DECISION

 

Eminent Domains Inc. v. Target Directories Corporation

Claim Number: FA0312000221175

 

PARTIES

Complainant is Eminent Domains Inc. (“Complainant”) represented by Sandra A. Jeskie, of Duane Morris LLP, One Liberty Place, Philadelphia, PA 19103.  Respondent is Target Directories Corporation (“Respondent”) represented by Adam Aptowitzer, Suite 312 - 515 Chaplin Cres., Toronto, ON, Canada M5N 2N1.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mysummercamps.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

 

On December 23, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <mysummercamps.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 20, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mysummercamps.com by e-mail.

 

A timely Response was received and determined to be complete on January 20, 2004.

 

A timely Additional Submission was received from Complainant and was determined to be complete on January 23, 2004.

 

Respondent also filed a timely Additional Submission, which was determined to be in compliance with the Rules on January 28, 2004.

 

On January 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq. as Panelist.

 

After the appointment of the Panel, Complainant filed a document named “Second Additional Statement of Eminent Domains, Inc. in Response to Target Directories Corporation’s Additional Statement.” This submission was sent by the Forum to the Panel on February 3, 2004, pointing out that it was not in compliance with Supplemental Rule No. 7, and was considered to be deficient.

 

On February 5, 2004, the Panel received a submission from Respondent, objecting to Complainant’s deficient filing of its “Second Additional Statement.” Another submission was received on February 10, 2004, insisting in the deficiency of Complainant’s “Second Additional Statement” and requesting a chance to respond to the same.

 

As a consequence, on February 11, 2004, the parties received the Panel’s “Order for Additional Submissions and Extending Time for Rendering a Decision,” admitting Complainant’s “Second Additional Statement,” granting Respondent a term due on February 16, 2004 to give response to such statement, and extending the term to issue a decision until February 23, 2004.

 

A timely submission from Respondent was received on February 16, 2004, in compliance with the Panel’s order.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant asserts that it has established rights in its SUMMERCAMPS.COM mark through continuous and widespread use of the mark in commerce from November 8, 1995. The website related to the <summercamps.com> domain name soon became the premier website for finding summer camps online. By 2002, the <summercamps.com> website received roughly 2 million hits and it offered information on over 17,000 camps. Complainant’s mark attained national recognition when Complainant was interviewed live on Ziff Davis TV in San Francisco on March 23, 1999 and a summary of the <summercamps.com> website was posted on Ziff Davis’ website for having the best model for finding summer camps on the Internet. According to Complainant, its long and extensive use of SUMMERCAMPS.COM has resulted in established goodwill in the mark, which has been widely recognized by others as a source indicator for Complainant’s services. The mark is distinctive and has also acquired secondary meaning. Complainant’s mark SUMMERCAMPS.COM has sufficient association with Complainant such that common law trademark rights exist.

 

Respondent’s <mysummercamps.com> domain name, registered in July 2003, is confusingly similar to Complainant’s SUMMERCAMPS.COM mark. The only difference is the addition of the word “my” before “summercamps,” which fails to differentiate the disputed domain name from Complainant’s mark and does not create a new distinct mark capable of overcoming a claim of confusing similarity. Respondent’s domain name has caused actual confusion for Complainant’s customers.

 

Complainant alleges that Respondent has no rights to Complainant’s mark, SUMMERCAMPS.COM. Until November 2003, Mr. Christian Veillette and Mr. Evan Heltay, were listed as contacts for the <mysummercamps.com> website and were employees of Complainant.  Mr. Heltay had access to SUMMERCAMPS.COM’S confidential/proprietary business information, including SUMMERCAMPS.COM’s extensive customer list containing over 17,000 summer camps, its website design and associated technology, its marketing and promotional strategies and materials and its financial accounts.  Mr. Veillette also had access to SUMMERCAMPS.COM’s proprietary information concerning its website traffic statistics, website design and related technologies.  Mr. Heltay and Mr. Veillette were never authorized to use Complainant’s mark for any purpose other than for SUMMERCAMPS.COM. Nevertheless, the registration of the <mysummercamps.com> domain name occurred during Mr. Heltay and Mr. Veillette’s ongoing business relationship with Complainant.

 

Complainant states that Respondent’s use of the domain name was done intentionally to divert Complainant’s customers to Respondent’s own site for commercial gain and there is therefore no legitimate noncommercial, or fair use of the disputed domain.

 

The <mysummercamps.com> website falsely states that “in 2000-2001 over 1.3 million unique visitors accessed [the site].”  Complainant asserts that Respondent is obviously referring to SUMMERCAMPS.COM’s traffic statistics because <mysummercamps.com> had not even been registered until July 2003. Respondent copied information from the SUMMERCAMPS.COM’s website. Respondent, through Mr. Heltay, also falsely informed SUMMERCAMPS.COM’s customers and the critically important DMOZ directory, which establishes the website listing position on the major search engines, that SUMMERCAMPS.COM had changed its name to <mysummercamps.com>. These actions are neither a bona fide offering of services, nor a legitimate non-commercial or fair use. Respondent has attempted to trade on Complainant’s name, reputation and goodwill, in bad faith.

 

According to Complainant, the <mysummercamps.com> domain name was registered for the primary purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. As former business associates of Complainant, Mr. Heltay and Mr. Veillette, had access to Complainant’s privileged information regarding Complainant’s website. Complainant states that Mr. Heltay tried to disguise his registration of <mysummercamps.com> by using Target Directories Corporation. Complainant further contends that Respondent’s false suggestion of a non-existent affiliation with Complainant is evidence of bad faith.

 

As a consequence, Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.

 

B. Respondent

 

According to Respondent, the Complaint is based on two fundamental misstatements: (i) that the business associated with SUMMERCAMPS.COM belongs to Complainant; and (ii) that Complainant has rights to the domain name in question.

 

Respondent asserts that Complainant is a domain name reseller, and has registered at least 39 domain names dealing with a variety of topics. Complainant’s modus operandi is apparently to set up a web page with nominal information concerning the subject matter of the URL and request that anyone interested in developing the site contact them.

 

On September 1^st, 1999, Netpostmaster Inc. (“NPM”), entered into an agreement with Complainant to develop a business of an online directory of summer camps and camp jobs for use by parents, summer camps and prospective employees. The agreement stipulated that Complainant was to incorporate a new company called Summercamps.com Inc. whose sole asset would be ownership of the URL <summercamps.com>, but any assets of the business (except the name) were to be developed and held by NPM. Despite its obligations, Complainant never transferred registration of <summercamps.com> into a separate corporation and it remained the property of Complainant solely. Ownership of the business, business tools and assets (excluding the URL) remained with NPM.

 

Respondent explains that from October 2000 until September 2001, Mr. Heltay was the employee at NPM in charge of implementing NPM’s obligations under the agreement. In September 2001, Mr. Heltay’s status changed from employee to independent contractor but he remained responsible for NPM’s obligations under the contract. In or about September 2002, NPM approached Mr. Heltay with an offer to give him the business, business tools and assets involved in the directory business. Mr. Heltay accepted and ran the business as a sole proprietor. Mr. Heltay spoke with Complainant and they agreed to deal with questions regarding ownership of the name and possible payment at a later date. In the summer of 2003, Mr. Heltay proposed to compensate Complainant for the eight months he spent operating his business under <summercamps.com> and to purchase the URL from Complainant. The negotiations failed so Mr. Heltay registered <mysummercamps.com> under his new business name of Target Directories Corporation and continued his business under this name. Complainant has in turn misappropriated the logo and slogan without permission from Mr. Heltay.

 

Respondent contends that Complainant has not met its burden to prove by a preponderance of credible, relevant and admissible evidence that the domain name is identical or confusingly similar to a mark in which it has rights. The hits <summercamps.com> received by 2002 were not a result of Complainant’s use of the mark but rather Mr. Heltay’s ongoing development of his business.

 

According to Respondent, the term “summer camps” is a commonly used generic term used to describe children’s camps run in the summer months when most children are on vacation from school. There is no commonly accepted substitute term for this noun. Furthermore, a simple search of the Google Internet search engine reveals thousands of common uses of the phrase “summer camps” in connection with camps run by many different organizations, none of which are in any way related to Complainant. Accordingly, it is a generic phrase. No one can have exclusive rights over a generic term. Under ICANN Policy, registration of a domain name incorporating merely a common word or term to use for a business, as here, establishes Respondent’s legitimate interest.  Respondent cites several panels to support this.

 

If the Panel finds that the term “summer camps” is not sufficiently generic, Respondent submits that Complainant must demonstrate that the term has acquired secondary meaning. In order to establish secondary meaning Complainant must establish that the public associates the asserted mark with goods and services provided particularly by Complainant. There is no evidence here of secondary meaning as the term is understood in the case law. Complainant has not registered this URL as a trademark under either American or Canadian law. There is no evidence submitted by Complainant that when Internet users use the term “summer camps” they are expecting goods or services provided by Complainant (neither should there be as the principal business of Complainant is a domain name reseller). Complainant has not met the burden of proving secondary meaning.

 

Mr. Heltay has been carrying on the business of an online directory for summer camps first as a sole proprietor and then under the name of Target Directories Corporation since 2002, and has earned his livelihood from the operation of this business. Where Respondent uses the domain name in connection with a legitimate business he has a legitimate interest in the domain name. Mr. Heltay’s legitimate rights to the name <mysummercamps.com> precede the Complaint by approximately 1.5 years.

 

Finally, Respondent contends that it has acted in good faith in the registration and use of the domain name <mysummercamps.com>. Complainant has failed to prove all three (3) elements it is required to do under the Policy.

 

C. First Additional Submissions