WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Albatros Travel v. Terry Majamaki, Imaginary Idea
Case No. D2014-1438
1. The Parties
The Complainant is Albatros Travel of Copenhagen, Denmark, represented by Horten Advokatpartnerselskab, Denmark.
The Respondent is Terry Majamaki, Imaginary Idea of Valencia, California, “US”, represented by Western IP Law Group, US.
2. The Domain Name and Registrar
The disputed domain name <greatwallchinamarathon.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2014. On August 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on August 21, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On August 22, 2014, the Respondent sent an email to the Complainant (detailed further below) copying the Center, seeking to discuss the matter with the Complainant and claiming that earlier replies to the Complainant from its web administrator had been sent without its approval. The Center invited the Complainant in its discretion to submit a request for suspension, to allow consideration of Party settlement. In a reply on August 28, 2014, the Complainant’s representative requested that the Complaint be maintained. The Complainant stated that it is not correct that the former webpage administrator had not acted on the Respondent’s behalf, because the Complainant had received an email from that administrator stating that it had forwarded the Complainant’s emails to the Respondent.
On August 29, 2014, the Center invited the Complainant to submit an amendment to the Complaint, based on the registration details confirmed by the Registrar which identified the Respondent as the registrant of the disputed domain name. The Complainant filed an amendment to the Complaint on September 2, 2014. In response to that amendment, the Respondent sent an email to the Complainant stating that “I’m forwarding this [the amended Complaint] to Katie who is the business owner for the domain. Please let us know what needs to be done to resolve this matter promptly.”
On September 3, 2014, Tucows sent an email to the Center to clarify that “Contact Privacy Inc.” (who had been named in the original Complaint) had been removed as a respondent in this case. The Center noted that the respondent identity was a matter for final determination by the Panel.
The Center verified that the Complaint with the amendment 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 proceeding commenced on September 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2014. The Response was filed with the Center on September 23, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on October 2, 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.
On October 18, 2014, the Panel issued an order for further information from the parties, in accordance with paragraphs 10 and 12 of the Rules. The order noted that the Respondent had provided evidence of a US trademark registration for THE GREAT WALL MARATHON and that this mark was used on the Complainant’s website. The Complaint did not mention this mark in its original Complaint. The Panel Order sought information from the Complainant about its relationship with this mark, and allowed for the Respondent to file a reply to any further information submitted by the Complainant. The Complainant filed further information on October 23, 2014 in response to that Panel Order, which indicated that it did have rights in that mark. The Complainant’s further information provided no explanation for omitting this evidence in the original Complaint. The Respondent did not file further information in reply.
4. Factual Background
The Complainant is a Danish travel company, which it says is known for unique and adventurous tours. The Complainant was founded in 1985.
The Complainant says it uses the mark GREAT WALL MARATHON for travel services in connection with arranging and conducting a marathon race. The race takes place in China once a year in May. It is an event which combines running with exploring China. The Complainant says that it has used its mark since 1999 in that connection. The Complainant has also registered associated domain names: <great-wall-marathon.com> which was registered in August, 1998 and <greatwallmarathon.com> registered in July 2009. The Complainant uses these domain names to promote the marathon race and offer related travel services.
The Complainant provides evidence of the website at the disputed domain name, which stated that it is related to the same type of event as that promoted by the Complainant. Among other things, the Respondent’s website states that “The official Great Wall of China Marathon is the first and longest running international marathon on the Great Wall of China.”
In response to the filing of the Complaint, the Respondent sent an email to the Complainant on August 22, 2014. That email stated that:
“My name is Katie, I am a volunteer for The Great Wall of China Marathon. We are just now seeing your emails from our former web administrator…This has become a surprise to us and clearly the former webpage administrator has not acted on our behalf in this matter. This website is owned by The Great Wall of China Marathon, a Chinese owned and government sponsored company, that is held on May 1st since 2000 in the Jinshanling Great Wall area. This marathon has been known to your clients for many years and has not been an issue until now.”
The email sought a discussion with the Complaint, and claims that the Respondent informs runners of the differences between the 2 marathons, and that there are various marathons currently on the Great Wall of China. The Respondent says that the replies to the Complainant in April were sent from its web administrator, who has hosted and designed the content of its website. The Respondent says that its web administrator responded to the Complainant without approval and did not forward any of the Complainant’s emails until August 21, 2014.
In a further email to the Center on September 3, 2014, the Respondent stated that “Terry Majamaki” is not the owner of the disputed domain name, and was only listed as a registrant because he was the web designer and provided the hosting service to the Respondent. The Respondent says that Mr. Majamaki’s company, “Imaginary Idea”, was actually fired on July 1, 2014, and that it had refused to return the domain name registration to the Respondent. The Respondent says that “Great Wall of China Marathon GWCM are the legal owners of the disputed domain name”.
According to the registration details for the disputed domain name (as confirmed by the Registrar), the disputed domain name was first created in May 2012. The disputed domain name is registered in the name of “Terry Majamaki”.
5. Parties’ Contentions
The Complainant has a mark for THE GREAT WALL MARATHON, which is registered with the United States Patent and Trademark Office (“USPTO”) in the name of its founder and CEO. The Complainant also appears to rely on having unregistered rights (and the initial Complaint provided no evidence of its registered mark). In this connection, the Complainant says that the Danish Trademarks Act provides that a trademark right may be established by either use or registration. The Complainant argues that it has acquired such rights through use of the mark since 1999. As evidence, the Complainant provides printouts of its website (accessed in August 2014) which features the results of the marathon for each of the years 1999, 2002, 2011 and 2014. The Complainant also attaches a declaration from the Danish travel association stating that the Complainant’s mark has been used since 1999 by the Complainant in connection with the marathon.
The Complainant became aware that the Respondent was using the disputed domain name by communication with the Complainant’s customers who were confused about different online sources providing different dates for the race. The Complaint attached copies of those communications.
The Complainant says that it tried to resolve this matter directly with the Respondent by sending an email in March 2014. The Complainant received a response stating that the Respondent used a privacy service and that the Complainant’s email had been forwarded to the Respondent. (It is not apparent from the Complaint that it received any response to its email.)
The Complainant provides evidence that its representative then sent an email to the Respondent on April 9, 2014, in which it put the Respondent on notice of its claimed rights, and asked whether the Respondent would be prepared to voluntarily transfer the disputed domain name to the Complainant. The Respondent replied the next day, in the name of “Website Administrator”, stating that (among other things):
“This domain is tied to The Great Wall of China Marathon event that takes place on May 1st. This May 1st event has been occurring for several years as a business and has no intention of stopping.
We understand that there is some confusion between your clients and our event, they both occur in May, but the dates are clearly marked on both ours and your sites. We do receive some questions regarding the two events, we clearly answer that they are separate events run by separate organizations. Thus allowing the enquiring person to make their own choice on which even they wish to attend.”
The Complainant’s representative sent a further email to the Respondent asking for a reply by April 23, 2014, and another email in July 2014 stating that it would file a complaint under the Policy.
The holder of the registration of the disputed domain name (Mr. Majamaki) did not submit a formal Response in this case. The Response was instead filed in the name of “Great Wall of China Marathon”, with an address in Toronto, Canada. (For the sake of convenience, unless indicated otherwise, the Panel has referred to this entity as “the Respondent” in the remainder of this decision.)
The Response says that the Complainant has no rights to the use of the geographically descriptive expression “Great Wall of China Marathon”. The Respondent refers to a variety of past decisions under the Policy for support. The Respondent says that the Complainant has filed the Complaint alleging rights in a word mark which it has expressly disclaimed in a prior trademark application. In this connection, the Respondent provides evidence of a registration with the USPTO, for a stylized mark for “THE GREAT WALL MARATHON”. The mark was filed in 2006 in the name of Soren Rasmussen of Denmark. The mark indicated in that registration record also appears on the Complainant’s current website, screenshots of which were attached to the Complaint.
The Respondent also says that the Complainant’s claim is barred under the doctrine of laches.
The Respondent says that it has hosted a marathon at the Great Wall of China legitimately for more than a decade and that its use of the term “Great Wall Marathon” predates the Complainant’s use. The Respondent says that the Complainant’s website was under the control of the Respondent and used by the Respondent for seven years before the Complainant “registered it after the Respondent accidentally failed to renew it – forcing the Respondent to register the Disputed Domain underlying this proceeding”. The Respondent provides evidence that the disputed domain name was formerly registered to “Culturestone” in 2005, which the Respondent says is evidence that it was the former registrant of the disputed domain name.
The Respondent provides a screenshot of its website which features a background picture of the Great Wall, overlaid with the words “Great Wall China Marathon”. At the bottom of that page, appears the statement “The Great Wall of China Marathon website is temporarily closed. Please check back later for race updates.” The reason for its site being “temporarily closed” is not explained in the Response.
The Respondent says that many companies host marathons at the Great Wall, and that the Respondent and the Complainant are two of at least four parties running commercial marathons annually on the Great Wall and identifying their events as Great Wall of China Marathons.
The Respondent says that the only registered trademark reflecting the disputed domain name before the USPTO was for a registration not in the name of the Complainant. This registration was for a stylized mark and disclaimed rights in the phrase “THE GREAT WALL MARATHON” apart from the mark as shown.
The Respondent denies that it registered and has used the disputed domain name in bad faith for similar reasons to those set out above.
The Respondent claims that the Complaint is a case of reverse domain name hijacking.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after a consideration of two procedural issues raised by the Respondent: these concern the issue of laches, and the identity of the proper Respondent.
A. Delay in bringing the Complaint (Laches)
The Respondent claims, with little supporting argument or evidence, that the Complaint is barred by the doctrine of laches. As far as the Panel can tell, the disputed domain name was created in 2012. There was little evidence in the case file that the disputed domain name was registered earlier. The Respondent provides little evidence to support a finding that the Complainant was aware of the Respondent’s conduct at some early point after this registration.
The Panel does not consider that the time between the 2012 creation date of the disputed domain name and the filing of the Complaint in 2014 presents any notable delay. Even if it did, a delay in bringing a complaint does not provide a defense per se under the Policy. Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma, WIPO Case No. D2010‑2256.
B. Identity of the proper Respondent
A second procedural issue relates to the identity of the proper Respondent. The disputed domain name is registered in the name of “Terry Majamaki” (as the registrant name) and “Imaginary Idea” as the registrant organization, with an address in California, US. The case file also includes emails to the Center from Mr. Majamaki, and it is evident that this person is aware of the Complaint. The Response however was not filed by Mr. Majamaki. It was filed by “Great Wall of China Marathon” which, according to the Response, has its address in Canada (although this may be a transcription mistake – the Response lists the address of the Respondent as identical to Contact Privacy, Inc., which was listed as the Respondent in the original Complaint). The Respondent (in an email to the Complainant included in the case file) claims that this entity is a Chinese owned and government-sponsored company, although it does not provide any supporting evidence in the Response for this claim. As noted above, for the sake of convenience, this decision refers to that entity as “the Respondent” in this decision.
The Respondent claims that Mr. Majamaki was, at one time, its website administrator and has since been fired by the Respondent. The Respondent appears to claim that it is the beneficial owner of the disputed domain name and the case file includes a copy of an email from Mr. Majamaki to the Respondent, notifying the Respondent that the Complaint had been filed. In communications to the Center, the Respondent requested that it be named as the Respondent instead of Mr. Majamaki.
Paragraph 1 of the Rules provides (in the definitions) that a respondent is the holder of the domain name against whom the Complaint is initiated. The Complaint was not initiated against “Great Wall of China Marathon” and it is evident that this entity is not the registrant. In these circumstances, the Panel does not consider that the Respondent (Great Wall of China Marathon) can properly be named exclusively as the formal Respondent, as it is not the named “holder” of the disputed domain name.
The Panel’s responsibility is to render a decision, which may include a decision to order the transfer of a disputed domain name from the named registrant (a respondent) to a complainant. Because such a decision involves the respective rights of parties, and to ensure fairness between the parties as required by the Rules, the Panel considers that it should be cautious in relying on evidence submitted by a party which is not explicitly authorized by the holder of a domain name or does not have an obvious connection with that holder. In this case, there is evidence of communications between Mr. Majamaki, the registrant, and the Center, and evidence that Mr. Majamaki is aware of the filing of the Complaint. In an email on September 14, 2014, Mr. Majamaki also indicated to the Center (in response to a notification of change in registrant information) that “I’m forwarding this on to Katie [Enquist] who is the business owner for the domain”. By this email, and corroborating statements from the Respondent, the Panel has inferred that Mr. Majamaki accepts that the Respondent is the beneficial holder of the domain name. Accordingly, the Panel considers that it can treat “Great Wall of China Marathon” as the beneficial Respondent. Mr. Majamaki has been notified of this proceeding and has, as such, had the opportunity to clarify the nature of his relationship with “Great Wall of China Marathon”, but has provided no further information.
The disputed domain name was also previously registered to a privacy service, ‘Contact Privacy Inc.’ which also sought to clarify whether it is properly a named party in these proceedings. As the amended Complaint removed Contact Privacy as a named Respondent, the Panel considers it appropriate to treat the Respondent as the entity (Terry Majamaki) named in the amended Complaint.
C. Identical or Confusingly Similar
The Complainant has established (albeit, only in response to the Panel Order of October 18, 2014) that it has rights in a registered mark for THE GREAT WALL MARATHON. The Panel considers that the disputed domain name is confusingly similar to that mark.
Whether a mark is confusingly similar to a domain name is to be generally judged against the dominant textual elements of the mark. See, e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031. The Respondent claims that the Complainant does not have rights in the text of that mark, standing alone. But this claim is not relevant under the first element of the Policy. The Complainant has rights in its trademark. It is entitled to rely on them.
As it appears in the Complainant’s mark, the dominant textual element is GREAT WALL MARATHON. Visually as it appears in the mark, the word “the” is a minor element and, as such, the Panel considers that it can be generally disregarded for the purpose of comparison. It is also well established under the Policy that the domain name extension may also be typically disregarded. Without these elements, the only difference between the Complainant’s mark and the disputed domain name is the inclusion of the country name “China” in the disputed domain name. The Panel does not consider that this element is sufficient to avoid confusing similarity. It has an obvious geographic connotation that is directly related to the subject matter of the disputed domain name. The dominant textual elements of the Complainant’s mark are otherwise wholly incorporated.
D. Rights or Legitimate Interests
The general consensus of UDRP panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name.
The Complainant makes a bare argument that the Respondent lacks rights or legitimates interests in the disputed domain name. The Complainant’s case is that the Complainant was the first to conduct races on the Great Wall in 1999, that the Respondent registered the disputed domain name to misleadingly divert Internet users and has not been authorized by the Complainant.
The Respondent contests the first two of these claims. The Respondent says that its use of the term “Great Wall Marathon” predates the Complainant’s use, although it provides no direct evidence for this claim. The Respondent otherwise provides evidence (of the front page of its website, and photographs of medals it claims to use in connection with its races) that it offers similar services to the Complainant.
Neither party presented strong evidence to support its case. But the Panel is obligated to do the best it can with the evidence submitted by the Parties. On balance, the Panel considers that the Complainant has not made out its case. This is for the following reasons.
Firstly, the Complainant’s claimed mark is obviously descriptive of the services it offers. This may make it more difficult for the Complainant to establish that the mark has become a distinctive identifier associated with its services. References to the term “Great Wall Marathon” on the Complainant’s own website appear to be largely descriptive of the service it operates.
Secondly, the Respondent provides evidence of third party use of the words “great wall” and “marathon” for the same purpose. For example, the Respondent refers to a website at <greatwall-marathon.com>. That website reverts to a website in German, advertising a marathon on the Great Wall of China in September.
Thirdly, and no doubt because of their descriptive associations, the Complainant’s own trademark registration disclaims rights to the term “The Great Wall Marathon”, except as described in the stylized mark. The failure of the Complainant to refer to it in the Complaint may suggest that the Complainant had considered that such evidence would not support its case. The Complainant gave no explanation for avoiding any mention of its registered mark in its initial Complaint. The Panel can only infer that the Complainant was not confident that its registered mark would help its case.
Fourthly, while the Respondent provided limited direct evidence of its business, it provided enough to put the Complainant’s prima facie case in doubt. This includes evidence of the Respondent’s own website associated with the services it offers and photographs of medals it claims to use in connection with its races. Further, the generally descriptive nature of the term “Great Wall China Marathon” gives the Respondent a colorable argument that it is using that term in connection with its own offering of similar services.
Both parties made competing claims that each began organizing races on the Great Wall earlier than the other. The Complainant says that “the Respondent started to arrange races much later than the Complainant”. It is notable that this statement implies that the Complainant is at least aware that the Respondent does, in fact, organize races on the Great Wall. Whether or not the Complainant provided similar services earlier than the Respondent does not, by itself, affect the issue of whether the Respondent has rights or legitimate interests. This is because there is no compelling evidence to suggest that it was the Complainant’s prior use of its mark which motivated the Respondent’s registration. Rather, the evidence is more suggestive that the Respondent registered the disputed domain name because of its obvious descriptive connotations.
Given the limited evidence presented in this case, the descriptive nature of the terms included in the disputed domain name, and the lack of the Complainant’s denial that the Respondent is arranging marathons on the Great Wall, the Panel is not able to make a positive finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
This does not mean that the Respondent presented a strong argument in reply to the Complaint. Notably, the Respondent did not explain the reason for its website being “temporarily closed”. Apart from some photographs of medals it claims are used in connection with its event, the Respondent provided no other evidence of its claimed business, including any further evidence of its website, evidence of those which might have used its services, or evidence of its claimed government association. Despite this, it is for the Complainant to provide a sufficiently compelling case, and the Panel finds that it has not done so, for the reasons set out above.
E. Registered and Used in Bad Faith
For somewhat similar reasons to those outlined above, the Panel considers there is also insufficient evidence for a finding that the Respondent registered and has used the disputed domain name in bad faith.
The evidence suggests, and the Respondent in effect admits, that it was aware of the Complainant when it registered the disputed domain name. But a finding of bad faith requires that a respondent was seeking to unfairly exploit a trademark in which a complainant has rights. The Respondent has an arguable legitimate interest in the descriptive term, and the evidence does not clearly suggest that the Respondent was motivated by an intention to exploit the value of the Complainant’s mark per se. As such, there is insufficient basis for a finding of bad faith.
F. Reverse Domain Name Hijacking
The Respondent argues that the Complaint constitutes reverse domain name hijacking against the Respondent. “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.” See Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.
The Panel declines to make such a finding. The Complainant appears to have a founded grievance against the Respondent. The Respondent did not provide strong evidence of many of the claims it makes against the Complainant. The limitations of the evidence mean it is difficult to give a sufficiently conclusive interpretation of the facts to support a finding of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Date: October 29, 2014