Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use – Generic name – Type of Service – Source of service – Commonly known as.

Complainant has been providing utility services under the name "City Utilities" since 1945. Complainant is known to its many customers as "City Utilities." Complainant has not registered the term "City Utilities" with the U.S. Patent and Trademark Office. Respondent does not operate any utility business. Respondent has been using the domain name in dispute as a link to his web site ACMENEWS.COM. This site is a Web directory concerning sites located in the Ozarks. There is nothing on it related to utility services. On March 21, 2000, Complainant sent an e-mail to Respondent inquiring about the possibility of purchasing the domain name.

Held, Domain name not transferred to complainant. 

The Panel rules that Complainant has failed to establish that "[Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In this case, while the evidence establishes that the domain name in dispute is identical to the term "City Utilities," it does not support a determination that Complainant has rights in this term. The term is generic and does not function as a mark. It describes the type of services offered by a utility company within a city, rather than the source of such services. It is not protectable.  
The evidence suggests that, prior to notice of the dispute, Respondent began preparations for use of the domain name in connection with providing a Web directory to the various city utilities across the U.S. Thus, the evidence suggests that Respondent has rights or legitimate interests in the domain name in dispute.
On the issue of "bad faith" registration and use, the evidence, at best, is equivocal. As noted above, it was Complainant, not Respondent, that first broached the subject of purchasing the domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Rules for Uniform Domain Name Dispute Resolution Policy

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Samuels, Panelist: -
 
 

1. The Parties
The Complainant in this administrative proceeding is City Utilities of Springfield, Missouri, a gas, water, electric, transportation, and telecommunications utility owned by and a part of the City of Springfield, Missouri, a constitutional charter city organized and existing in the State of Missouri, U.S.A. The Respondent is Ed Davidson, who is a Webmaster by profession.

2. The Domain Name and Registrar
The domain name in dispute is as follows: "cityutilities.com". The domain name was registered by Respondent with Network Solutions, Inc. on January 4, 2000. 

3. Procedural Background
On May 9, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
Respondent filed a response, which was received by WIPO on May 10, 2000.
Complainant filed a "Supplement to the Complaint," which was received by WIPO on May 15, 2000. 
The instant Administrative Proceeding was commenced on May 17, 2000. 
The decision of the Panel was due to WIPO on or before June 26, 2000.

 4. Factual Background
Complainant has been providing utility services under the name "City Utilities" since 1945. Complainant is known to its more than 86,000 electric customers, 70,000 gas customers, 66,000 water customers, and 850,000 annual bus customers as "City Utilities."
It does not appear that Complainant has registered the term "City Utilities" with the U.S. Patent and Trademark Office.
Respondent is a customer of Complainant, residing just outside of Springfield, Missouri.
Respondent does not operate any utility business. Respondent has been using the domain name in dispute as a link to his web site "acmenews.com". This site is a Web directory concerning sites located in the Ozarks. There is nothing on it related to utility services.
On March 21, 2000, Complainant sent an e-mail to Respondent "inquir[ing] about the possibility of purchasing the cityutilities.com domain name from you. Please let me know if you are interested in such a proposal." See Annex G to Response.
Attached as Annex E to the Complaint is a copy of an e-mail, dated March 28, 2000, received by Complainant from Respondent regarding his use of the domain name. In it, Respondent states as follows:
"The domain CITYUTILITIES.COM was registered on 04-Jan02000. Shortly after, I had the DNS setup to point the domain to the same server as Acmenews.com. Since then I have noticed home page access nearly double, while the entire site has seen a 20% increase in activity. I attribute the home page access increase primarily to people typing in www.cityutilities.com, as most of my site is externally linked from other pages within the site.
"Also, I have a mail server servicing cityutilities right now, and I have already received a few e-mails from people trying to e-mail you by sending e-mail to cityutilities.com vs. cityutil.com.
"Based on the above information, I believe the domain has a value of $75,000."
On May 9, 2000, within minutes after serving a copy of the Complaint on Respondent by e-mail, Respondent sent the following e-mail to Complainant’s counsel:
"This is not the correct way to obtain this domain. I made an offer, and you are to make a counter offer as discussed. You never made a counter offer.
"If you wish to make a counter offer, I am still willing to listen. I believe we can come to a mutually agreeable amount and have this matter settled quickly.
"If not, I will hire legal counsel and fight this."

 5. Parties’ Contentions
Complainant contends that it should prevail because: (1) the domain name is confusingly similar to Complainant’s service mark "City Utilities of Springfield, Missouri" and identical to its service mark "City Utilities"; (2) Respondent has no rights or legitimate interests in respect of the domain name, given that Respondent does not operate a utility business and has been using the name solely as a link to his web site "acmenews.com"; and (3) Respondent’s March 28, 2000 e-mail demonstrates that he is aware of the likelihood of confusion arising from use of the domain name and that he is willing to sell the domain name to Complainant for $75,000. These facts, coupled with the lack of any bona fide offering of goods or services demonstrate, according to Complainant, that the domain name was registered and is being used in bad faith.
Respondent contends that he should prevail because: (1) the term "city utilities" is generic; (2) he does have legitimate interests or rights in the domain name; and (3) the evidence does not demonstrate "bad faith" use and registration.
In support of his genericness argument, Respondent argues that the term "city utilities" is used across the U.S. to specify utilities provided at the city level and is used in the name of many utility providers.

Respondent further contends that he has rights to and a legitimate interest in respect of the domain name. In his response, he argues that the domain name was registered to provide a Web directory or portal to the various city utilities across the country and that development of the domain began on February 4, 2000. 
Finally, with respect to the "bad faith" issue, Respondent contends that less than 10 e-mails have been sent to the domain that should have gone to Complainant at its "cityutil.com" Web site and that the history of the contacts between the parties does not support a determination that Respondent registered the domain name "primarily for the purpose of selling … the domain name registration to the complainant … for valuable consideration in excess of [Respondent’s] out-of-pocket costs directly related to the domain name," within the meaning of 4. b. (i) of the Policy.

6. Discussion and Findings
The Panel determines that Complainant has failed to establish all of the elements required under 4 a. of the Policy. In particular, the Panel rules that Complainant has failed to establish that "[Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights." See 4 a. (i) of the Policy.
At the outset, the Panel expresses the view that this element incorporates two separate parts. First, that the domain name is identical or confusingly similar to a trademark or service mark, and, second, that the complainant has rights in the trademark or service mark. In this case, while the evidence establishes that the domain name in dispute is identical to the term "City Utilities," it does not support a determination that Complainant has rights in this term. Rather, as Respondent argues in his response, and as Annexes A and B to the Response corroborate, the term "city utilities" is used by many municipalities across the U.S. as part of the name of the local entity that provides electrical power, water, and other utilities. In other words, the term "city utilities" describes the type of services offered by a utility company within a city, rather than the source of such services. As such, the term is generic and does not function as a mark. It is not protectable. To the extent that residents of Springfield, Missouri may associate the term "City Utilities" with Complainant, such de facto secondary meaning does not vest Complainant with "rights" in such term.
While the Panel’s finding that Complainant has no rights in the term "city utilities" compels a ruling in favor of Respondent, for the sake of completeness, the Panel comments briefly on the other two issues presented -- whether Respondent has rights or legitimate interests in respect of the domain name and whether Respondent registered and uses the domain name in bad faith.
The evidence suggests that, prior to notice of the dispute, Respondent began preparations for use of the "cityutilities.com" domain name in connection with providing a Web directory to the various city utilities across the U.S. In his response, Respondent states that he noticed in December 1999 that City Utilities of Springfield was advertising a link to their web site in
417 Magazine. The link was to www.bringingpowerhome.com. Knowing that many people would probably try searching for their own local utility company on the web by typing in www.cityutilities.com, Respondent decided to register the domain name to provide a portal to these sites. Thus, the evidence suggests that Respondent has rights or legitimate interests in the domain name in dispute.
On the issue of "bad faith" registration and use, the evidence, at best, is equivocal. As noted above, it was Complainant, not Respondent, that first broached the subject of purchasing the domain name. The evidence further suggests that following receipt of Complainant’s March 21 e-mail, Respondent spoke with an employee of Complainant, Mark Viguet. During the course of the conversation, Respondent indicated that he did not know the value of the domain since he was not planning on selling it. After researching the subject, Respondent offered to sell it for $75,000. These facts, in the Panel’s view, do not support a determination of "bad faith" registration and use.

7. Decision
In view of the above, the Panel denies Complainant’s request for transfer to it of the domain name "cityutilities.com".

Jeffrey M. Samuels
Panelist
Dated: June 19, 2000