Maupintour, LLC v. Gutsy Woman

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maupintour, LLC v. Gutsy Women

Case No. D2003-0151

1. The Parties

The Complainant is Maupintour, LLC, c/o Ronald Heuer, Las Vegas, Nevada 89135,

United States of America, represented by Blank Rome, LLP of United States of America.

The Respondent is Gutsy Women, c/o Kathryn Soll, Los Angeles, California 90041,

United States of America, represented by Enenstein, Russell & Saltz, LLP

of United States of America.

2. The Domain Name and Registrar

The disputed domain name <gutsywomen.com> is registered with Go Daddy

Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on February 26, 2003. On February 27, 2003, the Center transmitted by email

to Go Daddy Software a request for registrar verification in connection with

the domain name at issue. On February 28, 2003, Go Daddy Software

transmitted by email to the Center its verification response confirming that

the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. The Center verified

that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

April 10, 2003. The Response was filed with the Center on April 9, 2003.

The Center appointed Frederick M. Abbott as the sole panelist in this matter

on April 15, 2003. 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.

By email of April 15, 2003, Complainant transmitted to the Center

its Complainant’s Reply, requesting leave to file the supplemental submission.

The Reply was subsequently received by the Center in hardcopy. The Center advised

the parties that the panel would make a determination regarding whether to accept

the supplemental submission.

4. Factual Background

Complainant is licensee of certain service mark registrations from Vauxhall

LLC, of Las Vegas, Nevada, USA by license agreement of November 14, 2001.

Those registrations on the Principal Register of the United States Patent and

Trademark Office (USPTO) are for the term "GUTSY WOMEN TRAVEL", reg.no.

2671709, dated January 7, 2003, in International Classes 39 (covering

"travel agency services" as further specified) and 43 (covering "travel

agency services" as further specified), claiming date of first use and

first use in commerce of November 19, 2001, and; for the word and

design mark "GUTSY WOMEN TRAVEL", reg. no. 2666117, dated December 24, 2002,

in the same ICs as aforesaid, and claiming the same date of first use and first

use in commerce. Both registrations disclaim "TRAVEL" apart from use

in the mark as shown. Complainant is also licensee from Vauxhaul LLC of an Intent

to Use application for the term "GUTSY WOMEN" in the same ICs as aforesaid.

This application was published for opposition on December 17, 2002.

(Complaint, Appendix F & H).

The license agreement between Complainant and Vauxhall LLC grants Complainant

the right to use the "Domain Names" which are <gutsywomentravel.com>

and <gutsywomentours.com> (definition in Recitals), and provides in relevant

part that "Licensee may, at its option and sole expense, apply for and

secure the appropriate trademark and/or copyright registrations of the Mark

and the Domain Names on behalf of Licensor. Licensor agrees to cooperate with

Licensee in securing and protecting such registrations. Each Party agrees to

assist the other Party in the enforcement of Licensor’s rights and Licensee’s

rights in the Mark and Domain Names, consistent with this Agreement…."

(para. 10). The license agreement further provides "…Licensee may at its

option make demand or institute litigation against third party infringers of

the Mark and/or Domain Names, at its own expense … Should Licensee decline to

pursue any infringement of which it has actual notice, Licensor may do so at

its option and at its own expense … (para. 12). (Id., Appendix F).

Vauxhaull LLC’s interests in the aforesaid trademark registrations derive from

an assignment from Marybeth Bond, the author of certain travel books. As described

in the assignment to a predecessor in interest of Vauxhall LLC, Ms. Bond "at

least as early as 1996, adopted and commenced use of the mark GUTSY WOMEN in

connection with travel books that she authored, including Travelers’ Tales

Gutsy Women Travel Tips and Wisdom for the Road, published by Travelers’

Tales, Inc. and in 2001 in connection with the second edition of such book,

Gutsy Women: More Travel Tips and Wisdom for the Road, also published

by Travelers’ Tales, Inc.". (Id., Appendix G).

Complainant is licensee from Travelers’ Tales, Inc., a California corporation,

by agreement dated September 6, 2002, of certain rights. Those rights

are asserted by Travelers’ Tales in a recital to the agreement stating, "WHEREAS,

Licensor is the owner of the trademark GUTSY WOMEN for books featuring

advice for women travelers (hereinafter the ‘Trademark’), which it has used

in commerce since 1996". (Id., Appendix D). This license agreement

states in relevant part: "11. (A) Licensee may at its option demand or

institute, at its own expense (i) litigation against third party infringers

of the trademark, and (ii) domain name dispute resolution proceedings against

any domain name that incorporates or is confusingly similar to the Trademark.

(B) Licensee shall be entitled to any resulting monetary or non monetary relief,

whether awarded in court, by an ICANN approved dispute resolution provider or

received by way of settlement from any contested matter brought by Licensee.

(C) Only if Licensee declines to pursue any infringement or dispute of which

it has actual notice, then Licensor may do so at its option and at its own expense

…"

Complainant indicates that the book "Gutsy Women, Travel Tips and Wisdom

for the Road" by Marybeth Bond was published in October 1996, with a second

printing in February 1997, and that Travelers’ Tales, Inc. holds the copyright

therein. (Id., para 13).

Complainant describes itself as "a leader in the world’s escorted tour

and travel industry since as early as 1951, and has had a presence on the Internet

since on or about 1995. It commenced featuring travel agency and escorted services

for women identified by the service mark GUTSY WOMEN TRAVEL on its website,

<maupintour.com>, as well as its sister site <gutsywomentravel.com>".

(id., para. 12 and Appendix E). The printout of the sister site web pages

indicates the relevant domain name as "gutsywomentravels.com".

According to the registrar’s verification to the Center, "Gutsy Women"

is the registrant of the disputed domain name, <gutsywomen.com>. The Administrative

Contact is "Soll, Kathryn" of Los Angeles California, with the

same postal address as Respondent. A GoDaddy WHOIS database record submitted

by Complainant (Complaint, Appendix A) and a copy of the original registration

verification submitted by Respondent (Response, Appendix 1), each indicate that

the record of registration was created on March 3, 1997.

Respondent has maintained a website at "http://www.gutsywomen.com".

According to Complainant, "For most of the five years, the website contained

no content and more recently consisted of a greeting to Internet users showing

a photograph of a female rock climber with the statement ‘Courage and Strength

are not Gender Specific’ and a request for comments and suggestions on how the

website should be used. Presently, the domain name redirects an internet user

to "quinnolson.com", which apparently is a web development and resource

website." (Complaint, para. 20). According to Respondent, "Respondents

paid Quinn Olson Solutions to prepare the website home page and e-mails on or

about January 2002. The website was down for work and relaunched with newly

obtained graphics and a mission statement recently. Respondents cannot possibly

attempt to divert customers of Maupintour LLC because they at this time have

not launched their products, and more importantly, their products will not overlap

or detract from the sale of products and services of Maupintour LLC. Respondents

have communicated with dozens of supporters of gutsywomen.com and have received

feedback and assistance in growing its infrastructure pertaining to self-help

books, medical literature, sports, political issues, sexual abuse prevention,

current events, journalism, education, and environmental issues." (Response,

paras. 19-20)

In the Fall of 2001, Complainant’s "representative", Justin Page,

contacted Kathryn Soll with an offer to purchase the disputed domain name

for $5,000. This offer was rejected by Ms. Soll, who countered with an offer

to sell the name for $30,000. The counter-offer was rejected by Complainant’s

representative. (Exchange of email correspondence of October 16 and 17, 2001,

Complaint, Appendix J).

In June 2002, Complainant again contacted Respondent regarding whether Respondent

was interested in selling the domain name, this time by telephone, in a manner

that Respondent regarding as threatening. Respondent indicated her website was

in development, and would not deal with the travel industry. She also indicated

that she served for the United States in the Vietnam conflict. She indicated

that the threatening tone of the phone call would discourage "forward[ing]

to your site the many errant e-mails we get, obviously intended for you."

(Email correspondence of June 26, 2002, from Respondent to Complainant,

and internal email of Complainant, Complaint, Appendix K).

The Registration Agreement in effect between Respondent and GoDaddy Software

subjects Respondent to dispute settlement under the Policy. The Policy requires

that domain name Registrants submit to a mandatory Administrative Proceeding

conducted by an approved dispute resolution service provider, of which the Center

is one, regarding allegations of abusive domain name registration and use (Policy,

paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the holder of rights in the service marks "GUTSY WOMEN"

and "GUTSY WOMEN TRAVEL" by way of license. (See Factual

Background, supra).

Complainant alleges that the disputed domain name <gutsywomen.com> is

identical or confusingly similar to the service marks. It suggests that the

GUTSY WOMEN TRAVEL mark "contains the purely descriptive term

‘travel’". It asserts that Respondent’s statement that she receives errant

email intended for Complainant supports the existence of confusion in the relevant

public.

Complainant states that Respondent has no rights or legitimate interests in

the disputed domain name because it has not been used in connection with a bona

fide offer of goods or services, until recently did not include content, and

was later redirected to "quinnolson.com". Complainant indicates there

is no evidence that Respondent used the name to personally identify herself

or a business, except to register the name under the business name "Gutsy

Women". Complainant says that Respondent has made no legitimate non-commercial

or fair use of the name, and that "In the almost six years since the registration

of the domain name, the Respondent has failed to provide any content on the

website."

Complainant argues that Respondent registered the disputed domain name in bad

faith with the intent to sell it to Complainant for a profit. Respondent registered

the name five months after first publication of a book containing "Gutsy

Women" in its title. She has not actively used the name in connection with

a website. When contacted by Complainant, she requested an "excessive"

and "disproportionate" price. This is said to be "unconscionable".

Complainant claims that Respondent temporarily included a photograph of a woman

rock climbing, and this is said to have "called to attention" Complainant’s

travel packages. Complainant states that the photograph was removed by Respondent

during or after January 2003, "after being contacted by the Complainant

regarding transfer of the disputed domain name".

Complainant refers to several domain names registered by Respondent that were

not used to host content.

Complainant requests that the Panel direct the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent asserts that she conceived Gutsy Women in 1995 "to celebrate

women of tremendous character who defied overwhelming odds in providing a median

for this topic, self help material, medical news, physical safety, spiritual

strength, abuse control, women rights, political issues affecting women around

the world, in addition to a variety of related products included books for sale.

Specific examples of women that Gutsy Women celebrates include, but are

not limited to the following: Annie Oakley, Sushila Nayar, Matilda

Joslyn Gage, Clara Bow, Bertha Von Suttner, Diana Sands, Ruth Muskrat

Bronson, Vinnie Ream Hoxie, Katherine Stinson, Delia Akeley, Anna Freud,

Lise Meitner, Joan of Arc, and Susan B. Anthony."

Respondent asserts that she acquired the disputed domain name in March 1997,

to "carry its message further than the local community of Los Angeles."

Respondent asserts that Complainant failed to take any action regarding the

name for six years, and this constitutes laches and waiver.

Respondent indicates that its website contains a link to Complainant’s travel

website to avoid any potential confusion.

Respondent indicates that use of the term "Gutsy" in connection with

"Women" is commonplace.

Respondent suggests that Complainant’s license agreements may no longer be

in effect.

Respondent indicates that its website does not compete with Complainant’s commercial

activities.

Respondent argues that it has a legitimate interest in the disputed domain

name because it is used for purposes not associated with Complainant’s commercial

activities, and that Respondent is making further plans for development of its

website that may include self-help books, medical literature, sports, political

issues, sexual abuse prevention, current events, journalism, education, and

environmental issues.

Respondent asserts that the disputed domain name was registered without knowledge

of "gutsywomen travel". Moreover, the license to Complainant for use

of that name did not take effect until late 2002, making any allegations of

bad faith misplaced.

Respondent rejects Complainant’s other allegations of bad faith.

Respondent contends that Complainant’s actions are in large measure an effort

to obtain Respondent’s domain name for a low price through legal action.

Respondent requests the Panel to reject Complainant’s request for transfer.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent has notice

of proceedings that may substantially affect its rights. The Policy and Rules

establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules). Respondent in this proceeding

has submitted a detailed Response. The Panel is satisfied that Respondent was

given adequate notice and a reasonable opportunity to respond.

As a preliminary matter, the Panel notes that Complainant transmitted a Reply

shortly following appointment of the Panel. Although the Panel has discretion

to accept supplemental pleadings, the Reply submitted by Complainant merely

recites facts set out in the Complaint. The Panel does not accept the supplemental

pleading.

The Panel also notes that Respondent, Gutsy Women, is effectively controlled

by Kathryn Soll. The parties are not in disagreement that Ms. Soll

effectively controls the disputed domain name.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

The Panel observes at the outset of this proceeding that many of the facts

alleged in the Complaint are irrelevant to the question whether Respondent registered

and used the disputed domain name in bad faith. The disputed domain name was

registered by Respondent on March 3, 1997. A finding of abusive domain

name registration and use requires that a respondent "registered"

(and used) the disputed domain name in bad faith.

Complainant asserts rights in two registrations at the USPTO for GUTSY WOMEN TRAVEL",

for travel services, by way of license from Vauxhall LLC. These registrations

issued in December 2002 and January 2003, and each claims a date of first use

and first use in commerce of November 19, 2001. A pending Intent to

Use Application for the service mark "GUTSY WOMEN" for which

Complainant asserts rights under the same license states an intention for future

use of the mark.

Respondent registered the disputed domain name on March 3, 1997.

There is no plausible set of circumstances in which Respondent could have registered

the disputed domain name in bad faith with respect to marks that were neither

used nor registered by Complainant in connection with travel services, by its

own averment to the USPTO, prior to November 2001. For this reason, the Panel

will disregard further consideration of rights claimed by Complainant by way

of license from Vauxhall LLC. In doing so, the Panel does not reject the proposition

that Complainant may have rights in the mark GUTSY WOMEN TRAVEL based

on license from Vauxhall, but rather that such rights, if any, are immaterial

to the Panel’s determination here.

Complainant also asserts rights in the trademark "GUTSY WOMEN" based

on license from Travelers’ Tales, Inc., a book publisher. Again, the focus is

on what may have been Complainant’s rights at the time the disputed domain name

was registered, that is, March 3, 1997.

The USPTO does not register book titles as trademarks[1].

Titles of books that acquire secondary meaning may be protected as common law

trademarks[2]. A principal criterion for

determining secondary meaning is that members of the public associate the title

with the author or publisher of the book[3].

Marybeth Bond wrote a book entitled "Travelers’ Tales Gutsy Women Travel

Tips and Wisdom for the Road" (the title as listed on the assignment to

the predecessor of Vauxhall, supra), or "Gutsy Women Travel Tips

and Wisdom for the Road". There was a first printing in October 1996, and

a second printing in February 1997. There is no indication in the Complaint

regarding the number of copies in either of these printings. In order to establish

common law trademark rights in the term "GUTSY WOMEN" as of March 3, 1997,

Complainant would need to demonstrate that the relevant consuming public associated

the descriptive term "GUTSY WOMEN" with books authored by Marybeth

Bond and/or published by Travelers’ Tales as of that date including, in particular,

that the term "GUTSY WOMEN" in isolation from the remainder of the

title was so associated (for example, being used as a short form advertising

or marketing identifier for the book).

Complainant has not submitted evidence sufficient to persuade the Panel that

as of March 3, 1997, Complainant (by way of subsequent license) had

established common law rights in "GUTSY WOMEN" as a trademark. Complainant

has not presented evidence to suggest that, as of that date, the descriptive

term "GUTSY WOMEN" had been isolated by the consuming public as the

identifier of the book on which it appears as part of a substantially longer

title, and it has not presented evidence that consumers had formed an association

with the term such as give rise to secondary meaning from a common law trademark

standpoint.

Respondent could not have registered the disputed domain name <gutsywomen.com>

in bad faith on March 3, 1997, if, as of that date, Complainant had

not established rights in "GUTSY WOMEN" as a trademark.

The Panel finds that Complainant did not have rights in a mark at the time

that Respondent registered the disputed domain name. On that basis, the Panel

determines that Respondent did not register and use the disputed domain name

in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b) of the Policy.

As this determination disposes of Complainant’s Complaint, the Panel need not

make further findings.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Frederick M. Abbott

Sole Panelist

Dated: April 29, 2003

1. See J. THOMAS MCCARTHY, 2 MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION §§10:1-10:4 (4th ed. 1996 and updated).

2. See, e.g., Dr. Seuss Enterprises v. Penguinbooks

USA, 109 F.3d 1394 (9th Cir. 1997).

3. See McCarthy¸supra note 2, at §§10:10-10:11.