WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trailblazer Learning, Inc. dba Trailblazer v. Trailblazer Enterprises
Case No. D2006-0875
1. The Parties
The Complainant is Trailblazer Learning, Inc. dba Trailblazer, Caledonia, Michigan, United States of America, represented by Brett Woudenberg, Caledonia, Michigan, United States of America.
The Respondent is Trailblazer Enterprises, Rosamond, California, United States of America, represented by Jon Morgan of Rosamond, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <trailblazer.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2006. On July 12, 2006, the Center transmitted by e-mail to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On July 13, 2006, Network Solutions, LLC, transmitted by e-mail 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 contacts. 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 July 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2006. The Response was filed with the Center on August 2, 2006.
On August 4, 2006, Complainant submitted an unsolicited supplemental filing (dated August 2, 2006) to the Center, which the Center acknowledged on August 8, 2006.1
On August 9, 2006, the Respondent submitted an unsolicited supplemental filing to the Center in response to the Complainant’s unsolicited supplemental filing.2
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 14, 2006. 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.
On August 14, 2006, the Complainant’s representative sent an e-mail to the Panel stating that he was “unable to afford attorney representation at this time” and offering “to answer any questions you [the Panel] may have about our filing and supplemental information.” In response, the Panel informed the Complainant’s representative via e-mail (with cc’s to the Respondent and to the Center) that unilateral communication with the Panel is forbidden by Paragraph 8 of the Rules and instructing the Complainant’s representative to direct further communications, if any, to the designated case administrator at the Center.
4. Factual Background
Complainant contends that it “has been in active business since 2001” and that it “changed its corporate name to Trailblazer Learning, Inc. on June 15, 2006.” Complainant is the owner of pending applications to register the trademarks TRAILBLAZER LEARNING, U.S. Serial No. 78-920,567 (filed June 30, 2006; first used in commerce June 15, 2006); and TRAILBLAZER, U.S. Serial No. 78-928,722 (filed July 13, 2006; first used in commerce June 15, 2006).
The Domain Name was created on July 26, 1995.
5. Parties’ Contentions
Complainant contends that it is the owner of a federal trademark application for TRAILBLAZER LEARNING that was assigned Serial No. 78-920,567 by the U.S. Patent and Trademark Office, and that this application “was registered.” Complainant contends in its Complaint that “it has also filed a trademark for ‘Trailblazer’,” but Complainant does not state in the Complaint where or when this application was filed; presumably, the reference is to U.S. Serial No. 78-928,722, as identified in Complainant’s supplemental filing. Complainant contends, without elaboration on the merits or citation to any authority, that “[t]he Respondent’s domain name is confusingly similar to both the existing ‘Trailblazer Learning’ trademark owned by Trailblazer Learning, Inc. and the pending trademark ‘Trailblazer’, which is why it is seeking possession of the domain name.”
Complainant contends that “[p]rior to notice made by Complainant, Respondent had not used the domain name or shown preparations to use the domain name in connection with a bona fide offering for goods or services,” that “Respondent is passively holding the domain name despite being inherently aware that it is a well-known trademark (the Chevrolet Trailblazer is one such obvious trademark),” that “Respondent is not commonly known by the domain name, has not filed a renewed Fictitious Business Name in its county of residence (Kern, California) and has not acquired any trademark or service marks or filed a corporate or LLC/LP registration,” and that Respondent “does not appear to have any common law trademark from use of Trailblazer in any media or advertising, nor does it appear that it is generating any revenue.”
Complainant contends that “[t]he domain name was registered July 26, 1995, but has not been used by Respondent. Trailblazer is a well-known trademark (i.e. Chevrolet Trailblazer). Respondent is an individual with a purported Fictitious Business Name of ‘Trailblazer Enterprises’ in Kern County, in the State of California. Although a Fictitious Business Name certificate was filed when the domain name was registered, it was allowed to expire December 27, 2005…. Technically, the Respondent does not exist. Respondent has also refrained from filing a corporation or LLC/LP…, suggesting that the Respondent no longer has a reason to hold the <www.trailblazer.com> domain name. Attempts were made by the Claimant to contact the Respondent by phone and email on May 19. All contact information was invalid. Registrar was contacted and was unable to reach Respondent due to invalid Whois information… causing the domain name to go into the redemption process. With just days remaining in the redemption period, Respondent contacted Registrar to correct Whois information on July 2, 2006, and to change registration over to a private registration to mask his identity. Respondent has not replied to any inquiries by Complainant. It is clear that Respondent is cybersquatting on the domain waiting for resale to a well-known trademark holder and has no intentions of ever using it for legitimate commerce.”
The Complainant provided a copy of a letter dated May 20, 2006, sent by Complainant to Respondent, in which Complainant asked “if there is a possibility of acquiring the domain name from you for commercial use related to my company. Trailblazer Learning is a new brand for our company… We are in the process of filing the paperwork to change our name, but we are already finding folks prefer to refer to us as Trailblazer.” In its supplemental filing, the Complainant states that it “would like to reiterate that our intentions from the start have been to negotiate in good faith with [the Respondent] on the purchase of the Trailblazer domain…. We simply want the rights to use the domain to protect our trademark filing, enhance our online presence for marketing to our education customers and to make us more commonly known to the public.”
The Respondent contends that he is the sole proprietor of a small business in southern California that has provided technical and support services to Internet service providers (“ISPs”) for more than 10 years.
The Respondent contends that the Domain Name is not confusingly similar to TRAILBLAZER LEARNING because the Domain Name is not a misspelling of TRAILBLAZER LEARNING and does not contain the phrase TRAILBLAZER LEARNING. The Respondent further contends that the word “trailblazer” is generic and “has no association with the fields of education or learning.”
The Respondent contends that it has rights or legitimate interests in respect of the Domain Name, which it has used for e-mail services for more than 10 years, a contention supported by letters from two of Respondent’s customers provided as exhibits to the Response. The Respondent furthers contends that it is “a small local business with no need to incorporate or trademark our name.”
The Respondent contends that “[i]t is impossible for the Respondent to have purchased the domain name to ‘confuse or mislead’ the Complainant’s customers. Chevrolet (General Motors), and a variety of other legitimate businesses and products use the generic word ‘Trailblazer’ in their domain or product names and none of them have complained to the Respondent in over ten years of holding the domain name.” The Respondent further contends that “Respondent’s business sector is technical support and services in Southern California, while Claimant is located in Michigan and is involved in some type of education/learning endeavor.”
The Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Before the Panel can make a determination as to whether the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Panel must first be convinced that the Complainant indeed has rights in a trademark or service mark. With respect to trademark registrations, Complainant refers to TRAILBLAZER LEARNING, U.S. Serial No. 78-920,567 (filed June 30, 2006; first used in commerce June 15, 2006); and TRAILBLAZER, U.S. Serial No. 78-928,722 (filed July 13, 2006; first used in commerce June 15, 2006).
Neither the pending trademark applications cited by the Complainant nor its vague and unsupported statement that it “has been in active business since 2001” convinces the Panel that the Complainant has acquired rights in a mark that contains the word TRAILBLAZER. See usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan, WIPO Case No. D2003-0583 (“[t]he Panel does not believe that an application for a mark and some use of that mark in commerce, however brief, or the mere intent to use, are sufficient to give the Complainant ‘rights’ in the trademark claimed”).
In light of the above, the Complainant has failed to prove the first element of the Policy.
Accordingly, the Panel must deny the Complainant’s request to transfer the Domain Name, and the Panel need not consider the second or third elements of the Policy. However, in light of the Respondent’s request that the Panel issue a finding of Reverse Domain Name Hijacking, the Panel will proceed to consider the second and third elements below.
B. Rights or Legitimate Interests
Having found against the Complainant in relation to the first element of the Policy, it is not strictly necessary for the Panel to consider the second element of the Policy. However, it will do so because of the Respondent’s request to issue a finding of Reverse Domain Name Hijacking.
By the Complainant’s own acknowledgments, the Respondent obtained a fictitious business name filing for TRAILBLAZER ENTERPRISES in 1995.3 The Respondent states that it “maintained a web page on the domain until circa 1998,” a statement supported by an exhibit from the Respondent showing a printout from the Internet Archive’s Wayback Machine (at “web.archive.org”)4; the printout indicates that the Respondent was offering a variety of information technology services under the logo “Trailblazer Enterprises” at a website using the Domain Name in 1996.
Therefore, it appears as if the Respondent, before any notice of the dispute leading to the Complaint filed by the Complainant, used the Domain Name in connection with a bona fide offering of goods or services, see Policy, paragraph 4(c)(i), which demonstrates the Respondent’s rights or legitimate interests in respect of the Domain Name.
In light of the above, the Complainant has failed to prove the second element of the Policy.
C. Registered and Used in Bad Faith
Having found against the Complainant in relation to the first element of the Policy, as well as in relation to the second element of the Policy, it is not strictly necessary for the Panel to consider the third element of the Policy. However, it will do so because of the Respondent’s request to issue a finding of Reverse Domain Name Hijacking.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel is unable to determine from the Complaint which, if any, of the above factor(s) the Complainant is relying upon for its assertion of bad faith.
With respect to Paragraph 4(b)(i) of the Policy, the Panel finds it impossible to conclude that, having registered the Domain Name many years prior to the date on which the Complainant began conducting business under the name “Trailblazer,” the Respondent could have registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it the Complainant. As a result, the Panel fails to find bad faith under Paragraph 4(b)(i) of the Policy.
With respect to Paragraph 4(b)(ii) of the Policy, there is nothing in the record to indicate that the Respondent has engaged in a “pattern” of inappropriate domain name registrations; indeed, the Respondent states that he “has purchased exactly one domain name (‘trailblazer.com’) in his lifetime, has never sold a domain name, and is not i[n] the business of holding, buying, trading or selling domain names.” As a result, the Panel fails to find bad faith under Paragraph 4(b)(ii) of the Policy.
With respect to Paragraph 4(b)(iii) of the Policy, the Panel finds it impossible to conclude that, having registered the Domain Name many years prior to the date on which the Complainant began conducting business under the name “Trailblazer,” the Respondent could have registered the Domain Name primarily for the purpose of disrupting the business of Complainant. As a result, the Panel fails to find bad faith under Paragraph 4(b)(iii) of the Policy.
With respect to Paragraph 4(b)(iv) of the Policy, the Panel finds it impossible to conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website given that (1) it is unclear in what mark, if any, Complainant has rights, (2) it appears that the Respondent is engaged in a business activity (services for ISPs) that is unrelated to the Complainant’s business5, and there is nothing in the record showing any actions by Respondent that could be construed as creating a likelihood of confusion with the Complainant, and (3) Complainant states that Respondent is not currently using the Domain Name in connection with a website. As a result, the Panel fails to find bad faith under Paragraph 4(b)(iv) of the Policy.
While bad faith can be found even in the absence of the above factors, the Panel does not see it anywhere in this case. If anything, the Respondent’s registration and use of the Domain Name in connection with services unrelated to the Respondent’s services for many years prior to the existence of the Complainant and Complainant’s rights, if any, in the TRAILBLAZER mark, is evidence of the Respondent’s good faith registration and use of the Domain Name. See Early Learning Centre Limited v. ELC Inc., WIPO Case No. D2005-0743 (“the archived website has all the indicia of having been used in connection with a legitimate business that used the letters [comprising the disputed domain name] in its name”).
7. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
In this case, the Complainant has not only failed to prevail, but it has failed to prove a single element required by the Policy. Indeed, the Complainant has made factual misrepresentations to the Panel, including its statement in the Complaint that its trademark application at the U.S. Patent and Trademark Office “was registered.” Although the Panel is sympathetic to the Complainant’s statement (made unilaterally to the Panel in violation of Paragraph 8 of the Rules) that it was “unable to afford attorney representation,” this is no excuse for filing a Complaint that lacks merit.
“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645. The Panel believes that to be the case here, as “it should have been clear to the Complainant that its case had no prospect of success.” Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309.
The Complainant filed the Complaint because it admittedly wanted the Domain Name to “enhance our online presence for marketing to our education customers and to make us more commonly known to the public.” While these may be legitimate aspirations, they cannot and should not be achieved through illegitimate means, such as by filing a meritless Complaint under the Policy that has accomplished nothing more than wasting the time and resources of both parties.
Accordingly, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied and the Panel issues a finding that the Complainant has engaged in Reverse Domain Name Hijacking.
Douglas M. Isenberg
Dated: August 25, 2006
1 “While panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. It is also helpful if the party submitting its filing can show its relevance to the case and why it was unable to provide that information in the complaint or response.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.2, <http://arbiter.wipo.int/domains/search/overview/index.html> (visited August 25, 2006). In this case, the Panel accepts the Complainant’s supplemental filing given that it was filed prior to the date on which the case file was transmitted to the Panel and that it contains information responsive to the Respondent’s request for a finding of reverse domain name hijacking, a request the Complainant could not have addressed in its Complaint.
2 “Panelists who accept a supplemental filing from one side often allow the other party the opportunity to file a reply to the supplemental filing.” Id. For this reason, the Panel accepts the supplemental filing from the Respondent.
3 The exhibit provided by the Complainant in support of this assertion appears to the Panel to indicate that the filing was made in 2000, not 1995, but this discrepancy is irrelevant to the Panel’s analysis of this element of the Policy.
4 The Wayback Machine has been described as “a reputable source for tracking the history of some content on the Internet.” Pfizer Inc. v. Bharat Gohil, WIPO Case No. D2005-1290.
5 A document, apparently an advertisement or marketing material, provided by Complainant lists the following services as being associated with Trailblazer Learning: health and safety, behavior management, differentiated instruction, technology integration, classroom management, curriculum mapping, multiple intelligences, English language teaching, instructional strategies, NCLB compliance, leadership effectiveness, literacy & assessment and new teacher training.