Marchex Wins UDRP On Norcross.com

A few weeks ago we told you a UDRP had been filed on the domain name Norcross.com.

Norcross is a city in Georgia

Today Marchex the domain holder represented by John Berryhill won a three member panel UDRP decision on the domain name.

At the time we didn’t know who filed the UDRP but it was the Norcross Corporation who had a Trademark on the term Norcross since 1969

The decision contains a sentence all domainers should love:

“A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner. “

Here are the relevant findings by the Panel:

“The Complaint further alleges that, as of March 28, 2012, the domain name <norcross.com> was not being used for legitimate business purposes.  Complainants indicate that, when Respondent was contacted regarding the transfer of the domain name, Respondent replied that it “does not entertain offers for less than $30,000.”  According to the Complaint, the $30,000 price tag far exceeds any reasonable out-of-pocket costs incurred by Respondent in regards the domain name.”

 

“Respondent notes that the disputed domain name was originally registered by Ultimate Search in 2000, and acquired by Respondent in late 2004. ”

“Respondent further indicates that the domain name in issue corresponds to a prominent beltway municipality of the Atlanta area and that the links on the page correspond to hotels, airports, new homes, and car rentals in Atlanta, as well as to hotels in Savannah and Athens, Georgia. ”

“The Complainant here makes no allegation that the Respondent’s use of the domain name for these several years has in any way targeted, harmed, or disrupted the Complainant’s business.  Moreover, the Complainant shows clearly that the domain name is used for such advertising subjects as travel, lodging, and in particular relation to Georgia, where Norcross is located.  This is classic descriptive use of a domain name under the Policy.”

“With respect to the issue of bad faith registration and use, Respondent contends that the Policy does not proscribe the general trade in domain names on the secondary market. What the Policy does proscribe, Respondent asserts, is the registration of a domain name primarily for the purpose of extorting the owner of a mark, i.e., with an intention arising from knowledge of its value as nothing other than a trade or service mark associated with one party. The domain name in issue in this proceeding, Respondent contends, is a non-exclusive geographic term.  Respondent also notes that it owns many domain names and receives many purchase inquiries and that $30,000 is certainly an appropriate secondary market value for a generic geographical place name.”

 

“The Panel concludes that Complainants have not sustained their burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.  Rather, the evidence establishes that Respondent’s use of the domain name constitutes a fair use under the Policy.”

“As noted by Respondent, Norcross is a municipality in the Atlanta, Georgia metropolitan area. The links on the <norcross.com> home page refer to hotels, airports, new homes, and car rentals in Atlanta, Savannah and Athens, Georgia, as well as to other travel-related services. ”

“The links and material on <norcross.com> make no reference to viscosity equipment or other goods or services associated with the NORCROSS mark. ”

Thus, the Panel finds that Respondent uses the term “norcross” in its domain name in a descriptive manner, i.e., to provide useful travel-related information to those traveling to Norcross, Georgia or the surrounding area . ”

“It appears that the domain name was not registered or used in bad faith.”

” Rather, Respondent appears to have registered this domain name for the purposes of advertising links related to the descriptive value of the Norcross geographic locale, and appears to have used it for that purpose.  The fact that Respondent was only willing to sell the domain name to Complainants for a sum far in excess of its out-of-pocket expenses directly related to the domain name does not establish the requisite bad faith since the Respondent had a legitimate interest in the domain name. ”

“A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner.  “

 

Comments

  1. BrianWick says

    Also – make not of the Panel:
    Jeffrey M. Samuels
    David H. Bernstein
    Debrett Lyons

    And the fact they decided to respond to all 3 elements even though 2 & 3 both failed

  2. says

    …is it true that Norcross could file again even though thet lost? I read that some other company lost and filed again, got a different panel, and won.

    Just wanna know if this is a slam dunk victory or not…

  3. says

    …is it true that Norcross could file again even though they lost? I read that some other company lost and filed again, got a different panel, and won.

    Just wanna know if this is a slam dunk victory or not…

  4. Chris says

    It is amazing how consistently inconsistent these rulings are. While this is a good win for generic names, What concerns me is I think it leaves open the idea that Acronyms such as LLL or CVCV, VCVC could easily be determined that the registrant registered them with the sole reason to ultimately sell them to a company that uses those letters. (Whether a mark exists or not)

    I hope I’m wrong but with recent UDRP decisions that is the way I see it.

  5. John Berryhill says

    “It is amazing how consistently inconsistent these rulings are”

    Any human decisionmaking process results in inconsistencies. There’s something of a “blog effect” to perceptions of UDRP outcomes. There have been some 20,000 or so UDRP decisions. A handful of them get attention on blogs precisely for the reason that there is something “interesting” about them.

    There are anywhere from 8 to 20 UDRP decisions every day, from NAF and WIPO combined, and both providers have email services that will send you the daily dump. If you are reading about two or three a month on blogs, you won’t develop a realistic perception of what the overall run-of-the-mill looks like.

  6. Aggro says

    Seems a bit “dry” from the usual..

    Where’s the usual boilerplate assertions from complainant that Respondent has been involved in many UDRPs & lost a few…insinuating a cybersquatter..

    Plus where’s the mention of Doctrine of Laches as to why it took the complainant so long to bring this action..

  7. Aggro says

    @ Windy

    There have been a number of UDRP cases which were refiled where the action was decided in the complainant ‘s favor the second time.

    Generally, the complainant is permitted to refile if & when there is a change of circumstances from the first UDRP eg later infringing on the complainant’s marks, or the respondent was found to have offered perjured evidence…

  8. Michael H. Berkens says

    John

    If you take out the vast majority of these decisions which are no brainier typos going to a parked page of a famous TM then your left with a pretty small subset and of those there are a lot of inconsistencies

  9. M says

    “There are anywhere from 8 to 20 UDRP decisions every day, from NAF and WIPO combined, and both providers have email services that will send you the daily dump”

    John, can you give a little more info on where one can find this email list? Is it as simple as providing your email address or do you need to sign up for these daily updates ?

    Thanks

  10. Elliot Silver says

    Glad to see the right decision was made. A shame the owner had to incur the expense of a defense on this type of name, but I suppose it’s one of the inherent risks of being a domain investor.

  11. says

    I recently made a $10k offer on one of Marchex’s domains and their response also was that they do not entertain offers below $30k for any of their domains.

    Based on this info, shouldn’t Marchex be worth over $5 Billion+ and not just $100 Million?

    hmmmmmm…….

  12. says

    What concerns me is I think it leaves open the idea that Acronyms such as LLL or CVCV, VCVC could easily be determined that the registrant registered them with the sole reason to ultimately sell them to a company that uses those letters. (Whether a mark exists or not)

    Chris, UDRP requires the complainant to demonstrate trademark rights. Generally, isn’t it always the complainant’s burden to prove their claims anyway?

    It’s easy to allege, it’s another to prove that allegation. The complainant didn’t successfully do so in this case, which essentially shows it’s not always that easy.

    …is it true that Norcross could file again even though thet lost? I read that some other company lost and filed again, got a different panel, and won.

    Just wanna know if this is a slam dunk victory or not…

    http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#44

    http://www.udrpcommentaries.com/denying-renewal-and-reopening-of-a-closed-case/

  13. John Berryhill says

    “Where’s the usual boilerplate assertions from complainant that Respondent has been involved in many UDRPs & lost a few”

    UDRP decisions rarely reflect all of the arguments which were made. The complaint in this case was obviously prepared by someone who didn’t really know what he was doing. Of course, no amount of expertise would have solved the basic flaw, but the way the complaint was put together was just… I’ll say “unusual”.

    When a complaint has no hope of winning, and it’s clear the other side didn’t have much of a clue, I tend not to spend a lot of effort on kicking a man when he’s down. It’s undignified and serves no purpose. You don’t have to empty a complete ammo clip to shoot a squirrel.

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