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
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.
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. Titles of books that acquire secondary meaning may be protected as common law trademarks. A principal criterion for determining secondary meaning is that members of the public associate the title with the author or publisher of the book.
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.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
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.