WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Debbie Robus and Greg Robus, d/b/a Workamper News v. Patty Rae Stanley
Case No. DWS2001-0001
1. The Parties
1.1 The Complainants are Debbie Robus and Greg Robus, a married couple, d/b/a Workamper News, a sole proprietorship organized and existing under the laws of the State of Arkansas, United States of America, having its principal place of business at 201 Hiram Road, Heber Springs, Arkansas, United States of America, hereinafter referred to individually and jointly as "Complainant."
1.2 The Respondent is Patty Rae Stanley, the President of Narrows Camping Resorts, Inc., having an address of RR1, Box 2045, Bar Harbor, Maine, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <workcamper.ws>, which domain name is registered with Register.com, Inc. ("Register.com"), located in New York, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 2, 2001, and the signed original together with four copies forwarded by express courier was received on March 6, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 7, 2001.
3.2 On March 13, 2001, a Request for Registrar Verification was transmitted to the registrar, Register.com requesting it to: (1) confirm that the domain name at in issue is registered with Register.com; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On March 29, 2001 Register.com confirmed by reply e-mail that the domain name at issue is registered with Register.com, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Register.com and ICANN), setting a deadline of September 13, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 The parties notified the WIPO Center that they had reached a tentative settlement and asked that the deadline for the response be extended so that the parties could finalize the settlement. Accordingly, the WIPO Center extended the deadline to May 3, 2001.
3.7 By letter dated April 26, 2001, the Respondent notified the WIPO Center that the efforts to settle the matter had broken down. On May 1, 2001, the WIPO Center received the Response, and on May 3, 2001, the WIPO Center issued an Acknowledgement of Receipt (Response).
3.8 On May 25, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was June 7, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant coined the term "Workamper" in 1987 and began publishing a magazine under the name "Workamper News." The publication provides news and information of interest to campers and campground owners. The newspaper currently has a circulation of over 50,000 readers throughout the United States.
4.2 On March 4, 1991,Complainant Debbie Robus filed trademark applications for WORKAMPER NEWS and Design and for WORKAMPER with the United States Patent and Trademark Office ("USPTO"). A registration for WORKAMPER NEWS and Design issued March 10, 1992, and a registration for WORKAMPER issued February 18, 1992. Complaint, Annex 4.
4.3 In November 1996, Complainant registered the domain name <workamper.com> and created a web site that provided many of the same features as Complainant's newspaper. Complaint, Annex 5. Complainant has applied to the USPTO to register the service mark WORKAMPER.COM. Complaint, Annex 6.
4.4 Respondent admits that she is aware of the publication and has advertised in it since 1989.
4.5 On August 31, 2000, Respondent registered the domain name at issue and shortly thereafter established a web site to which the domain name at issue resolved. The web site contains logos for the three campgrounds operated by Respondent and contains an advertisement for couples to work in the campground during camping season, together with online applications for such employment. Complaint, Annexes 2, 7, 9, and 10.
4.6 Respondent registered the domain name at issue on August 31, 2000. Complaint, Annex 1.
4.7 Complainant learned of the registration of the domain name at issue in the fall of 2000. On October 12, 2000, Complainant wrote Respondent to attempt to persuade respondent not to use the domain name at issue, arguing that it was likely to create confusion. Complaint, Annex 11.
4.8 Respondent's agent replied by email on January 29, 2001, indicating that it needed to recruit 32 work campers annually and planned to use the web site as its exclusive means of recruiting same. However, Respondent offered to transfer the domain name at issue to Complainant in return for up to 10 years of free employment solicitations in Complainant's various media. Complaint, Annex 12. Complainant has estimated the value of such media use at more than US$10,000 per year. Complainant contends that Respondent's past advertisements in Complainant's publications ran no more than a few hundred dollars per year.
4.9 Complainant replied by email of January 20, 2001, and in the spirit of compromise offered Respondent a 50% discount for certain services over a three-year period and some feature stories on Respondent's campgrounds. Complaint, Annex 13.
4.10 By email dated January 31, 2001, Respondent rejected the offer, and reduced the advertising demand to five years, noting that "you are asking us to surrender a domain that not only offers direct value to our business, but can be sold on the open market to the highest bidder. . . .[T]hat domain could easily be a threat in the hands of someone interested in competing with you." Complaint, Annex 15.
4.11 Respondent claims to have been using the term "workamper" in connection with her business since at least 1985. As proof of this Respondent attaches a newspaper article from the Bangor Daily News, in Bangor, Maine, dated July 9-10, 1994. Response, Annex 1. The article cites the magazine of the same name and notes that Respondent has been hiring workampers since 1985. The word "workampers" has apparently entered the vernacular to signify workers who are for the most part retired and who live and work at various campgrounds throughout the year.
4.12 Respondent also attaches a number of affidavits. While virtually all testify that they have been employed by Respondent for several years and while all use the term "workampers" to describe themselves, only Respondent testifies as to her use of the word, which she claims dates to 1985.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that its use of the term "workamper" predates Complainant's alleged coining of the term, and that Respondent has rights and legitimate interests in respect of the domain name and that Respondent is using the domain name at issue in good faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must 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 interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 The Panel finds that the domain name at issue <workcamper.ws> is identical or confusingly similar to the mark in which the Complainant claims rights. The Panel acknowledges the trademark registrations which Complainant holds. The Panel is also inclined to believe that Complainant did indeed coin the term "workamper."
6.5 However, Annex 1 to the Response created concern in the Panel's mind that the term "workamper", may, since the time it was coined have become a generally descriptive term and thus no longer subject to trademark protection.
6.6 The article from the Bangor Daily News of July 9-10, 1994, is entitled "Workampers find jobs." The article refers to retirees who travel the country performing work "in exchange for a place to park and plug in their campers. They're called workampers . . . ." The term "workampers is used more than once to refer to these workers.
6.7 Moreover, a cursory search on the web turned up 3 sites of the first 7 responsive to the search request, "workamper" which used the word in the generally descriptive sense outlined above. See web sites at www.campgulf.com/workamping.html, www/bellhaven.com/workamper.htm, and www.eurekajellystone.com/jobs.html.
6.8 This raises serious questions as to whether a coined term has entered the vernacular as a generally descriptive term, and, if so, whether it is still protectible as a trademark. The procedures available under the Policy are not adequate to deal with such an undertaking. Procedures which permit discovery and extended case presentation, such as those available in a court or in standard commercial arbitration, complete with oral hearing, are necessary in such instances. See, e.g., United States Postal Service v. Postoffice.com, Inc., ICANN Case No. FA96313.
6.9 The Policy has a carefully circumscribed focus and jurisdiction which is unsuitable for such an analysis and determination. Accordingly, the Panel believes that in this case the parties should resort to a court of law or to an agreed arbitral tribunal to resolve their dispute.
For all of the foregoing reasons, the Panel decides that the present controversy, which involves issues as to whether a coined term has entered the vernacular as a generally descriptive term, and, if so, whether that term is still entitled to trademark protection, is one for which the Policy was not intended. Accordingly, the Panel dismisses the Complaint in this matter.
M. Scott Donahey
Dated: June 5, 2001