The Complainant is Marathon Tours, Inc. of Boston, Massachusetts, United States of America ("USA"), represented by Wilmer Cutler Pickering Hale and Dorr LLP, USA.
The Respondents are Steve Hibbs, The Official 7 Continents Marathon Club, and The Official 7 Continents Marathon, 1/2 Marathon & Ultra Marathon Club, Inc., all of Minneapolis, Minnesota, USA, all represented by Stephen ("Steve") Hibbs, Esq.
The disputed domain name <official7continentsmarathonclub.com> (the "Domain Name") is registered with Melbourne IT Ltd (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 14, 2014, 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 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2014. The Respondent requested an extension of time to respond, to which the Complainant did not object. The Center granted a two-week extension, and the Response was filed with the Center on June 6, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 16, 2014. 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.
The Complainant is a travel agency organized as a business corporation under the laws of the state of Massachusetts, USA, with its principal place of business in Boston, Massachusetts. According to the Complaint, the Complainant has offered travel services since 1979 catering to the needs of runners and their friends participating in marathon and half-marathon runs throughout the world. In 1995, the Complainant organized the first marathon to take place in Antarctica and has continued since then to organize Antarctic marathons.
The Complainant offers "VIP member benefits", including promotional travel offers, to runners who become members of its "Seven Continents Club." The Complainant states that it has used SEVEN CONTINENTS CLUB as a service mark since 1995 in connection with travel reservations, tours, and related activities. In October 2013, the Complainant filed an application to register SEVEN CONTINENTS CLUB as a trademark with the United States Patent and Trademark Office ("USPTO"); that application is pending at the time of this Decision.
The Complainant operates a website at "www.sevencontinentsclub.com", for which it first registered the domain name in February 2005, as well as a website for its related travel business at "www.marathontours.com". The portions of those websites available to the public do not appear to claim SEVEN CONTINENTS CLUB as a trademark, either with a "TM" symbol or in stated terms. The Complainant's Seven Continents Club website includes news about marathon events, member profiles, and "finishers lists" of those who have completed marathons or half-marathons; it also prominently links to the Complainant's commercial Marathon Tours & Travel website.
The Domain Name was created on March 4, 2013 and is registered to the Respondent Mr. Hibbs, a lawyer and marathon runner residing in Minneapolis, Minnesota, USA. The website associated with the Domain Name (the "Respondent's Website") is headed "The Official 7 Continents Marathon, 1/2 Marathon & Ultra Club™". A notice at the foot of each page claims copyright in the name of "The Official 7 Continents Marathon, 1/2 Marathon & Ultra Club, Inc.", showing the same postal address as listed for the Respondent in the Registrar's WhoIs database. An email from the Respondent Hibbs to the Center states that this entity is a Minnesota nonprofit corporation and is the owner of the Domain Name. The online business entities database operated by the Minnesota Secretary of State lists the name differently, as "The Official 7 Continents Marathon Club", an active nonprofit corporation in good standing, with the same postal address, and shows that it was first registered on March 11, 2013. The Response attaches a document dated March 4, 2013, transferring ownership of the Domain Name from Mr. Hibbs to the nonprofit corporation, referring to it as "The Official 7 Continents Marathon, 1/2 Marathon & Ultra Marathon Club, Inc.". The name of the club appears variously on the Respondent's website with and without the word "marathon" after "ultra". For purposes of this Decision, the "Respondent" refers collectively to Mr. Hibbs and the nonprofit runners' club that he incorporated and that now has legal rights to the Domain Name.
The "About Us" page of the Respondent's Website explains the Respondent's purpose as follows:
"The Official 7 Continents Marathon Club has been organized by a group of seasoned marathoners and 7 Continent finishers who have a desire to aggregate information about all 7 continent finishers. To date, there is no comprehensive site or listing of all 7 continent finishers. We hope to change that."
The same page on the Respondent's Website lists some 30 runners' "clubs", each using "7 Continents" in its name, each followed by the "TM" symbol signifying a claim to an unregistered trademark, and expressly "reserves all rights" to each of those names.
It appears from the Response and attached documents that the Respondent Mr. Hibbs has recently established legal entities for two of the associated runners' clubs, The Official 7 Continents Triathlon Club, Inc. (a Minnesota nonprofit corporation registered on May 31, 2014) and Triathlon Adventures, LLC (a Minnesota limited liability company registered in June 2014). In addition to the website associated with the Domain Name, the Respondent has also launched a similar (but largely undeveloped) website devoted to triathlon runners at "www.official7continentstriathlonclub.com".
The home page of the Respondent's Website explains the name "The Official 7 Continents Marathon, 1/2 Marathon & Ultra Club":
"We know there are other organizations out there who recognize runners for completing marathons on each of the 7 Continents. However, they are selective and incomplete lists. Further they are limited to only marathons. The mission of our organization is to compile the first all-inclusive 'Official' list of ALL 7 continent marathon, 1/2 marathon & ultra Marathon finishers. We are a non-profit corporation who wants to promote both education and running. It is our hope that as membership grows, we will be able to provide a scholarship fund to our members that will provide a scholarship to a member's child."
The Respondent's Website lists those runners who have completed marathons, half-marathons, or ultra-marathons (races longer than the traditional marathon distance of 42.195 kilometers or 26 miles and 385 yards) on all seven continents. Runners who have completed qualifying races on at least three continents may join the Respondent's club, for which rules and fees are listed on the website. The Respondent's Website offers its own club merchandise for sale, currently limited to stickers and patches with the club's logo, and has placeholders for website pages publishing news about club events and the proposed scholarship fund.
The record reflects a somewhat acrimonious history between the Complainant and the Respondent. The Respondent Mr. Hibbs participated in the 2008 Antarctica marathon organized by the Complainant, where he was openly critical of the Complainant's fees and practices in connection with both the travel arrangements and the race itself. Shortly after, in March 2008, Mr. Hibbs started his own competing travel business aimed at runners and their families, Marathon Adventures, LLC, a Minnesota limited liability company with a commercial website at "www.marathon-adventures.com". The Response states that this company has since organized tours for runners participating in races in China, Australia, Kenya, and other destinations. It is undisputed that this service competes in some instances with the runners' travel services offered by the Complainant. The Respondent Mr. Hibbs also organized a "White Continent" marathon in Antarctica in February 2013 (runners were ultimately evacuated because of foul weather) and, on returning to the USA, established the Respondent nonprofit runners' club as recounted above. The Complainant notified the Respondent that it would not recognize a runner's results from the Respondent's White Continent Marathon and made derogatory remarks about the Respondent's marathon rules in an interview reported in Runner's World magazine.
The Respondent's Website does not have a link to the commercial website operated by Marathon Adventures, LLC, the travel business owned by the Respondent Mr. Hibbs. The "About Us" page on the website outlines Mr. Hibbs' accomplishments as a marathon runner and mentions that he is "a licensed attorney, human resources professional and owner of a small travel company," which is not named. There also does not appear to be any third-party advertising on the Respondent's Website, and the website itself does not have an ecommerce payment function. Instead, it links to the "www.active.com" website, which registers individuals for membership in the Respondent's club and processes their membership payments, a service it provides for a variety of unrelated nonprofit event organizers. The Response explains that club membership fees are set at USD 18. Some of this is retained by "www.active.com" for handling club registration and payments, and the balance pays for producing and mailing the club's stickers and patches to members, as well as for website hosting fees. The Respondent reports 65 registered club members to date. The "Merchandise" page of the Respondent's website advertises only the club stickers and patches, although it states that "as membership grows" more products, such as hats and t-shirts, may be offered in the future.
In January 2014, the Complainant's representative sent the Respondent a cease-and-desist letter claiming trademark infringement and requesting the transfer of the Domain Name. In February 2014, a lawyer representing "The Official 7 Continents Marathon, 1/2 Marathon & Ultra Club, Inc." replied, saying that he needed more time to investigate the claim. It does not appear that the parties communicated further, and this UDRP proceeding followed.
The Complainant contends that the Domain Name is confusingly similar to its unregistered SEVEN CONTINENTS CLUB service mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent was aware or "should have been aware" of its "well established" service mark and infers that the Respondent registered and used the Domain Name in bad faith, in an effort to mislead Internet users for commercial gain.
The Respondent disputes the Complainant's claimed trademark rights and argues that the Domain Name is not confusingly similar in any event. The Respondent contends that it has a legitimate interest in making relevant use of the Domain Name based on its generic sense and the name of its nonprofit corporation.
The Respondent denies any intent to mislead Internet users for commercial gain. The Respondent argues that the Domain Name is descriptive and that the Domain Name and website are owned by a nonprofit corporation that uses them for essentially noncommercial purposes relevant to that description.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The Complainant asserts common law rights in SEVEN CONTINENTS CLUB as an unregistered service mark. The Policy does not require a registered mark to satisfy the first element of a UDRP complaint. However, when a complaint relies on an unregistered mark, especially a descriptive one comprised of relevant dictionary words (as is the case here), the consensus view of WIPO UDRP panelists is that there must be persuasive evidence that the mark has acquired distinctiveness in the marketplace as associated with a particular source of goods or services:
"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. … 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." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7 (citing illustrative decisions).
The Complaint states, without documentary or affidavit support, that the Complainant has been using SEVEN CONTINENTS CLUB as a service mark since "as early as September 1995". The Complaint characterizes the mark as "well known", although there is no evidence in the record regarding "length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition." The market for marathon travel services may be a relatively niche one, but the Complainant has not furnished evidence about the size of that market or of its own presence in that market. This might be indicated, for example, by the number of unique website visitors, registered club members, advertising scope and spend, and media stories. The Complaint lacks such evidence.
It is undisputed that the Complainant operates a website associated with the domain name <sevencontinentsclub.com>, which corresponds to the asserted mark. This domain name was created in February 2005, according to the registrar's WhoIs database. The Internet Archive's Wayback Machine has no screenshots of the Complainant's website until February 2009. Apart from such archived screenshots of the website available through the Wayback Machine, there is no evidence before the Panel concerning the historical use of the purported mark. The Complainant claims first commercial use of the mark in 1995 in the USPTO trademark applications discussed below. But that claim is not examined, and there is no corroborating evidence in the record of the current proceeding. Moreover, the Complainant's website, even at the time of this decision, does not signal any claim to trademark rights in the name.
The Complainant refers to its pending application before the USPTO to register SEVEN CONTINENTS CLUB as a trademark. The USPTO database shows that the Complainant first applied for registration of the mark in 2006 and then abandoned that application after the USPTO trademark examiner issued a non-final Office Action initially refusing it. The Complainant filed the current application for the same mark in October 2013. The USPTO examiner issued a non-final Office Action in January 2014, refusing the application on the ground that the applied-for mark is "merely descriptive" of the applicant's goods or services. Thus, it does not appear that the USPTO is persuaded, at this point, that the descriptive name of the Complainant's membership program has acquired a secondary meaning associated with the Complainant.
The Panel finds that there is insufficient evidence in the record in this proceeding to conclude that the Complainant has demonstrated enforceable rights in SEVEN CONTINENTS CLUB as an unregistered service mark. Thus, the Complaint fails on this first element. However, for the parties' possible benefit in contemplating any successive UDRP proceedings and more generally, the Panel notes its conclusions below on each of the other elements of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, the Respondent claims an interest in using the descriptive Domain Name for a website with relevant content about runners who participate in races on all seven continents. This can be a legitimate interest for purposes of the second element of the Complaint, so long as the evidence does not suggest that the Domain Name was chosen for its trademark rather than generic value. See WIPO Overview 2.0, paragraph 2.2:
"Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)."
The Respondent does offer club-related mementos for sale on the Respondent's website, which was established before this dispute arose. The Respondent's Website is otherwise noncommercial, and in any case it does not evince an intent to "misleadingly divert consumers or to tarnish the trademark or service mark at issue" (assuming that such a mark could be established); the Domain Name is owned by a nonprofit corporation. The Respondent's Website does not sell travel services in competition with the Complainant's commercial activity. It publishes news about marathons and similar races and attempts to compile "official" listings of runners who have finished various races around the world. It is not used for paid advertising, and it does not link to, or even mention, the commercial travel website associated with the Respondent Mr. Hibbs. The only "merchandise" advertised on the website consists of stickers and patches with the club's logo, which are also shipped to new members. The Response states that the Respondent uses the proceeds of membership fees and merchandise sales to support the club's website and purposes, and that the proceeds have not yet covered those costs.
The Panel finds that the Respondent has sufficiently rebutted the Complainant's allegations as to the Respondent's rights or legitimate interests in using of a descriptive Domain Name for substantial, noncommercial purposes, with incidental sales of memberships and mementos displaying the club's logo. The Panel concludes, therefore, that the Complainant has failed to establish the second element of the Complaint.
The Policy's nonexhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Complainant asserts that the Respondent "was aware or should have been aware of the valuable goodwill and reputation represented and symbolized by the SEVEN CONTINENTS CLUB service mark" when the Domain Name was registered in March 2013. It is undisputed that the Respondent was aware of the Complainant Marathon Tours, Inc. by that time, the Respondent having participated, for example, in the Complainant's Antarctic marathon event in 2008. The Respondent also does not deny awareness of the Complainant's "Seven Continents Club", but the Respondent denies knowing that this name was used as a service mark or that it could have been. This is prima facie plausible, as the name is descriptive (a conclusion in which the USPTO concurs) and the Complainant has not produced evidence that it even claimed the name publicly as a mark at the time the Domain Name was registered.
The heart of the Complainant's argument for bad faith is the assumption that the Respondent must have been targeting the Complainant's putative service mark for financial gain or to generally disrupt the Complainant's activities:
"Accordingly, because Respondent has no rights or legitimate interest in the use of the disputed domain name, it only follows that the disputed domain name was registered for the illegitimate purpose of attracting Internet users to Respondent's site for financial gain, and which, upon information and belief, creates a likelihood of confusion. Respondent's actions are intentional, willful, and in bad faith, and, upon information and belief, were committed with full knowledge of the ownership by Complainant of SEVEN CONTINENTS CLUB service mark and Complainant's exclusive rights to use and license such mark.
"Respondent's use of the disputed domain name creates a likelihood of confusion, which, upon information and belief, Respondent uses to attract for financial gain Internet users to Respondent's web site and its services that may be in competition to Complainant's business."
The Complaint repeatedly makes such assertions "upon information and belief". This is not helpful or persuasive in the context of a UDRP proceeding. The Complaint relies inappropriately on a formula that is common in "notice pleading" at the commencement of legal actions in the USA. It is designed only to put opposing parties on notice of the claims and defenses to be asserted and tested in the course of the proceeding. See United States Federal Rules of Civil Procedure, Rules 7-10, and the Wikipedia article on "Pleading (United States)". American civil litigation typically continues with the discovery of documents and witnesses, depositions under oath with opportunities for cross-examination, motions decided by the judge or magistrate, and ultimately a settlement or trial. In this process, the parties and the judge or jury have the opportunity to test those assertions initially advanced "on information and belief" and can assess the credibility of the relevant documents, physical evidence, and witnesses.
UDRP dispute resolution is very different. It has a limited scope: to determine quickly, on the basis of submitted documentary evidence, whether a contested domain name should be retained, transferred, or cancelled. This is done without prejudice to any subsequent judicial proceedings that might more fully explore the relationships and intentions of the parties. In the UDRP proceeding, there is normally only a single pleading on each side, a complaint and a response, with strict time limits and page limits for each. There is normally no discovery procedure and no opportunity to present and examine witnesses in person. The complaint represents the only assured opportunity for the complainant to establish the three elements of its claim and meet its burden of persuasion on each. Thus, it is insufficient to make assertions "on information and belief" in a UDRP complaint. Instead, the complainant must cite the evidence submitted simultaneously to the UDRP panel and argue reasonable inferences therefrom. Only in exceptional cases will there be further opportunities to submit evidence or challenge the opposing party's evidence or arguments. See Rules, paragraphs 3, 12, 13, and 15.
Examining the evidence actually submitted by the parties in this proceeding, and their respective websites, the Panel concludes that the Complainant has not met its burden of persuasion on the issue of bad faith, for these reasons:
- Both parties use descriptive terms for their respective runners' "clubs", domain names, and associated websites. These descriptive terms are relevant to the activities of the parties, which are both concerned with marathons and similar races on all of the Earth's seven continents.
- The Complainant has not established a secondary meaning for "Seven Continents Club" in a relevant market that is exclusively associated with the Complainant's commercial travel business. The USPTO recently concluded similarly that the claimed mark is "merely descriptive". The Complainant has not established on this record that it possessed an unregistered but enforceable mark at the time the Respondent registered the Domain Name in March 2013. Therefore, the Complainant's argument that the Respondent must have targeted the claimed mark for its commercial value is unpersuasive on the limited case file before the Panel.
- The Respondent has a prima facie legitimate interest in using relevant, descriptive terms for its Domain Name associated with the descriptive meaning of those terms. The Complainant has not established that the Domain Name was more likely selected to exploit the value of the Complainant's claimed mark. Moreover, the Respondent established a nonprofit corporation with a corresponding name nearly a year before this dispute arose. The available evidence indicates that the Domain Name has since been used for the Respondent's nonprofit purposes, documenting and celebrating the accomplishments of adventurous marathon runners. The website associated with the Domain Name is "commercial" only to the extent of soliciting club membership for a modest fee and selling club-related mementos seemingly only as a token cost recovery effort. It does not feature third-party advertising, and it does not promote the competing travel business owned by the Respondent Mr. Hibbs. The Panel cannot agree, then, with the Complainant's conclusion that the Respondent has no rights or legitimate interests in the Domain Name and meant to use it only to engender confusion for commercial gain.
The Panel concludes that the third element of the Complaint, bad faith, has not been established.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: June 30, 2014