WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Albatros Travel A/S v. Richard Donovan
Case No. D2011-0739
1. The Parties
The Complainant is Albatros Travel A/S of Copenhagen, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Richard Donovan of Galway, Republic of Ireland.
2. The Domain Name and Registrar
The disputed domain name, <polarcirclemarathon.com> (the “Domain Name”), is registered with Ascio Technologies Inc. – Denmark (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 3, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2011. The Response was filed with the Center on May 30, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 6, 2011. 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.
4. Factual Background
The Complainant is a Danish travel agency specializing in tours to extreme corners of the earth. Since 2001 the Complainant has organized a polar race within the Arctic Circle called the Polar Circle Marathon. The Complainant registered the domain name <polar-circle-marathon.com> on July 5, 2000.
The Respondent organizes a race within the Arctic Circle named the North Pole Marathon. This race has been run annually since 2002. In association with the name North Pole Marathon the Respondent has used the tag line “World’s Coolest Marathon”.
At some stage after the Respondent had commenced use of that tag line, the Complainant adopted the tag line “the coolest marathon on earth!”
On October 30, 2010, the Respondent emailed the Complainant in the following terms:
“It is very, very disappointing to see a race organization attempt to use the tagline of another event. You should be well aware that the North Pole marathon has been known as the “world’s coolest” for many years – first christened as such by Runner’s World magazine. It is the official tagline of the race name, which is trademarked. Please consider using a tagline of your own invention before I have to bring attention to the fact. It’s quite disrespectful. How would you like [sic] if I set up a ‘polar circle marathon’ in Antarctica. I will certainly consider it and operate one if you continue to use my official and long standing tagline.”
Later that same day the Respondent registered the Domain Name. It is connected to a website which links to the Respondent’s website at “www.npmarathon.com” promoting the Respondent’s race, the North Pole Marathon.
On November 11, 2010, not having received any response from the Complainant, the Respondent emailed the Complainant in the following terms:
“I note that you have not had the courtesy to respond to my email below, so I will take appropriate action against you. On a different note: I’m also setting up a Polar Circle Marathon in Antarctica – if your clients would like to run it, please send them to “www.polarcirclemarathon.com”.
There was further correspondence culminating in an exchange of emails between the Complainant’s trade mark attorneys and the Respondent, but it failed to result in resolution of the dispute.
5. Parties’ Contentions
The Complainant contends that the Domain Name is substantially identical and confusingly similar to the name of its Polar Circle Marathon race, which it has run annually since 2001. The Complainant claims unregistered trade mark rights in respect of the name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent commenced the organizing of polar races after the Complainant and that his race is named the North Pole Marathon. The Complainant contends that the Respondent’s use of the Domain Name is illegitimate, commercial and unfair with intent for commercial gain and designed to misleadingly divert consumers or to tarnish the Complainant’s name/trade mark. Prior to the date he registered the Domain Name the Respondent had never used the name Polar Circle marathon in relation to his races.
The Complainant contends that the Respondent registered the Domain Name and is using it in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
The Respondent denies that the Complainant has any trade mark rights in respect of the name, Polar Circle Marathon, which he claims is purely descriptive and open to anyone to use.
The Respondent contends that he has a perfect right to use and a legitimate interest in respect of the Domain Name in light of the fact that he operates polar circle marathons at both of the poles, the North Pole Marathon and the Antarctic Ice Marathon.
The Respondent objects to the Complainant’s adoption of the tagline “coolest marathon on earth” on the basis that it is an attempt by the Complainant to cause confusion with the Respondent’s event. He also objects to it in that there are several other polar marathons organized which are more northerly marathons than the Complainant’s event.
The Respondent contends that he is not attempting to mislead or divert customers or to tarnish the name which the Complainant claims trade mark rights. He states that his marathon is far superior to the Complainant’s event. He also points to the wide disparity in pricing, competitors paying EUR 11,900 to compete in his event, whereas competitors only pay EUR 1,435 to compete in the Complainant’s event. The Respondent observes that the Complainant has not produced any evidence of anyone being confused.
The Respondent denies bad faith and contends that as an organizer of polar circle marathons he is entitled to use the Domain Name in relation to them.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
B. Identical or Confusingly Similar
The Domain Name, absent the generic “.com” domain suffix, is substantially identical to the name of the Complainant’s event, Polar Circle Marathon, the only difference being that the Domain Name features no spaces between the words.
The only issue under this head is whether the name of the Complainant’s event is a trade mark in which it has rights. There is no trade mark registration, but the Complainant contends that through use of the name over the last 10 years it has acquired unregistered trade mark rights in respect of it under Section 3 of the Danish Trade Marks Act.
What needs to be shown for the Complainant to successfully assert common law or unregistered trade mark rights? That question is answered in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Respondent contends that the name Polar Circle Marathon is purely descriptive of a marathon race within a polar circle. That is certainly its primary meaning, but descriptive terms are still perfectly capable of acquiring a secondary meaning such as to give them distinctiveness and render them valid trade marks. Moreover, there is nothing in the evidence to suggest that anyone other than the Complainant had used the term until the Respondent registered the Domain Name.
Has the Complainant been using the name Polar Circle Marathon as a generic descriptive term or has it been using it as a trade mark? The Panel is satisfied that the Complainant has been using it as a trade mark. The Complainant has been using it for 10 years as the name of its polar marathon. Through its website connected to its domain name <polar-circle-marathon.com>, the Complainant has been promoting its polar circle marathon and travel agency services. The Complainant has also produced a letter from DRF, the Danish Travel Association, certifying that Polar Circle Marathon is a name which in the travel business and among the general public in Denmark has always been associated with products of the Complainant.
Nothing in the evidence of the Respondent serves to undermine the distinctiveness of the name Polar Circle Marathon. It is noteworthy that in his email of October 30, 2010 which is quoted in section 4 above, the Respondent states that his tagline, which is “World’s Coolest Marathon”, is a trade mark. If World’s Coolest Marathon, a term first used of the Respondent’s event in 2004, is a trade mark, why should not the Complainant’s name for its race, first in use in 2001, not also be expected to constitute a trade mark?
The Panel is satisfied that the name Polar Circle Marathon is an unregistered trade mark of the Complainant and that the Domain Name is identical or confusingly similar to that trade mark.
C. Rights or Legitimate Interests
The Respondent argues that he has rights and legitimate interests in respect of the Domain Name, based on the fact that he organizes polar circle marathons. On the face of it, that is a perfectly reasonable position to take. However, that is not the full story.
The Respondent registered the Domain Name knowing full well that Polar Circle Marathon was the name of an established polar marathon organized by the Complainant, a marathon which at that time had been in existence for about 9 years. From the evidence before the Panel it appears that at that time nobody else was using the term “polar circle marathon”. More specifically, it is plain from the circumstances surrounding the registration of the Domain Name (see Section 4 above) that the Respondent selected the name precisely because it was the Complainant’s race name. He adopted the Domain Name in retaliation for the Complainant’s adoption of the tagline “coolest marathon on earth”, which he believed to be unacceptably close to his tagline “World’s Coolest Marathon”. He also knew that, save for the absence of hyphens, the Domain Name was identical to the Complainant’s domain name.
While it is true that no evidence of any actual confusion has been produced, it is obvious to the Panel that there is a very real likelihood of confusion between the parties’ domain names, which in turn could lead to confusion between their respective events and the products/services associated with them. In so saying, the Panel accepts that the Complainant’s adoption of a slogan/tagline similar to that of the Respondent may well contribute to that confusion, but by then the prime source of confusion, the confusing similarity of the Domain Name to the Complainant’s trade mark and domain name, will already have triggered the confusion. It is inevitable that some people, aware of the Complainant’s Polar Circle Marathon, will believe the Domain Name to be in some way associated with that event and the organiser of that event.
Adopting the Domain Name under those circumstances cannot in the view of this Panel give to the Respondent any rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
By the same reasoning the Panel concludes that the Domain Name was registered and is being used in bad faith. The Respondent selected the Domain Name knowing it to be the Complainant’s trade mark (as indicated above, he regards his tagline “The World’s Coolest Marathon” to be a trade mark) and in retaliation for the Complainant having selected for itself what he believed to be a tagline too similar to his own. He then connected it to a website promoting his marathons. That confusion was likely must have been obvious to him. At the very least, he must have known that his actions would be likely to damage the Complainant’s business.
Whether the Respondent’s objective was to cause damage to the Complainant in retribution for the Complainant’s actions in relation to the tagline or whether it was to strengthen his negotiating position to force the Complainant to drop its tagline, either way what he has done is an abuse of the domain name system.
If the Respondent feels that the Complainant has in some way violated the Respondent’s rights, there are other ways of seeking redress. Taking the Complainant’s trade mark for use as a domain name in bad faith is not the right course.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <polarcirclemarathon.com> be transferred to the Complainant.
Dated: June 20, 2011