WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PRIMEDIA Special Interest Publications Inc. v. John L. Treadway

Case No. D2000-0752

 

1. The Parties

Complainant is PRIMEDIA Special Interest Publications Inc., 2 Park Avenue, 11th Floor, New York, NY 10016 (USA), represented by David Sternbach, Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, NY 10036 (USA), hereinafter the "Complainant."

Respondent is John L. Treadway, 28 Independence Avenue, Lexington, MA 02421 (USA), represented by Amy B. Spagnole, Hinckley, Allen & Snyder, LLP, 28 State Street, Boston, MA 02109 (USA), hereinafter the "Respondent."

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is shutterbug.com. It is referred to as the Domain Name. The registrar is Network Solutions, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complainant's complaint on July 7, 2000 (electronic version) and July 10, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 19, 2000.

On July 13, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On July 14, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions' Verification Response, confirming that the Respondent John L. Treadway is the registrant and administrative, technical, zone, and billing contact.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, on July 19, 2000, the Center transmitted to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding via post/courier, facsimile and e-mail. The postal address used for Respondent was as follows:

John L. Treadway Jr.
28 Independence Ave.
Lexington, MA 02173

A response was received on August 8, 2000 (electronic version) and August 10, 2000 (hard copy).

On August 15, 2000, in view of the Complainant's designation of a single panelist (and agreement with Complainant's election by Respondent) the Center invited Mr. Richard G. Lyon to serve as a panelist.

Having received on August 15, 2000, Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The Projected Decision Date was August 28, 2000. The Sole Panelist finds that the Administrative panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the e-mails exchanged, the evidence presented, the Policy, the Rules, and Supplemental Rules.

 

4. Factual Background

Complainant is a publisher of special interest magazines and the host of related web sites. Complainant and its predecessor have published SHUTTERBUG Magazine, intended for advanced amateur and professional photographers, monthly since January 1972, and hosted an Internet site, shutterbug.net, since 1996. Complainant's United States (federal) registration for the trademark shutterbug for magazines relating to photography (the Mark) issued June 10, 1997, and Complainant asserts, based upon the publication of the magazine, that rights in the Mark began to accrue since at least 1972. The magazine and Internet site feature articles on new and classic photography techniques, styles, and equipment; test reports on equipment and techniques; articles and buyers' guides pertaining to traditional video, digital imaging, computers, software and peripherals, and darkroom techniques; and question-and-answer columns and chatrooms.

Complainant alleges that Martin Turnbull of TentMaker Publishing, Inc., Colorado Springs, Colorado (USA), originally registered the Domain Name and attempted to sell it to Complainant's predecessor, Patch Publishing Company, Inc., in September 1995. At that time SHUTTERBUG Magazine operated its Internet site at webzene.com/shutterbug. In 1996, under new management, Complainant began operating its Internet site using the domain name shutterbug.net because the Domain Name was not available.

Respondent acknowledges purchasing the Domain Name from Turnbull for $500 on or about February 11, 1997, but denies any knowledge of Turnbullís attempted sale to Patch. Respondent intends to set up a website focusing on the needs of hobbyists, amateur photographers, and photography enthusiasts. In preparation for this, Respondent joined the Photo Marketing Association International in 1997, developed a business plan, met with venture capitalists, created a hypothetical structure and information flow for the planned website, and worked with several e-commerce products. The website has not yet been launched. Respondent asserts that if a commercial website turns out not to be viable, he plans to use the website to show his own nature and landscape photographs.

Complainant's counsel wrote to Respondent on December 17, 1999, to state that Complainant believed that Respondent's use of the Domain Name would constitute trademark infringement and to request that he transfer the Domain Name to Complainant. Respondent replied by letter on December 24, 1999 denying that he was cybersquatting, indicating no interest in asking Complainant for money to purchase the Domain Name, and informing Complainant of his intent to use the Domain Name for future commercial use. Reaching no amicable agreement, Complainant's counsel wrote Respondent on June 6, 2000, requesting the transfer of the Domain Name by June 16, 2000.

 

5. Partiesí Contentions

A. Complainant.

Complainant contends that it and its predecessor began using the trademark shutterbug in 1972; that Respondent admits knowledge of Complainant's trademark and magazine when it acquired the Domain Name; that the relevant portion of the Domain Name is identical to Complainant's registered trademark shutterbug; that respondent does not own a trademark or service mark registration that is identical, similar, or in any way related to Complainant's Mark and the Domain Name; that shutterbug is not Respondent's personal name and Respondent is not engaged in any business or commerce under the name shutterbug; that Respondent has never used the Domain Name in connection with any bona fide offering of goods or services; that Respondent is not a licensee of Complainant and has never been authorized to use its Mark; that accordingly Respondent has no rights or legitimate interests in or to the Domain Name; and that Respondent is warehousing the Domain Name in bad faith.

B. Respondent.

Respondent contends that it has been his intention since December 1996 to set up a website for hobbyists and amateur photographers; that when he purchased the Domain Name he had no actual or constructive notice of Complainant's registration of the Mark; that the name shutterbug is a weak and diluted mark because it is a common, descriptive term used extensively in photography-related businesses; that the public does not identify the word shutterbug exclusively with Complainant or its magazine; and that the Complaint is so without merit as to be reverse domain name hijacking.

 

6. Discussion and Findings

In order to succeed, the Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent's Domain Name has been registered and is being used in bad faith.

Complainant bears the burden of proof on each of these elements.

(i) The Complainant has valid trademark rights in the Mark as registered in the United States, United Kingdom, Japan, and Germany. Other than the generic top-level domain (gTLD) ".com" the Domain Name is identical to the Complainant's registered Mark.

(ii) That does not mean, however, that Respondent has no legitimate right to the Domain Name. Respondent has stated under oath, and Complainant does not contest, that he has made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The matters described in the second paragraph of Section 4 above are demonstrable preparations to use the Domain Name for a website.

The Mark is a word, shutterbug, that is a common, generic term, descriptive of photographic enthusiasts. Complainantís Mark extends only to magazines related to photography; ownership of the Mark does not ipso facto give Complainant the exclusive right to the descriptive word shutterbug in all contexts related to photography. Third party use of shutterbug and variations is widespread among businesses related to photography, and there is no evidence of action by Complainant to enjoin this use. There is also no evidence of any special association of the word with Complainantís magazine.

Either of Respondentís anticipated uses of the Doman Name relates to photography, and neither appears to constitute a magazine. Respondent has established a legitimate right to the Domain Name.

(iii) Nor has Complainant proven bad faith in registering or using the Domain Name. There is no allegation or evidence that Respondent acquired the Domain Name primarily to sell it to the trademark holder or a competitor at a profit. In fact, Respondent has rejected several inquiries into selling or transferring the Domain Name to third parties.

There is also no allegation or evidence of a pattern of Respondentís registering domain names primarily to interfere with trademark owners' use of those names. The only other domain name Respondent is shown to have registered is camerapro.com, another descriptive term, which is intended by Respondent to be a website for professional photographers.

Complainant has not established that Respondent acquired, or has used or intends to use, the Domain Name for the primary purpose of disrupting the business of a competitor. As to acquisition, the uses Respondent contemplated when he acquired the Domain Name are not necessarily competitive with Complainantís magazine and Complainant has no exclusive right to the use of shutterbug as a domain name. There is no evidence to indicate a disruption of Complainant's business. Complainant previously operated a website with a much different name and currently operates under shutterbug.net.

As Respondent has not yet launched his website, there has been no use at all. While later use for a competing magazine or as a means of diverting Complainantís readers for commercial gain by creating a likelihood of confusion with Complainant's Mark as somehow related to the site might be actionable, there is today no evidence of this.

(iv) This leaves the issue raised by Respondent of reverse domain name hijacking. The Panel concludes that there is insufficient evidence in the pleadings and supporting correspondence to sustain a finding of bad faith on the part of Complainant. Respondentís description of the business he hopes to promote through his website could reasonably be viewed as a magazine for photography, which would raise questions of trademark infringement and use of the Domain Name in bad faith. The Panel does, however, emphasize its finding that Complainantís right to the word shutterbug is limited and consequently gives Complainant limited rights to prohibit others from use of the common word shutterbug in domain names.

 

7. Decision

For the foregoing reasons (a) the Complaint is dismissed, and (b) Respondentís request for a finding of reverse domain name hijacking is denied.

 


 

Richard G. Lyon

Sole Panelist

Dated: August 21, 2000


 

Footnotes:

1. Since the website has not been launched it is not possible to determine if Respondentís desired commercial use could arguably be deemed an on-line magazine. As noted in part (iv) of this Section 6, any such evaluation must await actual use of the website.

2. For purposes of this proceeding the Panel treats the circumstances of Respondentís acquisition of the Domain Name in 1996 as the equivalent of registration for purposes of paragraph 4 of the Policy.