Source Lake Holding
Corporation v.
Claim Number: FA0706001015782
PARTIES
Complainant is Source Lake Holding Corporation (“Complainant”), represented by Susan
M. Lankenau, of Magavern Magavern Grimm LLP, 1100 Rand
Building, 14 Lafayette Square, Buffalo, NY 14203. Respondent is
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pathfindercamp.com>, registered with
Tucows
Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Debrett Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 25, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 26, 2007.
On June 26, 2007, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <pathfindercamp.com> domain name is
registered with Tucows Inc. and that
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 28, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 18, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@pathfindercamp.com by e-mail.
A timely Response was received and determined to be complete on July 18, 2007.
On July 28, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist. The Panel finds that it
is properly constituted.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the disputed domain
name is confusingly similar to a trademark in which it has rights (Policy ¶
4(a)(i)); that Respondent has no rights or legitimate interests in the disputed
domain name (Policy ¶ 4(a)(ii)); and that the domain name was registered and is
being used in bad faith (Policy ¶ 4(a)(iii)).
(i) Domain name / Trademark Identical
Complainant runs outdoor summer camps and canoe trips on and from a
small island in
Complainant states that the Complaint is based on the service mark
Complainant alleges that the trademark was first used as early as 1914
and has been used continuously since then.
Complainant asserts common law rights to the trademark based on this
long use of the trademark, and asserts that the trademark has become a
distinctive identifier of Complainant's camp services.
Complainant states that its campers are drawn primarily from
northeastern
Complainant has attracted campers largely through word of mouth. Print advertising has also been used within
Complainant’s advertising expenditure for the years 1999-2006 is as
follows (data prior to 1999 being unavailable):
1999 $4,713.52 (last quarter)
2000 $25,861.63
2001 $25,091.73
2002 $22,036.59
2003 $21,933.68
2004 $9,114.11
2005 $8,900.22
2006 $13,019.84
The trademark is used on clothing, hats, journals, postcards, and
sundry items purchased by campers. The trademark is also used on Complainant’s notepaper
and other printed matter.
Complainant points out that the domain name (without the gTLD indicator),
is “pathfindercamp,” the reverse of Complainant's trademark. It submits that the distinctive element of
both is the word PATHFINDER and accordingly the disputed domain name is
confusingly similar to Complainant's trademark (citing Darkside Prods. Inc.
& Group Kaitu, LLC v. Eros Int’l Corp., D2003-0065 (WIPO Mar. 10, 2003)). Moreover, Complainant reasons that “although
the domain name is one word, it would be pronounced as two words -- pathfinder
camp -- and understood by a consumer to be the name of a camp” and accordingly
the domain name and the trademark have the same meaning.
Complainant also observes that Respondent's camp offers canoeing as
part of its boating program, and as part of a larger camp program of swimming,
woodworking, archery, expeditions, arts and
crafts, woodsmanship, drama, nature, athletics, farm and animal
care.
“Complainant respectfully submits that Respondent's domain name and
Complainant's mark are confusingly similar.”
(ii) No
Rights or Legitimate Interests
Complainant alleges that Respondent's offering of its camp services is
not bona fide as required by ICANN Policy ¶ 4(c), even though Respondent
was using the disputed domain name in connection with camp services prior to
notice of this dispute.
Complainant argues that Respondent's use of the trademark to identify
its camp infringes Complainant's trademark and so Complainant submits that
Respondent's registration and use of the disputed domain name is not a bona
fide use (citing Bar Products.com, Inc. v. RegisterFly.COM, FA 829161 (Nat. Arb. Forum
Jan. 9, 2007) (finding use of domain name to sell competing products under
infringing mark not a bona fide offering of goods under ICANN Policy
¶4(c)(i)); Schouten Indus. B. V. & Schouten Prods. B. V. v. Canadian Soylife Health Co. Ltd., FA 149188 (Nat. Arb. Forum
July 19, 2003) (finding that when respondent adopted and used a domain name to
sell products under an infringing mark, respondent's offering of products was
not bona fide).
Complainant argues that, by use of the domain name, consumers are
likely to believe that Respondent's camp is somehow sponsored by or affiliated
with Complainant's camp. It states that
use of a domain name for a website that infringes Complainant's
Complainant goes on to argue that Respondent is not known by the domain
name, Pathfinder Camp, but rather by the name Camp Pathfinder, the same name
and trademark used by Complainant. Complainant
submits that Respondent registered the disputed domain name because the actual
name of the camp was already registered by Complainant.
Complainant concludes that Respondent does
not have rights or a legitimate interest in the domain name under the Policy.
(iii) Registered and Using in Bad Faith
Complainant specifically argues that Respondent is using the domain
name in bad faith under Policy ¶ 4(b)(iv), i.e., Respondent "has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent's web site by creating a likelihood of confusion with the
Complainant's mark as to the source, sponsorship, affiliation, or endorsement
of Respondent's web site or location or of a product or service on Respondent's
web site or location."
Complainant states that to its “knowledge, at the time Respondent
registered the disputed domain name and named his camp ‘
Complainant has attempted to settle this matter with Respondent, but
the parties have been unable to reach an agreement.
B. Respondent
Respondent submits that the disputed domain name is not identical or
confusingly similar to a trademark or service mark in which Complainant has
rights. It states:
Although
the Complainant asserts that it has a right to the name, it did not file for a
trademark until earlier this year. Given
how common the names are “pathfinder” and “camp” in the trademark application,
there is no assurance that a trademark will be granted. The two words “pathfinder” and “camp” appear
together in over 900,000 entries on the internet. There is a pathfindercamp.org. There is a pathfinderdaycamp.com.
…
The
respondent has been using this domain name for two years. There is not one mention in the complaint of
even a single contact received by complainant of an individual seeking the
respondent’s camp, or any other camp that uses the name Pathfinder. During
that two years the respondent has received seven (7) phone calls and one (1)
internet inquiry that were intended for other Pathfinder camps. Three (3) were for a camp in
Respondent submits that it is making fair use of the domain name
without any intent to mislead or divert consumers. It states that the parties participated in the
same trade show in February 2006 to promote and recruit for their respective
camps. This involved direct interaction
between the parties without any mention of issues Complainant now has with Respondent’s
domain name and camp name.
Respondent argues that its active use of the domain name dispels any
notion that it acquired the domain name primarily for purposes of selling,
renting, or otherwise transferring the domain name to Complainant for monetary
consideration.
It is submitted that there is no pattern of Respondent acquiring domain
names in order to disrupt the legitimate trading activities of others.
FINDINGS
1.
The
parties both provide outdoor activity camps for children and teenagers under
the name
2.
Respondent
is not a licensee of Complainant, nor has it otherwise been authorized to use the
trademark. There is no other
relationship between the parties.
3.
Complainant’s
camp is located on
4.
Complainant’s
primary outdoor activity is canoe tripping, although other activities include
swimming, earth lore, arts and crafts, mountain biking, sailing, archery and
athletics.
5.
Complainant
filed US Federal Trademark Application Serial No. 77/124514 on March 7, 2007
for the word mark
6.
At the
time of filing of the Complaint, that application was pending before the USPTO.
7.
Complainant
has a website at <camppathfinder.com>.
8.
Respondent
is located in the
9.
Respondent
registered the disputed domain name, <pathfindercamp.com>,
on 26 October 2005.
10.
There is
no evidence of any correspondence between the parties filed with either the
Complaint or Response.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each
of the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by Respondent is
identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
It is unclear from the Complaint as to
whether Complainant is contending that the trademark and the domain name are
identical. Certainly, Complainant argues
the alternate position that they are confusingly similar.
The Panel accepts the consensus view of
former panels that for the purposes of testing confusing
identicality/similarity, the generic top-level domain (“gTLD”), “.com,” is to
be ignored: see Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat.
Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant
when establishing whether or not a mark is identical or confusingly similar,
because top-level domains are a required element of every domain name”).
The Panel also accepts that for the purposes
of testing identicality/similarity under the Policy, spaces and other
insignificant punctuation can be properly disregarded: see Aurora Foods Inc. v.
David Paul Jaros, D2000-0274 (WIPO June 8, 2000) (“....the Panel concludes
that use of the lower case letter format in ‘duncanhine.com’, and elimination of
the space between the words ‘Duncan’ and ‘Hine’ to form that name, are
differences without legal significance from the standpoint of comparing ‘duncanhine.com’
to ‘Duncan Hines’.”).
Those matters noted, the Panel rejects any
submission that the disputed domain name is identical to the trademark. The comparison is PATHFINDER CAMP with
The test of confusing similarity does not
require proof of actual confusion (although that fact can assist a panel) but
requires examination of the character of the terms under comparison. In this case, both the domain name and the
trademark consist of two words with dictionary meanings. The
common word, “camp,” is utterly descriptive of the parties’ activity and the
word, “pathfinder,” certainly has an allusive quality in that regard. The Panel has more to say of that matter in
relation to the questions of whether Complainant has rights in the trademark and
simply notes here that the issue of confusing similarity must to some degree be
informed by the descriptive character of these terms.
The Panel is also conscious that it has been
noted by others that Internet users, at least, are keen to discern small distinctions
between domain names: see Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147
(9th Cir. 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers are aware that domain
names for different Web sites are quite often similar, because of the need for
language economy, and that very small differences matter."); see also Tire Discounters, Inc. v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14,
2006) (“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware
that domain names for different websites are often quite similar and that small
differences matter.”); see also Build-A-Bear
Workshop, Inc. v. Pallone, FA 874279
(Nat. Arb. Forum Mar. 1, 2007) (finding that the <bearbuilderz.com>
domain name was not confusingly similar to the complainant’s registered
BUILD-A-BEAR, BUILD-A-BEAR WORKSHOP, or BUILDABEAR.COM marks).
The Panel accepts Complainant’s submission that
the word, “pathfinder,” is the memorable element of both the trademark and the
domain name. The Panel also accepts
Complainant’s submission that both terms have the same meaning, small nuances
aside.
The Panel observes that in this case there is
some evidence of actual confusion. In
his Affidavit on behalf of Complainant, Michael Sladden, company secretary and
director of Complainant’s camp, describes his attendance in February 2006 at a
trade show where he first became aware of Respondent and attests to being
approached by an attendee who asked, “Why do you have two booths here?” Mr. Sladden also describes a telephone
conversation with the principal of Respondent, Garrett Colgan-Snyder, in which
Mr. Colgan-Snyder admitted to having received calls intended for Complainant’s
business.
That account of events is not contradicted in
the Response which states in part:
The domain name is not as confusing as
the complainant contends. The respondent
has been using this domain name for two years. There is not one mention in the complaint of
even a single contact received by complainant of an individual seeking the
respondent’s camp, or any other camp that uses the name Pathfinder. During that two years the respondent has
received seven (7) phone calls and one (1) internet inquiry that were intended
for other Pathfinder camps. Three (3) were for a camp in
The Panel regards these statements as
evidence of relevant confusion but is cautious to give it only appropriate
weight since it is unclear to what extent the confusion springs from the use of
the disputed domain name and to what extent it springs from the use of the camp
name and promotional literature which use the different, identical, name.
Nevertheless,
balancing all the factors discussed, the Panel finds that the disputed domain
name is confusingly similar to the trademark. See
The Panel turns to examination of the
connected question of whether Complainant has rights in the trademark.
There is ample authority for the proposition
that a US Federal trademark registration is prima facie
evidence of rights in a trade mark: see Reebok Int’l Ltd. v.
Nonetheless, a
trademark registration is not
required by Policy ¶ 4(a)(i) provided Complainant can establish common law rights
in the CAMP PATHFINDER mark: see McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see
also SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Zee TV
USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that Policy ¶ 4(a)(i) does not require a trademark registration if a
complainant can establish common law rights in its mark).
The issue for the Panel here is whether Complainant has done enough to show common law trademark rights. Although Complainant chose to file the Complaint with the National Arbitration Forum, the Complaint references decisions under the Policy made by panelists of the other major forum, the World Intellectual Property Organisation (WIPO). In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”
That Overview poses two Q&As of relevance to the discussion here:
1.5 Can a complainant show rights in a
geographical term or identifier?
Consensus view: The report of the Second WIPO Internet
Domain Name Process declined to specifically extend protection to geographical
terms under the UDRP. Some geographical
terms however, can be protected under the UDRP, if the complainant has shown
that it has rights in the term and that the term is being used as a trademark. Normally this would require the registration
of the geographical term as a trademark.
Relevant decisions:
Kur- und Verkehrsverein St. Moritz v. StMoritz.com D2000-0617, Denied
Skipton Building Society –v. Peter Colman D2000-1217, Transfer
FC Bayern München AG v. Peoples Net Services Ltd. D2003-0464, Transfer
BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi D2004-0717, Transfer
However: It is very difficult for the legal authority
of a geographical area to show unregistered trademark rights in that
geographical term on the basis of secondary meaning.
Relevant decisions:
City of
Land Sachsen-Anhalt v. Skander Bouhaouala D2002-0273, Denied
1.7 What needs to be shown for the
complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has
become a distinctive identifier associated with the complainant or its goods
and services. Relevant evidence of such “secondary meaning” includes length and
amount of sales under the mark, the nature and extent of advertising, consumer
surveys and media recognition. The fact
that the secondary meaning may only exist in a small geographic area does not
limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the
complainant is based in a civil law jurisdiction.
Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786,
Decisions of this Forum have underscored
those same points.
It is the task of
another to assess the registrability of
Despite the vintage of Complainant’s
business, the Complaint itself does little to support a claim to common law
rights in the trademark. There are bald
assertions of the Complainant’s “rich history” and “stellar and widespread
reputation” but scant evidence to support those claims. This Panel is reminded of what was said in Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003):
Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [Complainant’s claim that
it is well known] is a finding that must be supported by evidence and not
self-serving assertions.
Complainant faces the added burdens that the
trademark in which it asserts common law rights is a geographical placename and
also has descriptive qualities. In this
Panel’s opinion, Complainant accordingly bears a higher onus of proof that the
trademark has acquired secondary meaning and indicates Complainant to the
exclusion of others.
The Merriam-Webster
Dictionary defines a “pathfinder” as “one that discovers a way; especially: one that explores untraversed
regions to mark out a new route.” The
Oxford Dictionary likewise defines the word as “a person who goes ahead and
discovers or shows others a path or way.”
Accordingly, the trademark could be said to be descriptive in either the
literal sense of a camp to develop pathfinding or orienteering skills, or as a
metaphor for a place to develop those same life skills.
The trademark is the
name of a recognised geographical placename, albeit very small. It is possible that the placename followed the
establishment of Complainant’s business there, but there is simply no evidence
of that matter, one way or the other.
The Panel is therefore guided by the consensus opinion of the WIPO
Overview that, normally, in order to show rights, a complainant would require the registration of the geographical term as a trademark.
Against those considerations, the Complaint essentially
carries the following evidence.
First, there are generalized claims of the
form:
"I remain a competent paddler and proud of it. I miss a loon's
call at dusk, the sputtering light of a Coleman, . . . . I miss coming back
from the five in the pitch dark, rinsing off Ivory soap in a frigid plunge into
Source Lake, scrubbing a wrinkled aluminum pot spotless, splitting cedar,
starting afire with one match in rainy weather, running
Bonfield-Dickson and then dipping a tin cup into cool water. I miss watching
three brilliant red canoes approach from the horizon of a distant lake, nine
paddles lifting in silent rhythm, flashing in the sun."
Secondly, there are camper figures as
follows:
1914-1920 (30-90 boys)
1921-1930 (90 boys per season)
1931-1960 (100 boys per season)
1961-1980 (110 boys in two
sessions each summer)
1981-1999 (90 boys in two
sessions each summer)
2000 – 2007 (230-240 boys per year).
Thirdly, the promotional spend has been as follows:
1999 $4,713.52 (last quarter)
2000 $25,861.63
2001 $25,091.73
2002 $22,036.59
2003 $21,933.68
2004 $9,114.11
2005 $8,900.22
2006 $13,019.84
Fourthly, there are miscellaneous flyers, postcards and other printed
material showing historical use of the trademark.
Finally, there are printouts from the website which has been in use
since 2000 to act as the principal source of new business.
The Panel has difficulty with this evidence. There is simply no evidence of widespread reputation
aside from Mr. Sladden’s unsupported declaratory statement. The provenance and weight to be given to the
endorsements by former campers is uncertain and ultimately low. Allowing even for the seasonal limitations of
the business and, presumably, the physical limitations of the campsite, the
camper numbers are still very low. By
the measure of the type of enterprises that have a serious interest in their
brands, the annual advertising expenditure is very low. Additionally, the Panel’s own permitted
research using <alexa.com> shows that Complainant’s website is less than
the 4,000,000th “most” popular site on the World Wide Web.
The WIPO Overview makes clear the type of evidence that might be
required to show a common law right to the trademark. It included references to “consumer surveys
and media recognition.” There is nothing
of that kind in the evidence. The Panel
is sensitive to Complainant’s establishment of the business in 1914 and to its
continuous use of the trademark, to the intrinsically local quality of the
business, and to the practical difficulties in proving a reputation even in a
limited geographical area. Nonetheless, there
is not nearly enough in the Complaint to enable this Panel to find that
Complainant has unregistered rights in the trademark for the purposes of Policy ¶ 4(a)(i), especially in view
of the discussed descriptive and geographical significances of the trademark.
The Panel finds that Complainant has failed to prove the first element
under the Policy.
With that decision
made, the Panel finds no need to
analyze the additional elements of the Policy as outlined in Policy ¶¶ 4(a)(ii)
and (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also 01059
GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10,
2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by
showing it has rights in a mark, the panel need not consider whether the
respondent has rights or legitimate interests in the disputed domain name under
Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain
name in bad faith under Policy ¶ 4(a)(iii).
WITHOUT PREJUDICE DECISION
Having failed to establish at least one of the three elements required
under the Policy, the Panel concludes that relief shall be DENIED.
It is to be noted that the Panel has reached this decision on a
“without prejudice” foundation, meaning that this decision should have no
prejudicial affect on Complainant’s filing of a future complaint in regard to
the same domain name if the circumstances are such that the factual or
evidentiary matrix is not identical to that presented to this Panel.
Debrett Lyons, Panelist
Dated: August 9, 2007
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