WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Color Run, LLC and TCR IP Holdings, LLC v. Hatcher Event Productions, LLC and Royce Hatcher

Case No. D2017-1684

1. The Parties

Complainants are The Color Run, LLC of Salt Lake City, Utah, United States of America (“United States”) and TCR IP Holdings, LLC of Salt Lake City, Utah, United States (jointly referred to as “Complainant”), represented by Stoel Rives LLP, United States.

Respondents are Hatcher Event Productions, LLC of Lafayette, Indiana, United States and Royce Hatcher of Westfield, Indiana, United States (jointly referred to as “Respondent”).

2. The Domain Names and Registrar

The disputed domain name <funcolorrun5k.com> is registered with Tucows Inc. and the disputed domain name <thefuncolorrun.com> is registered with Network Solutions, LLC (jointly referred to as the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2017. On August 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 13, 2017.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2017.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 1, 2017. 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

Complainant is owner (TCR IP Holdings, LLC) and licensee (The Color Run, LLC) of registrations for the word trademark and service mark THE COLOR RUN on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4,319,781, registration dated April 16, 2013, in international class (IC) 25, covering “Clothing for athletic use, namely, shirts, caps, hats, sweat shirts, sweat bands, head bands”, and; registration number 4,535,516, registration dated May 27, 2014, in IC 41, covering “Athletic and sporting event services”, as further specified. Complainant is owner of registration for a number of additional service marks incorporating the term “color” (e.g., COLOR 5K, COLOR DASH, COLOR RUNNER) on the Principal Register of the USPTO, and; is the owner/licensee of an International Registration for the word trademark THE COLOR RUN, registration number 1,185,006, registration dated August 11, 2013 in IC 25, designating a number of countries.

Complainant organizes and promotes “paint race events” in the United States and other countries. These events involve thousands of participants wearing white T-shirts that are showered with different colors of cornstarch paint at each kilometer mark, followed by post-race entertainment. Complainant currently offers more than 300 events in over 200 cities in more than 60 countries. Complainant has provided substantial evidence that its organized paint race events are well known in the United States, and these events are widely followed on various social media platforms. Complainant operates a commercial website at “www.thecolorrun.com” where it sells branded merchandise.

According to the Registrar’s verification, Respondent Hatcher Event Productions, LLC, is registrant of the disputed domain name <thefuncolorrun.com> (with creation date of the record of registration of February 15, 2017), and Respondent Royce Hatcher is registrant of the disputed domain name <funcolorrun5k.com> (and Respondent has been the registrant of that disputed domain name since March 6, 2017).

Respondent has used the disputed domain name <thefuncolorrun.com> to direct Internet users to a website that promotes paint race events that appear substantially similar to the events operated and promoted by Complainant, including with the use of photographs and designs that are substantially similar to those used on Complainant’s website. In addition, Respondent offers products through a Facebook page that are substantially similar to products offered by Complainant. Respondent Hatcher Event Productions LLC is owned by Respondent Royce Hatcher, who serves as its Chief Executive Officer (“CEO”), according to the Certificate of Organization filed with the Office of the Secretary of State of the State of Indiana, United States, provided with the Complaint. There is no evidence on the record of this proceeding that Respondent has used the disputed domain name <funcolorrun5k.com> in connection with an active website.

In July 2017, Complainant (through its counsel) transmitted cease-and-desist and transfer demands to Respondent by air courier and email, to which demands Respondent did not reply.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns rights in the trademark and service mark (hereinafter “trademark”) THE COLOR RUN as evidenced by registration at the USPTO and other jurisdictions, and by use in commerce in the United States and elsewhere. Complainant contends that its THE COLOR RUN trademark is well known. Complainant alleges rights in other COLOR-formative trademarks.

Complainant contends that the disputed domain names are confusingly similar to its THE COLOR RUN trademark because the <thefuncolorrun.com> disputed domain name incorporates the entirety of Complainant’s trademark, adding the term “fun”, and the disputed domain name <funcolorrun5kcom> incorporates the principal terms of Complainant’s trademark, adding the term “5k” which is commonly associated with racing events, including those sponsored by Complainant, as well as adding the term “fun”.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent registered the disputed domain names substantially following Complainant’s first use of its trademark and its registration of that trademark; (2) Respondent is organizing “knock-off paint race events at many different cities in the United States”; (3) Respondent does not own any trademarks or service marks that are reflected in the disputed domain names and does not have any rights in Complainant’s trademark, and; (4) Respondent is using the disputed domain names to trade on Complainant’s goodwill and hard-earned reputation and to trick unsuspecting paint race participants, event sponsors and others.

Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because: (1) Respondent was either aware of Complainant’s trademark when it registered the disputed domain names, or had constructive notice of that trademark; (2) Respondent’s registration of the disputed domain names expressly connected with Complainant’s well-known trademark and using some of those domain names to offer competing services strongly suggest bad faith, reflecting an intent to trade on Complainant’s goodwill in the trademark and cause confusion as to Complainant’s licensing, sponsoring or affiliation with Respondent and its paint race events.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. The express courier delivery service record shows successful delivery. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of rights in the trademark THE COLOR RUN based on use in commerce in the United States and as evidenced by registration on the Principal Register of the USPTO (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant has rights in the trademark THE COLOR RUN.

The disputed domain name <thefuncolorrun.com> incorporates Complainant’s THE COLOR RUN trademark in its entirety, adding the term “fun”. The addition of the adjective “fun” does not substantially distinguish the disputed domain name from Complainant’s trademark. The Panel determines that the disputed domain name <thefuncolorrun.com> is confusingly similar to Complainant’s THE COLOR RUN trademark.

The disputed domain name <funcolorrun5k.com> substitutes the adjective “fun” for the definite article “the” in Complainant’s trademark, and adds the term “5k”. The term “5k” is shorthand reference for 5 kilometers, a customary running race distance. The addition of the terms “fun” and “5k in the disputed domain name” with the dominant elements of Complainant’s THE COLOR RUN trademark does not substantially distinguish the disputed domain name from Complainant’s trademark. Internet users would be likely to associate the term “5k” with events organized and promoted by Complainant. The Panel determines that the disputed domain name <funcolorrun5k.com> is confusingly similar to Complainant’s THE COLOR RUN trademark from the standpoint of the Policy.

The Panel determines that Complainant has established rights in the THE COLOR RUN trademark, and that the disputed domain names are confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”. (Policy, paragraph 4(c)).

Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5.A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.

Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.

Respondent’s use of the disputed domain name <thefuncolorrun.com> in association with a website promoting events substantially similar to those organized by Complainant does not manifestly demonstrate fair use of the terms constituting Complainant’s trademark, particularly as Respondent’s website design appears to substantially emulate Complainant’s website design.

As there is no evidence of use of the disputed domain name <funcolorrun5k.com> by Respondent on the record of this proceeding, there is no evident basis for establishment of rights or legitimate interests by Respondent in that disputed domain name.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that each disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include that, “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”, or “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

Respondent has used the disputed domain name <thefuncolorrun.com> to direct Internet users to a website offering services substantially similar to those offered by Complainant. The design elements of Respondent’s website are substantially similar to those used on Complainant’s website. Given the well-known character of Complainant’s paint run events, and the relatively recent registration by Respondent of this disputed domain name, it is reasonable for the Panel to infer that Respondent was aware of Complainant and its trademark when it registered this disputed domain name, and that Respondent has deliberately attempted to take advantage of the goodwill associated with Complainant and its THE COLOR RUN trademark.

The Panel determines that Respondent registered and is using the disputed domain name <thefuncolorrun.com> in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

There is no evidence on the record of this proceeding that Respondent has used the disputed domain name <funcolorrun5k.com> in connection with an active website. However, in light of Respondent’s use of the disputed domain name <thefuncolorrun.com> to direct Internet users to services directly competitive with those of Complainant, and the very substantial similarity of the disputed domain names, the Panel draws an inference that Respondent registered the <funcolorrun5k.com> for the same or a substantially similar purpose as in registering <thefuncolorrun.com>. Respondent already through its actions has attempted to disrupt and divert the business of Complainant. The Panel considers that to allow Respondent the benefit of retaining the closely similar disputed domain name merely because it has yet to associate it with an active website would unnecessarily place a burden on Complainant and its business.

The Panel determines that Respondent registered and is using the disputed domain name <funcolorrun5k.com> in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <funcolorrun5k.com> and <thefuncolorrun.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: November 14, 2017