Source Lake Holding
Claim Number: FA0706001015782
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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
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)
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.
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.
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.
parties both provide outdoor activity camps for children and teenagers under
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.
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.
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>.
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.
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.
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:
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.
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.
Land Sachsen-Anhalt v. Skander Bouhaouala D2002-0273, Denied
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.
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)
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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