WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Epasses
Case No. DBIZ2002-00150
1. The Parties
The Complainant is Rodale, Inc, a corporation organized and existing under the laws of the State of Pennsylvania, with a principal place of business at 33 East Minor Street, Emmaus, Pennsylvania 18098-0099, United States of America. The Complainant is represented in this proceeding by Kevin G. Smith and Cynthia Clarke Weber, Sughrue Mion, PLLC, 2100 Pennsylvania Avenue, N.W., Washington, DC 20037-3213, United States of America.
The Respondent in this proceeding is Epasses, a registered business organized and existing under the laws of the City of San Francisco and the State of California, with a principal place of business at 1500 B McAllister Street, San Francisco, California 94115, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <backpacker.biz>.
The registrar for the disputed domain name is BB Online UK Limited, PO Box 2162, Luton, Beds, LU3 2JL, United Kingdom.
3. Procedural History
This dispute is to be resolved in accordance with the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc.(the STOP Rules), and the WIPO Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the WIPO Supplemental STOP Rules).
The Complaint was filed on April 27, 2002, by e-mail, and on April 29, 2002, in hard copy. On May 14, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Respondent sent a STOP Response to the Center on May 29, 2002, by e-mail, and on June 4, 2002, by hard copy. On June 4, 2002, Complainant sent to the Center a Supplemental Submission (Amendment to the Complaint) by e-mail, and on June 7, 2002, the same was sent to the Center by hard copy. In response, Respondent sent a Response to Complainant's Supplemental Submission (Supplemental Response) to the Center also on June 7, 2002. Having read the Complaint and the Response, the Panel has decided, per STOP Rule 12, that it does not need to solicit supplemental filings from the parties.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 14, 2002, and the Center proceeded to appoint the Panel on June 14, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the WIPO Supplemental STOP Rules in administering this Case.
4. Factual Background
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002. The record does not show any correspondence or interaction between the parties prior to the initiation of this proceeding.
5. The Partiesí Contentions (Summarized)
- For many decades, Complainant has been in the business of publishing books and magazines, one of which is "Backpacker" magazine.
- Complainant owns a registered United States trademark for "Backpacker" (Annex 3 to the Complaint).
- Complainant uses the Complainant Trademark not only for print publication, but also, through Complainant's registered domain names (<backpacker.com> and <backpacker.info>), for online publication and the distribution of various helpful information.
- Respondentís domain name is identical or confusingly similar to the Complainant Trademark and to Complainant's registered domain names, and Complainant and Respondent are direct competitors in the goods and services, information and advice offered at their respective sites. As a result, Complainant would be mistaken as the source of the disputed domain name by internet users. The Complainant Trademark and Complainant's domain names were registered before Respondent registered the disputed domain name.
- Respondent is not part of or affiliated with Complainant, and there is no legitimate reason for Respondent to register or use the Complainant Trademark in its domain name.
- The Respondent registered the <backpacker.biz> domain name in bad faith. Respondent chose the domain name <backpacker.biz> with full knowledge of Complainantís rights therein. Respondent was on constructive notice of the Complainant Trademark, and had actual notice and knowledge of Complainant's magazine "Backpacker".
- Respondent's use of the disputed domain name would infringe the Complainant trademark. Such use will cause Complainant serious and irreparable damage, which will continue unless the disputed domain name is transferred to Complainant.
- Complainant does not own the United States registration in the Complainant trademark. Another company, Ziff-Davis Publishing Company, unrelated to Complainant, owns that trademark registration.
- Respondent plans to use the disputed domain name to launch a web site offering to sell Eurail passes to people (mostly students) travelling in Europe. This use does not compete with Complainant's use of the Complainant Trademark or Complainant's registered domain names.
- There is no likelihood of confusion to internet users caused by Respondent's use of the disputed domain name because of the unrelated nature of the goods, services and location of customer usage offered by Complainant and Respondent, as well as the dissimilar site designs, navigation elements and company logos used by Complainant and Respondent.
- <Backpacker.biz> is a common term, chosen by Respondent to attract existing and potential European backpackers intending to research and purchase Eurail Passes online.
- Respondent has pre-existing rights and legitimate interests in the disputed domain name. Respondent has invested substantial resources, including hundreds of hours and thousands of dollars, over two years to create and develop a business plan for its use of the web site found at the disputed domain name.
- Respondent would suffer irreparable harm as a business if Complainantís requested remedy is allowed because its business is based upon and is inextricably linked to the disputed domain name.
- "Backpacker" is a common term to which Complainant does not have exclusive rights. Web sites found at similar domain names not owned by Complainant, such as <thebackpacker.com>, <mybackerpacker.com> and <backpackers.com>, provide similar backpacking and hiking information without causing Complainant material injury or damage.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <backpacker.biz> transferred to it, the Complainant must prove the following (STOP, para 4(a)(i-iii):
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith
The Panel finds that Complainant does not own the registration of the trademark "Backpacker" in the United States (U.S. Registration No. 1,201,101, dated July 13, 1982 for a monthly magazine in international class 16). Instead, according to the Complaintís Annex 3 this trademark is owned by Ziff-Davis, another publishing company. Complainant has provided no chain of title from Ziff-Davis to the Complainant.
The Complainant also claims for some years to have published a magazine called "Backpacker", but provides no evidence of this: no copy of a magazine cover, no copy of the magazineís masthead or credits page, nothing that would allow this Panel to conclude that the Complainant has for some years published a magazine with the same title as the disputed domain name, <backpacker.biz>.
The copy of the trademark registration produced by Complainant at its own Annex 3 does not show the Complainant as the "backpacker" trademark owner. And the Complainant has produced no evidence, beyond its own assertions, that Complainant has rights in the disputed domain name. Therefore, the Panel finds the Complainant has not met its burden of proof under STOP 4(a)(i).
STOP requires that the Complainant prevail under each section of 4(a)(i-iii). The Panel thus sees no need to discuss the partiesí contentions under 4(a)(ii-iii).
The Panel has found that the Complainant has failed to demonstrate it has mark rights in the disputed domain name as required by STOP at 4(a)(i). Therefore, pursuant to STOP section 4(i) and STOP Rule 15, the Panel orders that the disputed domain name, <backpacker.biz>, remain registered to the Respondent, Epasses.
Dennis A. Foster
Dated: June 30, 2002