WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Frog Events, LLC v. Maximum Adventure Pty Ltd.
Case No. DAU2012-0002
1. The Parties
The Complainant is Red Frog Events, LLC of Chicago, Illinois, United States of America, represented by Fisher Adams Kelly, Patent and Trademark Attorneys, Australia.
The Respondent is Maximum Adventure Pty Ltd. of Telopea, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <warriordash.com.au> is registered with TPP Domains Pty Ltd. dba TPP. Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2012. On February 3, 2012, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the disputed domain name. On February 9, 2012, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 13, 2012, the Center sent an email communication to the parties inviting the Complainant to replace one of its candidates for three-member Panel, inasmuch as under the Rules, paragraph 6(d), the candidates may be drawn from any auDA approved Provider’s list of panelists. On February 14, 2012, the Center received the amendment to the Complaint.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2012.
The Center appointed John Swinson, Dan Hunter and William P. Knight as the panelists in this matter on May 7, 2012. 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 an event planning company. Since 2009, the Complainant has developed and organized amateur obstacle races which it calls “Warrior Dash” events. These events have been held in the United States and Canada. These events are (as described on the Complainant’s website) a “mud-crawling, fire-leaping, extreme run from hell.” Participants in Warrior Dash events complete a five (5) kilometer run while navigating various obstacles, including crawling through a mud pit and jumping over fire.
In early 2010, the Complainant sought to expand its business overseas and conduct a Warrior Dash event in Australia. In February 2010, the Complainant approached the Respondent with respect to co-operating in the organization of a Warrior Dash event in Australia. These discussions did not come to fruition and the Complainant continued planning for the Australian event. In mid-2010, the date and location of the first Australian event were finalized.
The Complainant promoted the proposed Warrior Dash event in Australia, including advertising and marketing of the event. For instance, the Complainant promoted the Australian event in the following online and print publications: Runner’s World Australia (August 2010 and December 2010); Map My Fitness (November 2010); Time Out magazine (December 2010); Live Guide (January 2011). The Complainant also promoted and offered registration of the Australian event on the Australian deal website “www.scoupon.com”, as well as its own website at “www.warriordash.com”.
The first of these events organized by the Complainant was held in picturesque Glenworth Valley in the hinterland region of the New South Wales Central Coast, on February 12, 2011. A further such event was conducted by the Complainant in February 11, 2012, on this occasion attracting significant sponsors, including Reebok.
On February 16, 2011, the Complainant lodged an application for registration of the trade mark WARRIOR DASH, consisting of the words featuring prominently with what might be called a Viking helmet and paint splashes, under the Trade Marks Act 1995 (Cth), in respect of arranging, organizing, conducting, and hosting social entertainment events in Class 41. This application, at the date of the Complaint, had been accepted and his since proceeded to registration.
According to the Registrar’s verification response, the disputed domain name was registered by the Respondent on August 20, 2010.
5. Parties’ Contentions
The Complainant asserts, amongst other matters, that:
1. whilst the sign WARRIOR DASH had not been registered as a trade mark at the date of the Complaint, the Complainant had acquired a substantial reputation and goodwill in respect of it, arising from its use, so that it had become a trade mark for the purposes of the Policy as at the date of the Complaint;
2. the disputed domain name is confusingly similar to the WARRIOR DASH trade mark in that it is identical to the prominent verbal component of the trade mark;
3. the Respondent has no connection of any kind to the disputed domain name and is not making any legitimate or fair use of the disputed domain name, and it clear from the fact of the Complaint and the evidence given that the trade mark WARRIOR DASH has not been licensed by the Complainant to the Respondent;
4. the Respondent’s registration of the disputed domain name was in bad faith and its subsequent use of the disputed domain has also been in bad faith.
The Complainant states that, in correspondence regarding the disputed domain name, after it had been discovered by the Complainant, the Respondent stated that it had registered the disputed domain name because it objected to the Complainant conducting its Warrior Dash event at the same venue as the Respondent’s own “Mud Run” obstacle race.
The Complainant further states that, following this exchange, the disputed domain name was redirected by the Respondent to a website devoted to another competing event, called the “Tough Bloke Challenge”.
At the date of this determination, the disputed domain name is not being used at all.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the disputed domain name from the Respondent:
1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2 The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name was registered or is subsequently being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that, at the date of the Complaint, the Complainant had developed a substantial reputation in the mark WARRIOR DASH, even in such a short time, by virtue of the apparent success of the events it organized and marketed under its mark. The Panel may also take into account the fact that the mark is now registered in Australia in the name of the Complainant. It is self-evident that the disputed domain name is confusingly similar to the Complainant’s WARRIOR DASH trade mark.
The first element of the Policy is satisfied.
B. Rights or Legitimate Interests
It is not disputed that the Respondent registered the disputed name solely because it objected to the Complainant conducting its Warrior Dash event at the same venue as the Respondent’s “Mud Run” event and after discussions between the parties regarding co-operation had ended.
Section 2.3 of the Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (2008-06) issued by .au Domain Administration Limited provides that, where a person applies for a domain name that does not exactly match the applicant’s name and is not an abbreviation or acronym of the applicant’s name, that person must show a “close and substantial connection” to the domain name sought by it. To meet that criterion, section 10.5 of the Guidelines prescribes that the categories of “close and substantial connection” for a .com.au domain name are as follows:
(a) a product that the registrant manufactures or sells; or
(b) a service that the registrant provides; or
(c) an event that the registrant organises or sponsors; or
(d) an activity that the registrant facilitates, teaches or trains; or
(e) a venue that the registrant operates; or
(f) a profession that the registrant's employees practice.
The Complainant has alleged that none of these criteria apply to the Respondent. The Respondent has had ample opportunity to show that any of these may apply to it but has failed to do so. The only apparent reason for the Respondent registering and maintaining the disputed domain name, in its own words and uncontradicted by it, is some form of commercial grievance against the Complainant.
The Panel accordingly concludes that the Respondent does not have a right or legitimate interest in the disputed domain name.
C. Registered or Used in Bad Faith
In this case, the considerations relevant to the determination of the rights or legitimate interests of the Respondent in the disputed domain name are equally relevant to the issue of registration or use in bad faith, in the sense that those expressions are used in the Policy.
It will be apparent from the finding in respect of the determination of the rights or legitimate interests of the Respondent in the disputed domain name that the Respondent, in this Panel’s view, must have lied in its application for the disputed domain name in stating that it had a “close and substantial connection” to the disputed domain name in the prescribed sense. This is grounds enough to establish the bad faith requirement.
The Complainant also argues that the use of the disputed domain name as some form of expression of grievance or bargaining chip by the Respondent and the use of it to redirect uses of the Internet to the Respondent’s competing “Tough Bloke Challenge” equally demonstrate bad faith in subsequent use, in the terms of the Policy, with which the Panel also agrees. As was observed in Bank of Alabama v. Sumith Rodrigo & Co., WIPO Case No. D2004-0912 (December 16, 2004) , “a registrant cannot use a domain name to “leverage” a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar.” The Respondent’s subsequent cessation of such use does not alter this conclusion, as it has already demonstrated its bad faith and can return to such behaviour at any time, unless the disputed domain name is cancelled or transferred under the Policy.
In these circumstances, the Panel concludes that the disputed domain name <warriordash.com.au> was registered in bad faith and, although it is not necessary to do so, that it has also subsequently been used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <warriordash.com.au> be transferred to the Complainant.
William P. Knight
Dated: May 11, 2012