Fort Lee Chamber of Commerce v. Carmine DeMarco

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Fort Lee

Chamber of Commerce v. Carmine A. DeMarco

Case No.

D2002-0291

1. The Parties

Complainant is the Fort

Lee Chamber of Commerce, a New Jersey Corporation located in Fort Lee, New Jersey,

United States of America.

Respondent is Carmine DeMarco,

a resident of Cliffside Park, New Jersey, United States of America.

2. The Domain Names

and Registrar

The domain names at issue

are:

<fortleechamberofcommerce.com>

<fortleechamberofcommerce.org>

<fortleechamberofcommerce.net>

<fortleechamber.com>

<fortleechamber.org>

<fortleechamber.net>

(the Domain Names).

The registrar is CSL GMbH,

Rathausufer 16, Dusseldorf, Germany.

3. Procedural History

This administrative proceeding

was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution

Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules of Uniform

Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the

Rules").

The Complaint was received

on March 27, 2002.

The Response was received

on April 30, 2002.

Mark V. B. Partridge was

appointed Panelist on May 22, 2002.

The Complainant submitted

a Reply to the Response on May 15, 2002. Respondent object to that submission

and sought leave to file a Surreply. Leave to file a Surreply was granted on

June 4, 2002, and the additional submission was received June 11, 2002.

All submissions have been considered in rendering this opinion.

4. Factual Background

Complainant asserts that

it has used the trademarks FORT LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER

in commerce to promote civic activities for over 40 years. The Complainant has

not obtained any registrations for those marks. Other than the allegation by

its attorneys, Complainant has submitted no evidence relating to the length,

extent or nature of its alleged use of the claimed trademarks. The record indicates

that Complainant's official name is GREATER FORT LEE CHAMBER OF COMMERCE.

It appears that Complainant

sponsors or is otherwise affiliated with business directory web site located

at <fortlee.com>. Complainant receives advertising revenue from the site

in exchange for its sponsorship.

Respondent is the Vice

President of Benevanto Publishing, Inc, doing business as Virtual Town Pages

("VTP"). VTP is engaged in the business of creating and operating online advertising

directories for local communities. It operates such directories in the area

of Fort Lee, New Jersey, including "Fort Lee Online" (<fortleeonline.com>),

"Edgewater Online" (<edgewateronline.com>), and "Cliffside Park Online"

<cliffsideparkonline.com>.

Respondent is also the

webmaster for the Borough of Fort Lee and maintains the official web site at

<fortleenj.org>. VTP has created the official web site for the Fort Lee

Film Commission and has been contacted by the Fort Lee Public Library to work

on its web site. VTP also voluntarily maintains web sites for the Edgewater

Business Alliance and the Cliffside Park Chamber of Commerce.

VTP began operating Fort

Lee Online in or around November 1999. Respondent claims that Complainant changed

the format of the <fortlee.com> web site in or around June 2000 to imitate

the format of VTP's site <fortleeonline.com>. Also in June 2000, a representative

of VTP, Karen DeMarco, Respondent's wife, met with Complainant about becoming

a member of Complainant's organization. Respondent learned at that meeting that

Complainant had an arrangement with the operator or <fortlee.com> for

payment to Complainant of some advertiser monies.

Respondent registered the

Domain Names on June 16, 2000.

On June 29, 2002, Respondent

met with Complainant and advised that its involvement with the <fortlee.com>

web site created a conflict of interest with VTP as a prospective member. In

his follow-up message, Respondent stated: "I was . . . very disappointed to

visit the Fortlee.com web site after our meeting, and see that they are now

officially "co-sponsored" by the Fort Lee Chamber of Commerce."

On July 20, 2000, Complainant

wrote Respondent about transfer of the Domain Names. On August 8, 2000, Respondent

wrote Complainant stating:

"With respect to the domain

name issue raised in your letter, I would like to first clarify some confusion.

You used the term "return" of domain names; however, those domain names were

purchased directly by Virtual Town Pages and were never owned by the Greater

Fort Lee Chamber of Commerce, therefore they could not be "returned." We own

many domain names, including those pertaining to a number of surrounding towns,

but are not in the business of selling same. If we were to become a member of

your organization and there was a domain name of our that you were interested

in using, we would be glad to maintain a free web site for the Chamber at the

we address—however, that scenario could only occur of course if the conflict

of interest were no longer present and the Chamber was no longer competing with

use in the sale of Internet directory listings and web site creation, since

we certainly would not allow any of the domain names that we own to be used

to divert visitors to a competing web site."

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Names are confusingly similar to marks

in which Complainants have rights; that the Respondents have no right or legitimate

interest in the Domain Names; and that the Domain Names were registered and

used in bad faith.

B. Respondent

Respondent denies that Complainant has trademark rights in the mark FORT LEE

CHAMBER OF COMMERCE or FORT LEE CHAMBER. Respondent also claims that Complainant's

claims should be barred by the doctrines of laches and unclean hands.

6. Discussion and Findings

The arguments presented

by the parties focus on a complicated set of facts relating to the allegation

that Complainant is somehow improperly engaged in commercial activities triggering,

among other things, a violation of the racketeering laws of the United States.

Much of this discussion is well beyond any issue relevant to this proceeding.

Our substantive inquiry

focuses instead on three issues: (1) are the Domain Names confusingly similar

to a trademark in which the Complainant has rights; (2) does Respondent have

a legitimate interest in the Domain Names; and (3) have the Domain Names been

registered and used in bad faith? The Complainant has the burden of proof on

each of these issues.

It is undisputed that the

marks claimed by Complainant have not been registered. Instead, Complainant

relies on common law rights. Under U.S. law, which is applicable to both parties,

Complainant must prove prior use and distinctiveness to establish common law

rights. In this case, the alleged marks FORT LEE CHAMBER OF COMMERCE and FORT

LEE CHAMBER appear to be merely descriptive. Such marks may be protected if

they have acquired distinctiveness or secondary meaning through use. The factors

typically considered include (1) length and manner of use; (2) manner and extent

of advertising and promotion; (3) sales volume; and (4) survey evidence. Home

Mortgage Corp. v. Platinum Financial Group, 149 F.3d 722 (7th

Cir. 1998); Investacorp, Inc. v. Arabian Investment Banking Corp., 931

F 2.d 1519 (11th Cir. 1991).

Here, the Complainant has

failed to present any evidence of secondary meaning, except for the bald allegations

of its complaint. Complainant merely alleges that trademarks have been continuously

used since 1960 in connection with "countless civic activities and services

to the Fort Lee community." Complainant lists various activities, but has included

no exhibits or affidavits to support its claim.

The allegations of the

Complainant are supported by certification that "the information contained in

this Complainant is to the best of the Complainant's knowledge complete and

accurate." Perhaps allegations made on that basis, if undisputed, might be sufficient

to make a prima facie case. However, here those allegations are disputed. Respondent

contends that Complainant's name is GREATER FORT LEE CHAMBER OF COMMERCE and

denies that Complainant has made trademark use.

In support of its denial,

Respondent has produced various materials relating to Complainant. These all

prominently use the name GREATER FORT LEE CHAMBER OF COMMERCE. None display

prominent use of FORT LEE CHAMBER OF COMMERCE or FORT LEE CHAMBER. Respondent's

denial is further supported by materials submitted by Complainant. For example,

Annex 3, the whois record for Complainant's domain name registration for <ftleechamber.com>,

identifies the organization as "Greater Fort Lee Chamber of Commerce." Similarly,

Annex 5 is letter from Complainant's counsel to Respondent stating "This firm

represent the Greater Fort Lee Chamber of Commerce."

Thus, the evidence submitted

does not support Complainant's claim of right in the marks FORT LEE CHAMBER

OF COMMERCE or FORT LEE CHAMBER. However, based on the allegations of Respondent

and the materials submitted with the response, I find that Complainant does

use the name GREATER FORT LEE CHAMBER OF COMMERCE. If the Domain Names were

deemed confusingly similar to that name, Complainant might prevail on the first

element of its claim if the name had acquired secondary meaning. Therefore,

we turn to examine the evidence of rights in GREATER FORT LEE CHAMBER OF COMMERCE.

In this regard, Complainant

has presented no evidence. Indeed, by focusing on a claim of rights in FORT

LEE CHAMBER OF COMMERCE and FORT LEE CHAMBER, Complainant has not even asserted

rights in the mark GREATER FORT LEE CHAMBER OF COMMERCE.

Respondent's actions may

be viewed as evidence of Complainant's rights in the mark GREATER FORT LEE CHAMBER

OF COMMERCE. A deliberate intent to trade on another's mark may be considered

evidence of secondary meaning. See Transgo, Inc. v. Ajac Transmission Parts

Corp., 768 F.2d 1001, 1016 (9th Cir. 1986)("Proof of exact copying,

without any opposing proof, can be sufficient to establish secondary meaning");

RJR Foods, Inc. v. White Rocks Corp., 603 F.2d 1058 (2d Cir. 1979)(defendant's

intentional copying constitutes evidence of secondary meaning); Compare Co-Rect

Products v. Marvy! Advertising Photography, 780 F.2d 1324 (8th

Cir. 1985)(intent is a factor in determining secondary meaning but is not conclusive).

Here, the evidence suggests

that Respondent adopted a name similar to Complainant's name for the purpose

of inducing Complainant to discontinue its support of a competing city directory

site. This highly suspicious motive may constitute bad faith intent in support

of Complainant's claim of rights, but I do not believe it is conclusive of those

rights. Furthermore, based on the total record presented, I find I am unable

to give Complainant the benefit of any doubt, for several reasons:

First, I believe Complainant's

submission is not consistent its certification that the information contained

in the Complainant is "complete and accurate." I believe Complainant has been

disingenuous about its very name, calling itself "Fort Lee Chamber of Commerce"

when in fact its name is "Greater Fort Lee Chamber of Commerce." I am surprised

by this apparent attempt at deception. It seems so unnecessary if Complainant

in fact had made trademark use of its name for 40 years. The deception raises

doubt about Complainant's other claims.

In addition, Complainant's

failure to submit any evidence in support of its claim of trademark rights is

puzzling. The failure in the original complainant might be attributed to the

belief that those rights were undisputed. However, Respondent did sharply dispute

those rights. Nevertheless, Complainant continued in its omission when it submitted

its Reply to the Response. The Reply, which consists of over three pages of

small, single spaced type, addresses many of the points raised by Respondent

(including laches, free speech, genericness and lack of confusion), cites numerous

cases, but still ignores Respondent's basic point that Complainant has failed

to prove any trademark rights in any marks identical or confusingly similar

to the Domain Names.

It is a general proposition

of United States law that the failure of a party to submit evidence in its control

may permit an adverse inference the facts would not be favorable to that party.

See Mondich v. Brown, WIPO Case No. D2000-0004 . That principle seems

applicable here, given that Complainant's failure of proof was called to its

attention in the Response but Complainant did not then submit evidence of its

rights.

In weighing the record,

we have on one hand Respondent's admission that Complainant uses the name GREATER

FORT LEE CHAMBER OF COMMERCE; the appearance of bad faith registration and use;

and Complainant's contested allegation that it has protectable trademark rights.

On the other hand, we have Complainant's apparent deception about its actual

name and its failure to present any evidence of its trademark rights after notice

that its claim of rights was challenged. Even if we accept Complainant assertion

that it has used its name for forty years, we have no evidence on the other

relevant factors for determining secondary meaning. There is no evidence of

the manner in which the name has been used during that period of time, the nature

and extent to which the name has been advertised or promoted, the volume of

services provided under the name or the reaction of the public to the name.

All things considered,

I find that Complainant has failed to prove trademark rights in any mark that

is identical or confusingly similar to the Domain Names. The record otherwise

is inconclusive on those rights. Therefore, it is not necessary to consider

further the other elements of Complainant's claim or Respondent's defenses.

Perhaps Complainant's failure of proof could easily be overcome, and this decision

is not intended to be prejudicial to its ability to prove its rights in another

forum. Nevertheless, that failure of proof is controlling here.

7. Decision

For the reasons stated

above, Complainant's request for transfer of the Domain Names is denied.

Mark V.B.

Partridge

Sole Panelist

Dated: June

18, 2002