Emap USA, Inc. v. Dick Jurgens

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

EMAP USA,

Inc. v. Dick Jurgens d/b/a Mobile Dick's Cycle Clinic

Case No.

D2001-0311

1. The Parties

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.

2. The Domain Name

and Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

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.

6. Discussion

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.

A. Confusing Similarity

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, 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.

C. Bad Faith Registration

and Use

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.

7. Conclusion

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