WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Town of Secaucus, New Jersey v. Martina Zammit, Oring Ltd.

Case No. D2020-0509

1. The Parties

The Complainant is Town of Secaucus, New Jersey, United States of America (“United States”), represented internally.

The Respondent is Martina Zammit, Oring Ltd., Malta.

2. The Domain Name and Registrar

The disputed domain name <secaucusnj.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2020. On March 13, 2020, the Center received an email communication from the Respondent.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 10, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On May 1, 2020, in light of the criteria referred to in, for example, section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the Panel issued Administrative Panel Order No. 1 under paragraph 12 of the Rules, inviting the Complainant to submit by specific evidence its use of the disputed domain name prior to its registration by the Respondent and affording the Respondent an opportunity to respond if the Complainant availed itself of that opportunity.

The Complainant submitted its supplemental filing on May 8, 2020. The Respondent submitted its supplemental filing in response on May 15, 2020.

4. Factual Background

The Complainant is the municipal government for the town of Secaucus, New Jersey, in the United States.

For “over a decade” until July 2019, the Complainant was the registrant of the disputed domain name. It used the disputed domain name, and in recent years the domain name <secaucusnj.gov>, to provide information about, and access to, its services, programs, and other activities relevant to the municipality. This included matters such as announcements and reports about council meetings, the housing authority, municipal ordinances, payment of taxes and fines, contacts for and information about municipal departments such as the town clerk, the fire and health departments, municipal utilities, and the education board.

According to the Complaint, while it was the registrant of the disputed domain name, the Complainant used the disputed domain name extensively as a source identifier. In particular, the disputed domain name was printed on the Complainant’s official letterhead and business cards, referenced in official proceedings and social media posts, and was painted on the municipality’s government vehicles.

According to the Complaint, there was a problem with the saved payment method so that the registration did not automatically renew. By the time the Complainant discovered that the registration had expired, the Respondent had registered it.

The Respondent says it acquired the disputed domain name at auction. From information provided by the Registrar, it appears that this occurred early in August 2019.

The Respondent is located in Malta, several thousand kilometers from Secaucus in New Jersey.

So far as the record in this dispute shows, the Respondent operates an online casino from a website to which the domain name <oddsring.com> resolves. This website displays a notice to visitors whose IP addresses are located in the United States that persons located in the United States are not permitted to browse or register at the site.

In February 2020, the disputed domain name resolved to a website which displayed outdated information and content from the Complainant’s website. According to the Complainant, this material as well as being outdated had also been copied without permission. After the Complaint was filed, the copyrighted material was removed and replaced with the following text, including a link to the Complainant’s page:

“Announcement

Dear visitor, please be advised that the new URL of the Town of Secaucus is https://secaucusnj.gov/

Please note that in no way this website is affiliated or associated with the official page for this government website.”

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The second level domain of the disputed domain name, “secaucusnj”, is essentially a geographical term: it identifies a place. Generally, such terms do not provide standing to file a complaint under the UDRP unless the term has been registered as a trademark. The Policy is not limited, however, only to registered trademarks. Accordingly, a geographical term which has not been registered as a trademark has been found to support standing under the Policy in cases where its use has been sufficiently extensive that the public has come to identify the term exclusively with the complainant. See WIPO Overview 3.0, section 1.6.

The Panel notes that it has proven particularly difficult for an entity responsible for a geographical area to successfully establish trademark rights in the absence of a registered trademark. An example of this difficulty and the reasons for it is Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069, <brisbane.com>.

As noted above, the Complainant states that it used the disputed domain name extensively for over a decade, for example, by printing it on the Complainant’s official letterhead and business cards, referencing it in official proceedings and social media posts, and painting on the municipality’s government vehicles. The supplemental filing submitted by the Complainant contains a number of examples illustrating this use. This provides corroboration of the Complainant’s claims. While the use demonstrated may be use in a comparatively limited part of the United States, it is nonetheless use directed to those members of the general public most likely to have an interest in the subject matter (which could very well include tourists from outside the Complainant’s location). The Respondent’s supplemental filing does not directly address these matters and is more appropriate considered under the second element of the Policy in section 5B below.

The Panel considers, therefore, that on the record in this case the Complainant has established a prima facie case of secondary meaning in the expression “secaucusnj.org” as a service mark having regard to the nature and extent of use of that expression outlined in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the relevant mark in which the complainant has rights. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, sections 1.7 and 1.11.

Given the form of use made by the Complainant outlined above, the Panel finds that the Complainant has established that the disputed domain name is identical with a mark in which the Complainant has rights and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from or based on the Respondent’s own name. The Complainant also contends that the Respondent is not making a good faith noncommercial or fair use of the disputed domain name. Rather, the Complainant contends the Respondent is fraudulently attempting to mislead visitors using a fake website with outdated information from the Complainant’s own site.

These matters are typically sufficient to raise the required prima facie case.

The resolution of the disputed domain name to the outdated copyrighted content from the Complainant’s website brings to mind Panavision International L.P. v. Toeppen 141 F.3d 1316 (9th Cir. 1998) in which Mr Toeppen arranged for aerial pictures or video of the town of Pana in Illinois to be displayed on a website to which <panavision.com> resolved. The Ninth Circuit had little difficulty in concluding that conduct was contrived, rather than genuine.

In Toeppen, there was evidence that Mr. Toeppen had registered a number of other well-known trademarks and engaged in similar practices. That element appears to be missing from the present case.

However, first, so far as appears in the record in this case, the Respondent is based in Malta, thousands of kilometres from New Jersey, and has no connection or association with Secaucus, New Jersey. Secondly, it would appear that the Respondent’s online gaming services are not licensed to be made available to people in the United States, let alone Secaucus, New Jersey. Thirdly, the Respondent has not made any attempt to suggest it was making any preparations to commence operations in or from Secaucus, New Jersey. Fourthly, as already noted, the information that was reproduced on the Respondent’s former website (taken from the Complainant no less) was apparently outdated rather than current and so potentially misleading. Fifthly, in its informal email to the Center, the Respondent stated (in its entirety):

“First of all, we are sorry to hear that any kind of duplicated or copyrighted content was used on this website.

The following actions have been implemented:

- the existing content has been immediately removed

- this paragraph was added to the homepage text “Please note that in no way this website is affiliated or associated with the official page for this government website”

- a link to your .gov website has been added just to avoid any possible misleading information

As GoDaddy can confirm if needed, this domain was legally acquired on auction, as we usually do.

If you have any interest in buying this domain from us, this is a service that GoDaddy can assist you with.”

This response does not explain how the duplicated or copyrighted content came to be incorporated in the Respondent’s website. Nor does it offer any explanation of what the Respondent proposed to do with the disputed domain name or why it had registered it – other than, it had acquired the registration in an auction.

The fact that the Respondent secured the disputed domain name through an auction conducted by the Registrar does not by itself confer rights or legitimate interests on the. Apart from anything else, the very existence of the Policy contradicts any such conclusion.

In these circumstances, the final sentence in the Respondent’s response appears to be a thinly veiled invitation to the Complainant (albeit sent to the Center) to make an offer to buy the disputed domain name.

In its supplemental filing, the Respondent stated in pertinent part:

“As mentioned before, we have no intention of using any domain with malicious intentions, and most of the times we use archived content in order to have the site looking more natural. If there's any kind of complaint, such archived content is immediately replaced with a message pointing to the new URL of the entity previously associated with this domain, in case there's one of course.”

“We can keep the domain as it is at the moment, with a message pointing to the new URL of this institution, or we are also happy to sell the domain back to the previous owner at the same price we paid for it, which was 910 USD (proof of such price attached on the email received from Godaddy on the day when the auction finished).”

This supplemental filing indicates a number of matters. First, there is no suggestion here of any plan to use the disputed domain name in connection with any bona fide offering of goods and services other than, perhaps, some sort of speculation in the value of the disputed domain name likely to the Complainant. Secondly and bearing in mind that the Respondent secured the disputed domain name through “drop catching”, it appears that the Respondent was well aware of the significance of the disputed domain name as denoting the services of the Complainant; at minimum this could have been easily verified. Thirdly, the Panel acknowledges that the Respondent is now willing to transfer the disputed domain name to the Complainant for a fee.

The fact that a respondent has not sought payment in excess of its documented out-of-pocket costs can be an indicator that the respondent was not necessarily acting in bad faith. Paragraph 4(b)(i) of the Policy prescribes that registration or acquisition of a domain name primarily of the purpose of transferring it to a trademark owner for valuable consideration in excess of the respondent’s documented out-of-pocket costs constitutes evidence of a respondent’s bad faith. It is only an example of bad faith. Moreover, it does not follow that an offer to transfer a domain name for documented out-of-pocket costs is necessarily in good faith. In the present case, at least three considerations lead the Panel to disregard this offer as exonerating the Respondent. First, there is the very late stage at which the offer is made – with the threat of a potentially adverse Panel order hanging over the Respondent’s head. Secondly, the amount paid to the Registrar by the Respondent reflects the value the Respondent placed on the disputed domain name in the context of a “drop catching” scenario. As indicated above, that value appears to have been influenced by the significance of the disputed domain name as a domain name used by the Complainant (corroborated by the Respondent posting material taken from the Complainant’s website). Thirdly, the overall tenor which emerges is one of the speculative nature of the Respondent’s “investment” in the disputed domain name, apparently unconnected with any (even potential) offering of goods or services in good faith, or having any other legitimate noncommercial or fair use purpose.

Having regard to all these matters, therefore, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

The circumstances in which the Respondent became the registrant of the disputed domain name bear the hallmarks of “drop catching” expired domain names. The precise circumstances in which the Respondent became the registrant have not been exposed. It is clear, however, that:

(a) the Complainant was the registrant for a number of years,

(b) according to the Complainant that registration lapsed inadvertently; and

Panels have found that registration of a domain name through “drop catching”, where the domain name conflicts with the rights of the prior registrant, is opportunistic behaviour that constitutes registration and use in bad faith under the Policy. As the panel explained in Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540:

“The Panel emphasizes that critical to its reasoning and its conclusion in this case is that the Respondent acquired the disputed domain name through drop-catching. Registration of a domain name in that circumstance is not the same as “ordinary” registration of a domain name (i.e., registration of a domain name which is not held by another person immediately prior to registration). Where registration occurs through drop-catching, the registrant is objectively aware that another person held the registration immediately prior. This, in effect, puts the registrant on notice that another person (the immediately prior registrant) may have rights in a trademark to which the domain name is identical or confusingly similar. Where, as in this case, the drop-catching registrant fails to take any steps to determine if such rights exist, then the registrant is taking the risk that such rights do exist. Where such rights do exist, where the value of the domain name derives primarily from those rights, and where the registrant’s only meaningful use of the domain name is to offer it for sale, then the registrant is liable to be considered as having registered the domain name primarily for the purpose of selling it to the person who has those rights.”

Unlike some of the previous “drop catching” cases, the record in this proceeding does not disclose that the Respondent has engaged in a pattern of such conduct. The Respondent’s supplemental filing, however, provides a strong indication that the Respondent has. For example, the supplemental filing refers to the Respondent using archived content “most times”. Moreover, the Respondent is located thousands of kilometres from Secaucus, New Jersey; its existing business is not, and apparently cannot be, offered in the United States; it has not provided evidence of demonstrable preparations to have any connection with Secaucus, New Jersey, nor has the Respondent even so much as offered any explanation for registration of the disputed domain name other than it won the auction and, following the filing of the Complaint, issued what is arguably a thinly veiled invitation to make an offer to buy the disputed domain name, followed by the more explicit offer made in the supplemental filing. In these circumstances, the Panel finds the reasoning in the above-cited case compelling.

Accordingly, the Complainant has established all three requirements under the Policy.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <secaucusnj.org>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: May 20, 2020