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EMAP USA, Inc. v. Dick Jurgens d/b/a Mobile Dick's Cycle Clinic [2001] GENDND 989 (21 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is EMAP USA, Inc., a Delaware Corporation, located in Los Angeles, California, United States.

Respondent is Dick Jurgens d/b/a Mobile Dick's Cycle Clinic, a resident of Hawaii, United States.

The domain name at issue is ("Domain Name"): <motorcyclist.com>

The registrar of the domain name is Network Solutions, Inc., with business address in Herndon, Virginia, United States.

This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The Complaint was submitted on March 2, 2001. The Response was submitted on April 3, 2001.

On May 3, 2001, Mark V.B. Partridge, Andrew F. Christie, and Robert Merhige were appointed Panelists.

Complainant is the publisher of various magazines, including Motorcyclist which has been published since 1912. Millions of copies of the magazine have been sold. During the six-month period ending June 30, 2000, Motorcyclist had a total paid circulation of 257,203, consisting of 191,741 individual subscriptions and 65,462 single copy sales. For the past fiscal year, Complainant's annual revenue derived from Motorcyclist were approximately $8,167,000. Its advertising expenditures from the same period were approximately $292,000 to promote the magazine. Complainant also has a cable television show promoting the magazine.

Complainant has a pending application U.S. registration of MOTORCYCLIST as trademark for publications. The application has been approved for publication, but has not matured to registration.

Respondent registered the Domain Name on December 2, 1995, and has renewed the registration as necessary to maintain the domain name registration since that date.

Complainant first became aware of Respondent's use and registration in August 2000, and sent a letter of objection to Respondent on August 31, 2000. Respondent replied to the letter acknowledging that he was an avid reader of Motorcyclist magazine. Complainant's objection was not resolved, and this action followed.

Complainant contends that it owns trademark rights in MOTORCYCLIST, that the Domain Name is confusingly similar to that mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith because his registration and passive holding of the Domain Name involves a pattern of conduct that prevents Complainant from reflecting its mark in a corresponding domain name.

Respondent contends that Complainant lacks any rights in the generic term "motorcyclist."

Respondent further claims he has a legitimate interest in the Domain Name because he is a motorcyclist interested in operating a web site devoted to riders of motorcycles.

Finally, Respondent denies that he has acted in bad faith, noting that he has made no attempt to sell the Domain Name for profit.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to 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; and

(2) that the respondent has no rights or legitimate interest in the domain name; and

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

The Domain Name is identical to Complainant's alleged mark MOTORCYCLIST. Thus, the key issue on this point is whether Complainant has prior trademark rights.

Complainant lacks a federal registration to provide proof of rights. Its application for registration does not provide evidence of enforceable rights. See Amsec Enterprises v. McCall, WIPO Case No. D2001-0083 (2001) (finding no enforceable rights in BACKGROUND FACTS). Accordingly, Complainant must establish common law trademark rights.

Respondent, contends that MOTORCYCLIST is a generic term. While this is true in some contexts, it is not a generic term for magazines. See e.g. H. Marvin Ginn Corp. v. International Assn. of Firechiefs, [1986] USCAFED 65; 228 U.S.P.Q. 528 (Fed. Cir. 1986) ("Fire Chief" not generic for fire-fighting magazine). Instead, the term as used by Complainant is descriptive of its magazine and is entitled to protection as a trademark if it has acquired distinctiveness, also known as secondary meaning.

In Amsec Enterprises v. McCall, Id., the panel addressed proof of secondary meaning, stating:

The mark AMERICAN BACKGROUND is obviously descriptive of Complainant's services. Therefore, to establish common law rights, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Here, the only evidence presented is the bald claim that the mark has been used since 1992, and that Complainant gross sales have exceeded $7 million. The only evidence of the nature and manner of use is a web page dated January 11, 2001. Given the extremely weak character of Complainant's mark, I find that the evidence of secondary meaning is inadequate to prove any enforceable rights in the mark.

Here, the evidence is more compelling in favor of trademark rights. Complainant has used the mark since 1912 as a prominent masthead for its magazine. Under U.S. law, evidence of continuous use of a mark for more than five years can be accepted as evidence of secondary meaning. See 15 U.S.C. 1052(f). A finding of secondary meaning is further supported by evidence of significant sales, advertising and readership.

The evidence against a finding of rights in MOTORCYCLIST consists primarily of the obvious third party use of the term in a generic manner. Balancing the evidence on this issue is difficult given the limited nature of proceedings under the Policy. Given our views on the remaining elements of this case it is not necessary for us to reach a conclusion on Complainant's rights in the mark.

B. Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Here, Complainant relies on a lack of use of the Domain Name for any active web site to show a lack of right or legitimate interest.

Respondent contends that he has a legitimate interest in the Domain Name because he is a hobbyist interested in use of the Domain Name in its ordinary descriptive sense. Respondent also contends that the Domain Name was originally registered for use in connection with his motorcycle repair shop. Respondent asserts without substantiation that he operated a web site at <www.motorcycle.com> which included information about his hobby and his experience with motorcycle mechanical repair.

The Policy specifically notes that a right or legitimate interest can be established by showing actual or demonstrable plans to use the Domain Name in connection with a bona fide offering of goods or services or by showing that the domain name use is a fair use of the Complainant's mark. Respondent has provided intimations on both points, but has given no substantiation. We are reluctant to make a finding in Respondent's favor on this basis when only bare allegations counter the conclusion that logically follows from a lack of use of the Domain Name. Again, it is unnecessary to resolve this issue here because of our finding on the final issue.

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondents’] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondents] have engaged in a pattern of such conduct; or

(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondents’] web site or location."

As specifically noted in the Policy, the circumstances of bad faith are not limited to the above. See, e.g., Telstra Corporation v. Nuclear Marshmallows, D2000-0003 (WIPO, February 18, 2000); 3636275 Canada v. eResolution.com, D2000-0110 (WIPO, April 10, 2000).

Here, Complainant relies on the second bad faith factor of the Policy. According to Complainant, Respondent's registration and passive holding of the Domain Name prevent Complainant from reflecting its alleged mark in a corresponding domain name. Further, Respondent allegedly engages in a pattern of such conduct because it has repeatedly renewed the Domain Name registration, even after put on notice of Complainant's objection.

We disagree with Complainant's conclusion. While it is true that Respondent's registration of the Domain Name prevents Complainant from reflecting its alleged mark in the .com domain, we do not agree that Respondent's renewal of its registration constitutes a "pattern of such conduct" under the Policy. The interpretation urged by Complainant would mean that virtually every domain name holder would satisfy the pattern of conduct requirement, a result that clearly was not the intent of the Policy. Instead, the provision relied upon by Complainant seems to require some showing that the respondent has registered multiple domain names preventing others from using their marks as domain names. Here, there is no pattern of multiple registration. Rather, it appears that Respondent has registered only two domain names—the Domain Name at issue, and his personal name, <dickjurgens.com>.

Complainant's reliance on the Telstra case seems similarly misplaced. That case is readily distinguishable from the circumstances here. The case was a default proceeding involving an inherently distinctive and famous mark. In finding bad faith, the panel cited the following factors:

"(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law."

We agree with Respondent that none of those factors appear to be present here. Respondent has shown a bona fide reason for his interest in the Domain Name and has been candid in disclosing his true identity. It is certainly possible to conceive of non-infringing uses of the term "motorcyclist" that would not be an infringement of Complainant's alleged rights.

The only other support given by Complainant is the mere fact that Respondent knew of Complainant's use of MOTORCYCLIST when it registered the Domain Name. However, mere knowledge alone is not enough to establish bad faith, at least in instances such as here where the registrant is not engaged in pattern of conduct involving the registration of domain names that correspond to the marks of others and where the registrant shows a bona fide reason for selecting the domain name.

In short, we do not believe that the evidence supports a finding of bad faith on the factors stated in the Policy or on the Telstra factors. Accordingly, we find that Complainant has failed to meet its burden under Paragraph 4(a)(iii) of the Policy.

We conclude that Complainant has failed to prove that the Domain Name was registered and used in bad faith and find in favor of Respondent. Therefore, Complainant's request for transfer of the Domain Name <motorcyclist.com> is denied.

Mark Partridge
Presiding Panelist

Robert Merhige
Panelist

Andrew F. Christie
Panelist

Dated: May 26, 2001