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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc.

Case No. D2009-1243

1. The Parties

Complainants are Alabama One Call of Birmingham, Alabama, United States of America; Louisiana One Call System of Baton Rouge, Louisiana, United States of America; Tennessee One-Call System, Inc. of Nashville, Tennessee, United States of America, all represented by the law firm Balch & Bingham, LLP, United States of America.

Respondent is Windward Marketing Group, Inc. of Norcross, Georgia, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

2. The Domain Names and Registrar

The disputed domain names <alabama811.com>, <al811.com>, <la811.com>, <louisiana811.com>, <tennessee811.com>, <tenn811.com> and <tn811.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2009. On September 22, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain names. On September 22, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On September 29, 2009, the Center advised the parties¹ that the Complaint raised issues regarding consolidation of Complainants and the disputed domain names. Following its standard practice the Center advised that consolidation would be an issue for the Panel upon appointment.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings formally commenced on September 30, 2009.

On October 5, 2009, the Complainant filed with the Center a "Petition for Consolidation," which was duly included in the case file.

In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2009, and the Response was filed with the Center on that date. The Response included Respondent`s opposition to Complainant`s Petition for Consolidation.

The Center appointed Richard G. Lyon as the sole panelist in this matter on October 27, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

In March 2005, the United States Federal Communications Commission ("FCC") issued an Order designating 811 as the national abbreviated "One Call"² dialing code for providing advance notice of excavation activities to underground facility operators.³ As stated by the FCC`s Chairman in a concurring statement, "This designation was intended to prevent damage from excavation activities pursuant to a direction by the Congress to establish a single One Call number to enhance effectiveness and awareness by putting in place a means by which contractors and the public can alert the proper authorities to imminent excavation work, thereby avoiding potential service interruptions and safety hazards." As with other One Call designations, a resident of any state of the United States may simply dial a three-digit number and make a local telephone call to obtain this sort of information.

In many states the appropriate public utility commission or other regulatory agency issued an order assigning an operator to implement the 811 system in compliance with the FCC ruling. Each of the Complainants is a not-for-profit entity so designated: Complainant Alabama One Call by order of the Alabama Public Utilities Commission dated September 26, 2005; Complainant Louisiana One Call by letter of assignment dated July 21, 2006, from the Louisiana Public Service Commission; and Complainant Tennessee One Call by order of the Tennessee Regulatory Authority dated November 1, 2005. Since its empowerment each Complainant has operated the 811 One Call system within its state. For each Complainant operations have included maintaining an active website, substantial advertising to build awareness of the 811 system, obtaining the necessary information, and responding to inquiries from the public. None of Complainants owns a registered trademark for 811.

Respondent, a marketing firm, registered the disputed domain names in 2007. Screen shots of the home page of each of the disputed domain names dated August 19, 2009, submitted with the Complaint, show an "under construction" page, with a photograph of a woman⁴ and hyperlinks to commercial, tourist, and state-related activities in the applicable state. When the Panel accessed the disputed domain names on November 2, 2009, he found similar home pages, though the photograph, format and links differed somewhat from the material submitted with the Complaint.

5. Parties` Contentions

A. Complainant contends as follows:

1. Consolidation.

In its separate petition for consolidation, Complainant argues that consolidating the claims of the three Complaints will allow a single resolution of a "common grievance" involving "common conduct" by Respondent involving "readily identifiable commonalities." See Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./Official Tickets, Ltd., WIPO Case D2009-0331, and National Dial A Word Registry Pty Ltd. and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU 2008-0021. Consolidation would be equitable and procedurally efficient as well: Substantive arguments for each domain name are similar, Complainants are represented by a single authorized representative; each Complainant seeks the same remedy with respect to each disputed domain name; and the Complaint involves a single Respondent and "a relatively small number of disputed domain names."

2. Rights in a Mark.

Each of Complainants has been authorized by its state regulatory authority to operate the 811 One Call number in its respective jurisdiction. In so doing it has identified itself by combining either the name of the state with the digits 811. Each Respondent has spent substantial sums advertising to the public the services it provides under its name, emphasizing the 811 designation. 811 is in fact a trademark registered with the United States Patent and Trademark Office ("USPTO") by a Common Ground Alliance, a trade association which represents its members involved in providing 811 services. Complainants also argue they have common law rights in term "811" through use in commerce. Each of the disputed domain names is thus identical or confusingly similar to a mark in which one of the Complainants has rights.

3. Rights or Legitimate Interest.

Respondent has never been authorized by any Complainant, Common Ground Alliance, or any governmental authority to use the 811 One Call designation, has never been associated individually or in its business with the number 811, and has never otherwise been commonly known by any name including 811. The use to which Respondent has put the disputed domain names is not legitimate under the Policy. Respondent is not a member of Common Ground Alliance, the holder of the USPTO-registered trademark for 811. Respondent`s use has been strictly for marketing, taking advantage of the prominence of the 811 marks in which Complainants hold rights.

4. Bad Faith

For similar reasons Respondent`s acquisition and use of the disputed domain names have been in bad faith, by attracting members of the public seeking a Complainant or the 811 services it provides by use of marks in which the Complainants hold common law rights. Respondent has registered similar domain names for at least 42 other states in addition to Alabama, Louisiana, and Tennessee. Respondent has offered to sell certain of the disputed domain names to Complainant Alabama One Call and Tennessee One Call for amounts substantially in excess of his registration costs.

B. Respondent contends as follows:

1. Consolidation

Consolidation should be denied as it is not expressly permitted by the Policy, the Rules, or the Supplemental Rules; it is appropriate only upon a Panel Order. Alternatively, under the two cases cited by Complainants consolidation is inappropriate on the facts of this case: Complainants do not have a shared interest in a single mark such as may exist between a licensor and a licensee; Complainants do not "form part of a single entity" such as a corporate family or teams in the same sports league; the only registered mark involving 811 for 811 services is held by none of Complainants but rather a third party; the Common Ground Alliance, which is not a Complainant; there is no evidence that any of the three Complainants is even a member of that organization, much less expressly authorized by it to use that mark. These facts belie any charge of common conduct or common legal interest.

It would be neither equitable nor procedurally efficient to permit consolidation because each of the Complainants has made separate substantive arguments with respect to its asserted common law rights in the marks, and also because on the issue of an offer of sale of the domain names two Complainants provide evidence only with respect to three of the seven disputed domain names.

Respondent requests that the Panel either "(1) deny the Complaint because [of] the inclusion of three complainants is inappropriate under the Policy, or (2) issue a procedural order requiring that counsel for the three complainants amend the Complaint to eliminate all but one of the three complainants."

2. Rights in a Mark.

None of Complainants has shown rights in the USPTO-registered 811 trademark. Such evidence (perhaps a license agreement), if it exists, is within Complainant`s control. The relief requested by Complainants would place ownership of the disputed domain names, which incorporate the 811 marks, into an entity other than the applicable trademark owner. An important element of the design of the USPTO-registered 811 mark, the middle graphic representation of the numeral one, is an integral element of the trademark`s distinctiveness, obviating any confusing similarity between the disputed domain names and the USPTO-registered mark held by Common Ground Alliance. Complainants have not provided sufficient evidence to establish common law rights in the marks they claim.

3. Rights and Legitimate Interest

Respondent seeks refuge within the safe harbor of paragraph 4(c)(i) of the Policy, which requires a showing that "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services." Respondent registered the disputed domain names for the legitimate purpose of creating a consistent uniform resource locator at the state level, where content could be provided on line without notification requirements related to digging around underground utility lines. In his supporting Declaration Respondent's principal states:

"Windward registered the [disputed] domain names . . . , in May 1997 [sic]⁵ for the purpose of creating a consistent Uniform Resource Locator and consumer branding at the state level, where content could be provided online about notification requirements related to digging near and around underground utilities . . . .

Windward is still considering and exploring various plans as to how it might use the domain names listed above to provide information about notification requirements related to digging around underground utility lines."

4. Bad Faith.

None of the examples of bad faith in paragraph 4(b) of the Policy has been proven. As to paragraph 4(b)(i), none of Complainants is "the owner of the trademark or service mark" or a competitor of the owner, as required by the language of paragraph 4(b)(i). Should the Panel find that Complainants hold common law trademark rights, the record has no evidence of an attempted sale of four of the seven disputed domain names.

As to paragraph 4(b)(ii), Complainants are not prevented from reflecting this mark in corresponding domain names; indeed each of Complainants has done so.

As to paragraph 4(b)(iii), Respondent is a marketing and management consulting firm, not a provider of information about protecting underground utility lines from damage caused by digging. It is thus not a competitor of any of the Complainants. In fact, Respondents` actions draw attention to Complainant`s activities, assisting rather than disrupting Complainant`s respective businesses.

As to paragraph 4(b)(iv), Respondent has not "attempted to attract for commercial gain, Internet users to [Respondent`s] web site or other on-line location, by creating a likelihood of confusion with complainant`s mark." Respondent`s sites have only been under construction and any links have been provided by default by the applicable registrar, not Respondent. This is better described as nonuse, and nonuse can constitute bad faith only when Complainant holds a well-known trademark and there is an "impossibility of conceiving a good faith use of the domain name." (WIPO Overview, paragraph 3.2) Respondent has appeared in this proceeding, has not attempted to conceal his identity, and has provided a good faith explanation for his registration of the disputed domain names.

6. Discussion and Findings

A. Consolidation.

At the outset the Panel rejects, as almost every other panel that has considered the issue has rejected, Respondent`s argument that the Panel lacks the power or authority to order consolidation of complainants because the Policy and the Rules make no express provision for it. Here as in other contexts during the decade of UDRP proceedings<sup>6</sup> this Panel believes that the Policy has sufficient flexibility to allow panels to address issues that develop as the domain name industry changes and expands. As with any such matter, of course, this and other panels must tread warily to avoid expanding the UDRP`s reach beyond that intended by its drafters.

Both parties point to National Dial A Word Registry Pty Ltd. and others v. 1300 Directory Pty Ltd, supra, as the leading case on when consolidation of complainants is appropriate. That case indeed includes the most thorough and analytic treatment of the subject. While this Panel remains skeptical of the universal applicability of several of the "Specific Principles" laid out in Dial A Word, he does accept that case`s more general approach:

"[I]in considering whether to allow consolidation, two questions arise:

(i) do the complainants have a truly common grievance against the respondent?; and

(ii) would it be equitable and procedurally efficient to permit consolidation of complainants? This question would typically involve asking the question whether there is any reason why it would not be equitable to permit consolidation?"

This Panel also agrees with the Dial A Word panel that Complainants bear the burden of proof to demonstrate propriety of consolidation on the facts of the case and that consolidation is consistent with the language and purpose of the Policy.

This Panel begins with a simple inquiry addressing one element of clause (ii) quoted above: Is the number of disputed domain names and putative complainants, and the general complexity of the issues presented, such that the Panel (one member or three) deems them manageable in a single proceeding?⁷ The numbers in this proceeding – three Complainants and seven disputed domain names – are not of themselves daunting.⁸ Individual UDRP proceedings often involve scores of domain names. If Complainants prove their cases it will not be difficult for this Panel to fashion an appropriate remedial order apportioning the disputed domain names among Complainants.

Though as noted in Dial A Word a panel should consider a request to consolidate complainants as a preliminary matter, to answer the questions quoted above usually requires the panel to examine the entire case file, not merely the bare numbers or the parties` contentions on consolidation only. The existence vel non of a "common grievance" and procedural efficiency may well turn on how the panel would address one or more of the substantive issues in the case. Such an approach is definitely required here, as Complainants do not share a common service mark and are not corporate affiliates.

Evaluating general complexity moves the Panel into the Dial A Word panel`s first element. In this case that is also not so difficult to resolve. While it is true, as Respondent asserts, that the present Complainants do not fit the fact patterns in other cases in which consolidation was ordered – members of a corporate family, teams in a sports league, joint licensees of a trademark owner, for example – each Complainant`s grievance against Respondent is based upon identical conduct of Respondent.⁹ Such conduct, Complainants say, was without a right or legitimate interest as to each for exactly the same reasons; Respondent`s defense on this issue applies with equal force, based upon a single course of conduct, to each Complainant. Complainants` contention that Respondent registered and used the disputed domain names in bad faith are identical,¹⁰ based on conduct applicable to each Complainant in the same manner. Respondent`s claim of legitimate interest and its defense to the allegations of bad faith are based upon the same asserted facts and legal argument. While there are some differences among each Complainant`s factual and legal bases that underpin its claim of rights in a service mark, the differences are without a distinction in the Panel`s analysis.

The only real differences among Complainants are that (i) each Complainant operates, and uses its mark, only within its own state, and (ii) certain of the disputed domain names are said to interfere with a claimed service mark of only one Complainant, again because of the limitation of that Complainant`s mark to a single state. The Panel`s Decision could have phrased its Discussion and Findings in terms of "[Applicable State]811" without altering his substantive analysis at all. The Panel`s analysis under the Policy is less complicated than was required in a case involving a single complainant, a single respondent, and three domain names, in which the panel had to undertake a separate factual analysis of each domain name under paragraph 4(a) of the Policy. See Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008 0097. In the words of the Dial A Word panel, Complainants have shown a "common grievance" with Respondent.

In these circumstances the answer to the remaining Dial A Word inquiry, "would it be equitable and procedurally efficient to permit consolidation of complainants," becomes obvious. Procedural efficiency of a manageable single proceeding is far preferable to requiring each Complainant to commence a separate proceeding (and pay aggregate fees exceeding what was required here by the Center`s Schedule of Fees), appointing three panels, and requiring three separate panel opinions. The Panel sees no inequity to Respondent, which had full opportunity to identify differing or complicating factors but failed to do so.

The Panel will proceed to the merits of this consolidated proceeding.

A. Identical or Confusingly Similar.

Each of the disputed domain names is confusingly similar to a mark in which one of the Complainants claims rights. Three of the disputed names, one for each state, fully incorporate the respective state`s full name except for the addition of the gTLD ".com", which addition is not considered in evaluating identity or confusing similarity. Three more, one for each state, substitute the United States Postal Service abbreviation for that state (AL for Alabama, TN for Tennessee, and LA for Louisiana) for the state`s full name. The last one uses another common abbreviation for Tennessee combined with 811 rather than the full state name. Based on the full incorporation of the mark in the disputed domain names along with state names or abbreviations that correspond to the Complainants` respectively, the Panel finds confusing similarity. The question for the Panel under paragraph 4(a)(i) is whether each of the Complainants possesses rights in the mark it claims sufficient to invoke the Policy.

The USPTO-registered trademark held by Common Ground Alliance is not relevant. None of the Complainants has claimed license rights from the mark owner; none has even alleged membership in the Alliance, much less proven derivative rights by reason of membership. To be able to rely on 811 in this Policy proceeding, each Complainant must show common law rights in the mark it claims.

The tendered proof is similar for each Complainant: an Order from the applicable state regulatory agency empowering a Complainant to manage 811 services in its respective state; maintenance of an active webpage made as part of the services it provides (sample copies having been furnished with the Complaint); and continuous advertising of the 811 services generally and the applicable Complainant`s provision of them. The sample advertisements included with the Complaint prominently include 811.

Respondent challenges the sufficiency of this evidence, describing the material annexed to the Complaint as "general," not all related to promotion of the claimed 811 mark, and unspecific as to date or scope of publication. While further detail might be helpful, Complainants` evidence is far more than the "bare assertions" found inadequate in the one case cited by Respondent in support of this contention, Microsoft, Inc. v. My Speedy Net Phone, WIPO Case No. D2003-0359. The advertisements and other evidence are enough to make clear that each Complainant has since its respective designation by a regulatory authority used 811 consistently as the source of its services it provides to the public. Complainants` evidence, while by itself perhaps not adequate to establish "secondary meaning" as that term is used in the United States trademark law, has demonstrated use of the term as an identifier for services sufficient to invoke the Policy. Common law rights for the purposes of the Policy may be established in a word or phrase that is "common," "descriptive," or perhaps not even susceptible of trademark registration. Memorydealers.com, Inc. v. Dave Talebi, WIPO Case No. D2004-0409; James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber`s Mackinac Island Florist, WIPO Case No. D2001-0653. A number may suffice, Mani Brothers, LLC v. Lincoln Gasking, supra.

This finding is particularly appropriate here, where Respondent admits knowledge of the FCC Order designating 811 for special services. Respondent's principal in his Declaration states that at the time of registering the disputed domain names he was "aware of the implementation of a nationwide 811 call system for use in connection with avoiding digging problems related to underground utility lines." Such knowledge – that a particular designation is being used as an identifier of goods or services – normally defeats any assertion that a complainant lacks common law rights in a mark identical or similar to the disputed domain names. Paul McMann v. J McEachern, WIPO Case No. D2007-1597; Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416. Here, Respondent may have been unaware of the operator of a particular 811 service, but he was well aware that the designation 811 was being used nationally for these services and therefore that some entity in each state was so using them.

Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests.

Paragraph 4(c)(i)`s safe harbor is not available to Respondent. The use Respondent claims to have registered the disputed domain names to implement, quoted above, might in some circumstances be legitimate, but Respondent submits no evidence at all of the "various plans" ever considered or any "demonstrable preparations" to implement any of them. The evidentiary requirements required to sustain a paragraph 4(c)(i) defense are relatively slight, see Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 ("Even perfunctory preparations have been held to suffice for this purpose."), but that standard is not met with an unsupported and unsworn statement of unidentified future plans. DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939.

As Complainants have made the necessary prima facie case that Respondent has never been authorized to use 811 and has never been commonly known by that designation, in light of Respondent`s failure to produce evidence to the contrary, Complainants have satisfied their burden under this Policy head.

C. Registered and Used in Bad Faith.

Complainants have also established registration and use of the disputed domain names in bad faith. Respondent registered each of the disputed domain names more than a year after the applicable Complainant was authorized to provide 811 services and began to do so. At registration it gave an undertaking that "to [its] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and acknowledged his "responsibility to determine whether [the] domain name registration infringes or violates someone else`s rights." Policy, paragraph 2. Respondent`s own statement indicates that it registered the disputed domain names intending to take advantage of the 811 One Call network. Its registration of separate domain names for most of the states indicates that it knew the system would be implemented on a state-by-state basis. With a single wrinkle that statement (together with Complainants` evidence) satisfies the traditional test for registration in bad faith: knowledge of the mark and an intent to target whatever goodwill had accrued or would accrue to it.¹¹

The Panel finds the wrinkle of no moment. While Respondent may not have had these three Complainants specifically in mind at the date of registration, he surely knew that someone would (and by 2007 probably had begun to) manage 811 the network in these states. Registration and subsequent use were at Respondent`s peril under the Policy should the operators demonstrated service mark rights in the combination of the applicable state name and 811 at the time of registration, as the Panel has found Complainants have done.

The content of the website at each of the disputed domain names uses a Complainant`s mark for commercial purposes that are related to a Complainant`s name and mark. The fact that the content of the "under construction" pages may have been selected by a registrar rather than Respondent does not absolve Respondent of bad faith. With very limited exceptions, a domain name registrant is responsible for content placed on its site, particularly a parking page or under construction site, by a third party such as the registrar or an internet service provider. E.g., Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. Such conduct falls squarely with the example of bad faith in paragraph 4(b)(iv) of the Policy, which does not require that Respondent benefit so long as the use is commercial and someone benefits. Furthermore, the price paid by Respondent for registration the disputed domain names no doubt reflects the registrar`s anticipated income from advertisements and hyperlinks posted at inactive sites. Hertz System, Inc. v. Kwan-ming Lee, WIPO Case No. D2009-1165.

There is further evidence of bad faith in the record. Respondent does not dispute Complainants` evidence that Respondent offered three of the disputed domain names for sale at a price in excess of its cost of registration. This conduct is not exempt from the example of bad faith in paragraph 4(b)(i) of the Policy merely because of Respondent`s current (and mistaken) belief that Complainants lack of trademark rights in their names. Respondent`s registering domain names that combine a 811 call designation with the names of 45 states, another allegation that Respondent does not dispute, is in this Panel`s opinion sufficient to demonstrate a "pattern" of registration intended to deprive mark holders of corresponding domain names, as described in paragraph 4(b)(ii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that:

(a) the domain names <alabama811.com> and <al811.com> be transferred to Complainant Alabama One Call;

(b) the domain names <la811.com> and <louisiana811.com> be transferred to Complainant Louisiana One Call; and

(c) the domain names <tennessee811.com>, <tenn811.com>, and <tn811.com> be transferred to Complainant Tennessee One Call.

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Richard G. Lyon
Sole Panelist

Dated: November 6, 2009