainant provides no proof to the contrary. Nor is there any evidence of bad faith presented by the Complainant.
The Complainant has not met the burden of proof required by the UDRP Policy. The domain name remains with the holder.
Cambridge, MA, US
9 September 2000
(s) Diane Cabell