Sandra Supulniece v. Jacob Bedard
Claim Number: FA1107001397969
Complainant is Sandra Supulniece (“Complainant”), Maryland, USA, self-represented.
Respondent is Jacob Bedard (“Respondent”), Maryland, USA, self-represented.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <bootcampannapolis.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2011; the National Arbitration Forum received payment on July 11, 2011.
On July 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bootcampannapolis.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bootcampannapolis.com. Also on July 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
An unsigned Response was received on August 1, 2011 in reply to which the Forum sent a deficiency notice. A signed Response was later received after the deadline for its submission.
Complainant made Additional Submissions which were compliant with Supplemental Rule 7.
On August 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
As a preliminary procedural matter, the Panel has a discretion whether or not to consider the Response. Technically, it fell foul of the Rules since a signed version of the Response was not received by the Forum until after the deadline for its submission. Nevertheless, having regard to the minor nature of that deficiency and to the facts that there is no shown inconvenience to Complainant, nor any consequential delay in these Administrative Proceedings arising therefrom, the Panel allows the Response and has taken full recognition of it in reaching its Decision.
Complainant requests that the disputed domain name be cancelled.
A. Complainant
Complainant alleges trademark rights in the term ANNAPOLIS BOOT CAMP and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and argues, in particular, that Complainant has not shown trademark rights. Details of the Response are included in the Discussion hereunder.
C. Additional Submissions
As indicated, Complainant made Additional Submissions which are considered where relevant under the Discussion which follows.
The pertinent facts are that the parties operate in essentially the same service sector in the city of Annapolis in the State of Maryland, USA. Otherwise, there is no relationship between the parties and threats of legal action by Complainant against Respondent, alleging certain breaches of its claimed rights in ANNAPOLIS BOOT CAMP by reason of Respondent’s registration and use of the disputed domain name, failed to produce a lasting compromise with the result that these Administrative Proceedings were commenced. Other findings are made where relevant as part of the following Discussion.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trademark.
The Panel finds that the subsistence or not of Complainant’s alleged trademark rights is determinative of these Administrative Proceedings. What now follows is a redacted form of the parties’ submissions as they bear on that particular point of the Policy.
The Complaint states that:
“The Trademark is common law use of Annapolis Boot Camp established in 2005. The associated domain name is annapolisbootcamp.com which is in use by In-Zone Fitness LLC, a Maryland based company. The trade name Annapolis Boot Camp has been used continuously and extensively in advertising (literature, media, and automobile wrapping) since the establishment of the operation.”
Respondent submits in reply that Complainant’s principal trading name is “In Zone Fitness” for which Complainant holds a Federal trademark registration. Respondent asserts that Complainant has no registered protection for any other name and that the claim to trademarks rights in the term ANNAPOLIS BOOT CAMP is speculative. Respondent states that it operates a boot camp style fitness program in the Annapolis area and so the disputed domain name is descriptive of the service provided.
In its Additional Submissions, Complainant states that:
“Annapolis is not a large city; although my membership base extends to several hundred people this represents only around one percent of the population, and there is clearly room for other companies offering similar services. I am always pleased to see a new fitness training operation … and competition is always good for a company. I have no desire, however, for his operation to be linked in way to mine. His methods are not mine, his trainers are not qualified to the same standards as mine, and I would not like any perception of the quality of his services to be associated with my company.”
The Panel observes that paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy[1]. Nonetheless, a trademark registration is not required by the Policy provided Complainant can establish common law rights in the trademark[2].
The issue for the Panel here is whether Complainant has done enough to show common law trademark rights. Although Complainant chose to file the Complaint with the National Arbitration Forum, the Policy is also administered by the World Intellectual Property Organisation (WIPO) in Geneva. In addition to publishing the decisions of its panelists under the Policy, WIPO also publishes a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.” That Overview is regularly cited and endorsed in the decisions published by the Forum.
The Overview poses the question at paragraph 1.7[1]: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.” (emphasis added)
What matters here is to measure the character of the trademark against the evidence of use and reputation proffered by Complainant in order to decide whether Complainant can be said to have common law rights in the trademark.
The Panel can attach no weight to the Complainant’s claim to a common law trademark founded on bare assertions of reputation[3]. Moreover, Complainant does little to support that claim by way of evidence of the kind which might show even a modest level of public recognition of the name ANNAPOLIS BOOT CAMP such that it could be said that the name had acquired a secondary trademark significance.
Complainant faces the added burdens that the term in which it asserts common law rights is a geographical placename coupled with words wholly descriptive of the services offered. Complainant’s adoption of three descriptive words is no doubt convenient but there is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. In this Panel’s opinion, Complainant accordingly bears a higher onus of proof to show that the words have acquired secondary trademark meaning and indicate Complainant to the exclusion of others.
Complainant asserts use of the term ANNAPOLIS BOOT CAMP since 2005. It claims that the term “has been used continuously and extensively in advertising, literature, media, and automobile wrapping” (livery). Membership is limited to “several hundred people” which is said to represent “only around one percent of the population” of the City of Annapolis.
Six years’ use of a purely descriptive term is unlikely to generate common law rights absent exceptional proof of use. Unfortunately, the Complaint does not carry anything like the evidence referred to in the WIPO Overview. The material annexed to the Complaint said to support the claim to common law trademark rights is limited in a number of ways. It frequently shows the name “In-Zone Fitness” in a manner most people would perceive as trademark use. When the words “Annapolis Boot Camp” do appear, they are often present along with the name “In-Zone Fitness” and, not infrequently, they are subordinate thereto. It is therefore unclear to the Panel to what extent the term “Annapolis Boot Camp” even performs a trademark function. Short promotional sequences uploaded to “YouTube” in 2009 have received barely more than 500 viewings to date and virtually none of the advertising material acts as a meaningful barometer of how widely known the alleged trademark might be to even a local Annapolis audience. There is nothing before the Panel to draw it to the conclusion that Complainant has common law trademark rights acquired through use and reputation.
The Panel finds that Complainant has not established the existence of trademark rights for the purposes of paragraph 4(a)(i) of the Policy.
No findings required[4].
No findings required.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bootcampannapolis.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 17, 2011
[1] See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[2] See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
[3] See, for example, what was said in Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003): “Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”
[4] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006)
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