Domain name – Generic names - Secondary meaning - Domain name dispute resolution policy - Canadian Trademark registration – Famous marks – Late-filed submissions - Identical - Rights or legitimate interest  - Good faith registration - Good faith use.

Complainant was registrant of Canadian trademark, CONCIERGE and domain name concierge.ca. Registrant registered the domain name, concierge.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, as per Ayers and Carson, Domain Name remains the property of Respondent.

Even though the trademark and the name are all but identical, the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers.

The domain name CONCIERGE.COM is all but identical to the trademark registered and used by Complainant, CONCIERGE. However, since Respondent is not using the domain name without reasonable cause and there is neither evidence of use of the Complainant’s registered trademark nor evidence of confusion nor attempts to trade on the goodwill created by the trademark, Respondent has rights or legitimate interest in respect of the domain name. 

The Respondent certainly has not engaged in any pattern of conduct concerning the registration of domain names.  There is no evidence of bad faith on the part of the Respondent.

Held, as per Bernstein and Ayers, Domain Name remains the property of Respondent.

Although the Panel has the right to request additional materials after the original submissions, the parties have no right to submit additional materials absent the Panel’s agreement. In exercising its discretion under Rule 10 of the ICANN Policy, the Panel considers whether the submission of additional materials would undermine the ICANN Policy promise of rapid review and adjudication of domain name disputes and whether the record already provides all the information necessary to render an informed decision. Strict compliance with the rules is important, particularly at this early stage of the ICANN process.

It is clear that the domain name concierge.com, not counting the generic top level domain “.com,” is identical to the trademark CONCIERGE. 

The absence of a corporate or trade name from which a domain name was derived does not render the registration and use illegitimate. The Respondent’s receipt of the Notice does not undermine its claim of legitimate interest in the Domain Name since by the time of that notice the Respondent already had purchased and committed to use the domain name and had publicly launched the home page of its forthcoming site. Moreover, even if notice had been given prior to the acquisition of the domain name that would not render the use illegitimate because the Respondent had a good faith basis for believing it was entitled to use the domain name.

In circumstances such as these, where there is a positive word image and no desire to cause confusion with CRS’ trademark rights, the first to register a domain name containing a generic or descriptive mark, such as Concierge, should prevail absent bad faith and a lack of legitimate interest. In the absence of proof of fame or distinctiveness or strong secondary meaning, the Respondent has a legitimate interest in the domain name.

A repeated change of ownership of a domain name, prior to the ICANN Rules being in effect, does not justify transfer of the domain name for three reasons. First, the ICANN Rules were not in effect, and do not provide for any retroactive application prior to their adoption. Second, although the ICANN Rules were not earlier in existence, complainants had other options for pursuing domain names to which they objected such as Network Solutions’ dispute resolution policy and recourse to court for trademark infringement claims. Third, that the domain name had been available from domain name brokers suggests that the Complainant had the option of purchasing the name. Since the Complainant did not choose its other options for trademark infringement claims at that time, it cannot now invoke the Policy to force the Respondent, which purchased and is using the name in good faith for legitimate purposes, to transfer the name at no charge.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

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Cases referred to

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Panel Decision referred to

Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000)
 

Ayers and Carson, Panelists: -

The above entitled matter came on for an administrative hearing on March 23, 2000, before the undersigned three member panel on the Complaint of CRS Technology Corporation (“CRS”), hereafter “Complainant”, against CondeNet, Inc. (“CondeNet”) hereafter “Respondent”. Complainant was represented upon the written submitted record by Tean Kerr, Esq., Bennet Jones,
4500 Bankers Hall East, 855 – 2nd Street S.W., Calgary, Alberta, T2P 4K7 Canada. Respondent appeared upon the written submitted record by Eric E. Gisolfi, Esq., Sabin Bermant & Gould LLP, Four Times Square, New York, New York 10036.

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”). Respondent requested a three member panel. The Panel consisted of the Honorable R. Glen Ayers (a former United States Bankruptcy Judge), Chairman, Langley & Banack, Inc., San Antonio, Texas, Ross Carson, Esq., Ogilvy Renault, Ottawa, Canada, and David H. Bernstein, Esq., Debevoise & Plimpton, New York, New York.

Upon the written submitted record, a DECISION in favor of the Respondent has been rendered. Each member of the panel has found for the Respondent. Mr. Ayers and Mr. Carson issued one opinion supporting the decision; Mr. Bernstein issued a separate opinion supporting the same decision, which was joined by Mr. Ayers.

Procedural Background

   * Domain Name: concierge.com
   * Domain Name Registrar: Network Solutions, Inc.
   * Domain Name Registrant: CondeNet, Inc.
   * Date of Domain Name Registration: Prior to 1995
   * Date of Complaint Filed: February 1, 2000
   * Date of Commencement of Administrative Proceeding in
     Accordance with Rule 2(a) and Rule 4(c):February 3, 2000
   * Due date for a Response: February 28, 2000

Procedural Findings

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (“The Forum”) forwarded the Complaint to Network Solutions, Inc. who forwarded the Complaint to Goli Sheikholeslami, CondeNet, Inc., 140 E. 45th Street, 37th Floor, New York, New York 10017 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified
Network Solutions, Inc., which then notified the Respondent, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did submit a response to the Forum within twenty (20) days pursuant to Rule 5(a). Complainant’s original submissions do not comply with Rule 3 (b) (xiv), in that the Complaint does not contain the required certification.

Complainant and Respondent have subsequently requested to be permitted to make additional submission. The Panel has determined (unanimously) to decline to receive additional submissions from the parties. The Panel believes that the rules are clear and that the rules are designed to create a system of adjudication that resolves these disputes as rapidly as possible with the least amount of cost to both parties. To allow additional submissions by the Complainant would of necessity require the allowance of additional rebuttal submissions from Respondent, generating delays in the decision making process. Complainant selected this forum and must be bound by its rules.

Discussion

In February of 1999, Respondent acquired the previously registered domain name “concierge.com” which had apparently been registered with Network Solutions since approximately 1995. Apparently, the domain name had been “in commerce” for some time and had traded hands on a number of occasions. Network Solutions verified that Respondent is the Registrant for the domain name “concierge.com”, and that further by registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN’s rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

Findings of Fact

1. Complainant is the owner of the Canadian Trademark “Concierge.” The Trademark was filed on May 15, 1995 and was registered on April 23, 1998. The record is very clear as to ownership of the mark by Complainant.

2. The domain name is a compound word comprised of concierge which is identical to the Complainant’s registered trademark followed by .com. The distinctive element of the domain name
is “concierege”.

3. Respondent selected “concierge.com” as a possible domain name in 1998.

4. In 1998 the Respondent ordered a trademark availability search for “CONCIERGE” to be conducted in the United States and Canada. The results of the availability search were
supplied to the panel as Exhibit “B” to Respondent’s submission. While Respondent maintains that it did not know of the Complainant’s Canadian Trademark Registration for CONCIERGE, the particulars of Complainant’s Canadian Trademark Registration for CONCIERGE are found in Exhibit “B” to the Respondent’s submission.

5. Respondent, in February of 1999, filed a trademark application in the United States for “CONCIERGE.COM”. 

6. Neither the Complaint’s original Canadian Trademark application nor the Respondents United States Trademark application refer to or contain a function limitation as to “travel related services.” The Complainant’s Canadian Registered Trademark is registered in relation to the wares including “computer software application program interfaces using intelligent technologies which provide access to travel services”. The Registration includes services but the services in the registration do not include travel services or accessing travel services.

7. At about the same time as the United States Trademark application was filed, Respondent purchased the domain name from a third party.

8. In July, 1999, CondeNet set up a home page announcing the “concierge.com” service. Complainant immediately contacted Respondent, by letter dated August 19, 1999, asserting its trademark. In that letter, Complainant asserted that it had a web site at www.concierge.ca in operation since 1996. However, that web site is apparently not an operational web site in that it merely solicits information from visitors as to the travel related services they might desire.1

9. In September, 1999, CondeNet filed a second trademark application for the Trademark “Concierge.com the Travel Supersite & Design”. In October, 1999, the site was launched.

10. While there is evidence in the submission by Respondent of settlement negotiations, these appear to be legitimate settlement negotiations which should be excluded from the evidence considered by this Panel as would be the case in all or at least most courts of law in the United States and Canada.

11. In summary, the facts are simple. Complainant holds a valid, preexisting Canadian Trademark for the term “Concierge.” CondeNet holds a properly registered domain name, “concierge.com.” The Complainant’s Canadian Trademark Registration is registered in relation to goods including
“computer software application program interfaces using intelligent technologies which provide access to travel services”. The Respondent is using the domain name “concierge.com” to provide the services namely online travel information.

Conclusions

12. The issues are clear. Does a previously recorded trademark holder, Respondent, have the ability to prevent use of an almost identical (except for the absence of capitals and the addition of “.com”) domain name?

13. Here, there appears to be no evidence of the conduct referred to as “cybersquatting”.The domain name holder, the Respondent, has not registered the domain name and is not using the domain name without reasonable cause. There is no evidence of use of the registered trademark nor is there evidence of confusion.

14. And, there appears to have been no attempt by the Respondent to trade on the goodwill created by the trademark nor does there appear to be any likelihood of confusion between the mark and the domain name. In fact, Respondent does not appear to have developed the mark in any significant way.

15. The Respondent certainly has not engaged in any pattern of conduct concerning the registration of domain names.

16. Therefore, the issue is a hard but straightforward issue concerning application of the “ICANN Uniform Domain Name Dispute Resolution Policy” and the “ICANN Rules for Uniform Domain Name Dispute Resolution Policy” to the facts. Here, even though the trademark and the name are all but identical, the Panel has determined that the first person or entity to register the domain name should prevail in circumstances such as these where the domain name is a generic word, here indicating a provider of services, and where that word is widely used as a trade or service mark, although almost always in connection with modifiers or qualifiers.

Bernstein and Ayers, Panelists

Procedural Background

Complainant and Respondent each have sought permission to make additional submissions beyond the initial Complaint and Response. The Panel unanimously decided to decline to receive additional submissions from the parties. CRS, in particular, argued that it wanted to submit further information so that it could respond to CondeNet’s response, and that it did not provide more detail in its Complaint because it was not familiar with the rules governing ICANN proceedings.

Rule 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) gives the Panel completely discretion on whether to accept any late-filed materials. Although the Panel has the right to request additional materials, the parties have no right to submit additional materials absent the Panel’s agreement. Rule 12.

In exercising this discretion, the Panel is mindful that one of the promises of the Policy is to ensure the rapid review and adjudication of domain name disputes. That promise would be undermined were parties encouraged to submit replies, which may themselves engender sur-replies. Moreover, in this case, the Panel carefully has reviewed the record and has determined that the record already provides all the information necessary to render an informed decision. Finally, strict compliance with the Rules is arguably even more important at this early stage of the ICANN process as a failure to respect the rules will cause a loss of confidence in the Policy. See Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000). For these reasons, the parties’ requests for leave to submit supplemental materials is denied. As for CRS’s protestations that it did not understand the Rules, CRS selected this forum for its complaint and thus must be prepared to accept the applicable rules.

Factual Background

CRS is the owner of a Canadian trademark registration for the mark CONCIERGE in connection with “computer software application program interfaces using intelligent technologies which provide access to live travel services,” as well as a variety of computer and database services. The application for this mark was filed May 15, 1995 and registration issued on April 23, 1998. CRS also has registered the domain name concierge.ca, which connects to an Internet site entitled 
“ConciergeÔ The Traveller’s Best Friend©” This site states that CRS is in the process of implementing a “technological breakthrough that will create[] [r]eal-[t]ime access to Canadian travel information and product suppliers.” CRS’s Internet site contains results of a survey conduct by CRS on behalf of the Tourism Alliance for Western and Northern Canada Inc., which purportedly was “directed at the use of information technology in tourism marketing.”

CondeNet was formed in 1995 as an offshoot of Conde Nast Publications, Inc., publisher of such magazines as Glamour, Gourmet, The New Yorker, and Conde Nast Traveler, to reach Internet consumers. Respondent selected “concierge.com” as a possible domain name in 1998 as part of a business plan to expand the travel magazine Conde Nast Traveler to the Internet.

Prior to adopting “concierge.com” as the domain name to use in connection with its Internet site, CondeNet ordered full U.S.and Canadian trademark searches to assess the availability of this trademark. The report, which CondeNet submitted with its Response, discloses numerous third party registrations and applications for marks consisting of or containing “concierge,” including CRS’ Canadian trademark. Apparently concluding that the field for this mark was sufficiently crowded that CondeNet’s use of a similar mark would not infringe any preexisting trademark rights, CondeNet decided to adopt this mark. On February 17, 1999, it filed an intent-to-use trademark application with the USPTO to register CONCIERGE.COM for “providing a wide range of information by means of computer databases available via global computer networks.” Also in February 1999, CondeNet purchased concierge.com from a third party and began developing its
Internet service.

CondeNet established a home page announcing its “Concierge.com” Internet service in July 1999, and launched its concierge.com Internet service in October 1999. Today, the website contains travel tips and advice, information on travel promotions, fare-finders, reviews of hotels, cruises and resorts, and other travel-related topics. The website features the Conde Nast Traveler logo in close proximity to the words “concierge.com.”

On August 19, 1999, soon after CondeNet created its home page, CRS’s attorney sent CondeNet a cease and desist letter in which CRS claimed that CondeNet had no legitimate interest in the domain name concierge.com and that its registration and use of this domain name violated CRS’s exclusive rights in its CONCIERGE trademark. The parties were unable to resolve this dispute amicably, which led to the filing of the instant proceeding.

Discussion

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(2) that the respondent has no legitimate interests in respect of the domain name; and

(3) the domain name has been registered and used in bad faith.

There can be no question that the domain name concierge.com, not counting the generic top level domain “.com,” is identical to the trademark CONCIERGE. CRS therefore has satisfied part one of the test.

With respect to the second prong of the test, however, CRS has failed to prove that CondeNet has no legitimate interest in the domain name concierge.com. CRS argues that CondeNet lacks
a legitimate interest because it “never was known as ‘Concierge’ prior to using the domain name” and was notified of CRS’s objections before it commercially launched its site. These arguments are without merit.

That CondeNet does not use “Concierge” in its corporate name or otherwise (such as an assumed or trade name) is immaterial. A person or entity may legitimately register and use many domain names that are different from its corporate or trade names. Thus, while the registration of a domain name that mimics one’s corporate or trade name may provide proof of legitimacy, Policy Section 4(c)(ii), the inverse is not also true: the absence of a corporate or trade name from which a domain name was derived does not render the registration and use illegitimate.

Nor does the notice CRS provided to CondeNet undermine CondeNet’s claim that it has a legitimate interest in the domain name. By the time of that notice (August 1999), CondeNet already had purchased and committed to use the domain name and had publicly launched the home page of its forthcoming site. Moreover, even if notice had been given prior to the acquisition of the domain name, that would not render the use illegitimate because CondeNet had a good faith basis for believing it was entitled to use the domain name.

This is not a case in which CondeNet selected a domain name incorporating a famous or distinctive mark that, it should have known, it was not entitled to use. Rather, CondeNet selected as its domain name a mark that is somewhat descriptive, and is meant to communicate some aspect of the services provided (i.e., the kind of assistance one could expect from a hotel concierge). The very reason it is attracted to this domain name is because of the positive image associated with the word, and not at all because of any desire to cause confusion with CRS’ trademark rights. In these circumstances, the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest.

Nor is this a case where CRS’s mark, although based on a word from every day discourse, nevertheless has developed such strong fame or distinctiveness that consumers would inevitably believe that a website located at the domain name is affiliated with CRS (e.g., apple.com). To the contrary, the Panel finds that CONCIERGE is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website. CRS has submitted no evidence to overcome this initial reaction, such as proof of fame or strong secondary meaning, and has conceded in correspondence to the Canadian Trademark Office (in an effort to overcome a rejection based on an earlier-filed application for the mark “Concierge X Press Systems”) that the term “concierge” is inherently weak due to its widespread descriptive use, and therefore is entitled only to a narrow ambit of protection.

For all these reasons, the Panel finds that CondeNet has demonstrated that it is has a legitimate interest in registration and use of the domain name concierge.com.

CRS also has failed to show that CondeNet acted in bad faith. Its primary assertion of bad faith is that CondeNet registered the domain name to attract users to its site and cause confusion with CRS’ services. There is, however, no evidence of confusion in the record. Nor is there any evidence that
CondeNet registered this domain name to divert customers or to try to sell this domain name to CRS at a profit.

Finally, CRS argues that it is entitled to the domain name because it changed hands twelve times since 1995, including among domain name brokers, and that had the ICANN Rules been in effect sooner, CRS would have had greater opportunities to acquire the name. This does not, however, justify transfer of the domain name from CondeNet. First, the ICANN Rules were not in effect, and do not provide for any retroactive application prior to their adoption. Second, although the ICANN Rules were not earlier in existence, complainants had other options for pursuing domain names to which they objected such as Network Solutions’ dispute resolution policy and recourse to court for trademark infringement claims. CRS has not made any showing in the record that it tried to invoke any of those procedures. Third, that the domain name had been available from domain name brokers suggests that CRS had an option available to it – purchasing the name. Having chosen not to do so for a name that is somewhat descriptive, CRS cannot now invoke the Policy to force CondeNet, which purchased and is using the name in good faith for legitimate purposes, to transfer the name at no charge.

Decision

Based upon the above findings and conclusions, and pursuant to Paragraph 4(i), it is decided as follows:

The undersigned find for the Respondent. The domain name “concierge.com” registered by CondeNet, Inc. shall remain the property of CondeNet and the relief requested by CRS is denied.

Dated: March 28, 2000, by:

R. Glen Ayers, Jr. (formerly United States Bankruptcy Judge), Chairman

R. Glen Ayers, Jr.

Ross Carson, Esq.

David H. Bernstein, Esq.