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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clubrunner, Inc. v. One Stop Computer Shop, Inc.
Case No. D2000-0538
1. The Parties
The Complainant is Clubrunner, Inc., a corporation organized in the State of Florida, United States of America (USA), with place of business in Jupiter, Florida, USA.
The Respondent is One Stop Computer Shop, Inc., with place of business in Ft. Lauderdale, Florida, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "clubrunner.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on
June 2, 2000, and by courier mail received by WIPO on June 5, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On June 5, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc.
b. On June 20, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
c. A response from Respondent was received by WIPO via telefax on July 7, 2000, and via courier mail on July 10, 2000. Respondent also transmitted the response to Complainant.
d. On July 25, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 25, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e. On July 31, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by August 14, 2000. On July 31, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant has registered the combination word and design trademark "ClubRunner" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 2,344,604, with application filed on July 21, 1998, and registration granted on April 25, 2000 (Complaint, Annex 4). Complainant’s trademark registration is in Class 9, for "computer software for health club management". Complainant’s application for trademark registration claimed a first use in commerce of its mark in 1985.
Complainant has submitted substantial evidence of its use of the word and design mark "ClubRunner" in commerce in connection with the advertisement and sale of computer software (id., Annexes 5-8). Complainant’s software program indicates a copyright date of 1985 (id., Annex 7), and Complainant’s software sales contracts evidence use of the mark at least as early 1992 (id., Annex 8).
Respondent has registered the service word mark "CLUBRUNNER" on the Principal Register of the USPTO, Reg. No. 2,318, 986, with application filed on January 1, 1999, and registration granted on February 15, 2000 (Response, Annex 2). Respondent’s service mark registration is in Class 42, for "providing information in the field of fitness via a global computer information network". Respondent’s application for service mark registration claimed a first use of December 10, 1996, and use in commerce of January 2, 1997.
Network Solution’s verification response of June 6, 2000, to WIPO indicates that the domain name "CLUBRUNNER.COM" is registered to Respondent and is in active status. Network Solution’s WHOIS database indicates that Respondent’s record of registration was created on December 10, 1996, and was last updated on June 6, 2000 (Complaint, Annex 1).
Respondent maintains a website at "www.clubrunner.com" that, inter alia, offers links to fitness clubs, to software providers for fitness clubs, to fitness professionals, to classified advertisements, and to companies specializing in fitness equipment (id., Annex 3).
In August 1997, Complainant notified Respondent of objection to its registration and use of the disputed domain name (Letter from Charles H. Burns to Frank Fusco, dated August 20, 1997) (Complaint, Annex 9). In response, Respondent offered, inter alia, to sell the domain name outright to Complainant for $1,000 (Letter from Frank Fusco to Charles Burns, dated September 26, 1997) (id.). Complainant responded with a counter-offer of $500. Respondent rejected that offer, and withdrew its offer to sell for $1000, indicating that it considered the domain name and a website under that name to have a higher market value (based on contacts with various "club running" software companies) (Letter from Burns to Fusco, dated November 5, 1997, and letter from Fusco to Burns, dated February 28, 1998) (id.).
Complainant has initiated litigation in the United States District Court of the Southern District of Florida against Respondent alleging, inter alia, unfair competition, trademark infringement and trademark dilution arising from Respondent’s maintenance of a website at "www.clubrunner.com" (id., para. 16(2)). In addition, Complainant indicates its intention to seek cancellation of Respondent’s service mark registration by amendment of its complaint in the aforesaid federal district court proceeding, and/or by the filing of a petition to cancel the registration with the USPTO (id., para. 16(3)).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
In its own words, Complainant in this proceeding states:
"This Complaint is based on the following grounds:
"12. (1) Respondent's use of its domain name is identical to or confusingly similar to Complainant's prior CLUBRUNNER trademarks. Respondent uses the domain name CLUBRUNNER.COM in business dealings with health and fitness clubs. Complainant uses the trademarks CLUBRUNNER and CLUBRUNNER and design, registered under number 2,344,604 as brand names for its computer software being sold to health and fitness clubs.
Since December 10, 1996, Respondent has been using its domain name CLUBRUNNER.COM in connection with a business that involves providing information in the field of fitness via a global computer information network such as the internet. For example, Respondent provides information about available computer software for management of health and fitness clubs. Selected pages from Respondent's web site at CLUBRUNNER.COM are attached as illustrative. …
Since 1985 and long prior to December 10, 1996, Complainant has been using its trademark CLUBRUNNER and design registered before the U.S. Patent and Trademark Office under number 2,344,604 for computer software for health club management. A copy of the federal trademark registration is attached….
Since 1985 and long prior to December 10, 1996, Complainant has been using its unregistered common law trademark CLUBRUNNER without an incorporated design feature for computer software for health club management.
Examples of use of Complainant's marks CLUBRUNNER and CLUBRUNNER and design are attached … (advertising), (selected pages for Complainant's website at ww.bigsky.net/clients/clubrun), … (Complainant's software CD and printouts of two computer screens), … (purchase agreements for Complainant's CLUBRUNNER software.)
"(2) Respondent has never had any rights or legitimate interest in the domain name at issue herein. Respondent adopted the trade designation and domain name CLUBRUNNER.COM on December 10, 1996, with actual knowledge of Complainant's prior rights in the CLUBRUNNER trademarks. Prior to December 10, 1996, Respondent had direct business contacts with Complainant concerning Complainant's CLUBRUNNER computer software. In particular, in 1995, Mr. Jeffrey Colen, Complainant's President and Mr. Frank Fusco, Respondent's President worked together to install Complainant's CLUBRUNNER brand computer software at a Gold's Gym health and fitness facility. When Respondent adopted the CLUBRUNNER.COM domain name, Respondent had not previously used CLUBRUNNER as its trade designation.
"(3) Respondent's domain name was registered and is being used in bad faith in view of the following. Respondent registered its domain name for the purpose of selling, or renting such name to Complainant for consideration in excess of Respondent's out-of-pocket costs directly related to the domain name. When Complainant learned of Respondent's domain name in 1997 and sent objection to Respondent, Respondent offered to sell the domain name for $1,000.00, a price well above the fee for registration. Complainant counter offered that it would pay $500.00 to settle the matter. Respondent replied that it had contacted multiple companies which sell computer software for managing health and fitness clubs and such companies had shown interest in linking to Respondent's site for a monthly rental fee. Therefore, Respondent's domain name was worth more than $1,000.00. Also, Respondent suggested that Complainant may want to rent linking capacity from Respondent. …
"(4) Respondent’s domain name was registered and is being used in bad faith in view of the following. Respondent registered its domain name to disrupt Complainant’s business and/or to intentionally 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 of products and services on such web site.
"When Respondent’s CLUBRUNNER.COM website became active, such site disrupted Complainant’s business and lead to confusion. Customers of Complainant and it is believed potential customers of Complainant contacted and continue to contact Respondent’s CLUBRUNNER.COM site mistakenly believing it to be Complainant’s site. …. To make matters worse, at least initially when the site became active, two of the server lines were dead so that customers and potential customers could not open the site to view its contents and such customers and potential customers were discouraged in their attempts to obtain information about Complainant.
"In addition, Complainant has just learned that Respondent, without authorization from Complainant is prominently displaying Complainant’s CLUBRUNNER trademark in Respondent’s website. Persons using Respondent’s website and looking for available computer software products will come upon a listing for CLUBRUNNER software and a link to Complainant’s website. Such usage of Complainant’s CLUBRUNNER trademark exacerbates the confusion that is occurring." (Complaint)
Complainant refers to its initiation of litigation against Respondent in U.S. federal district court, and of its intention to seek cancellation of Respondent’s service mark registration (id., para. 16).
Complainant requests that the Panel ask the Registrar to transfer the domain name "clubrunner.com" from Respondent to it (id., para. 13).
In its own words, Respondent in this proceeding states:
"III. Responses to Complainant per Paragraphs 4(a) I thru iii of the Uniform Domain Dispute Resolution Policy
"i. Complainant does not have a Registered Service Mark for the name CLUBRUNNER, nor do they have to the best of the Respondents knowledge a registered domain name and therefore there cannot be any confusion. If any rights to the name CLUBRUNNER by Complainant, by reason of the Complainant receiving a registered Trademark for its logo design, would have been far after the Respondents registration of the domain name and therefore not applicable. In addition, the general use of Internet search engines for the single word ‘CLUBRUNNER’ produces a majority (more than 75%) of results pointing to a golf cart manufactured by Paradigm Sports Inc., called the CLUBRUNNER, as well as a variety of other companies. When using the separate words, ‘CLUB’ and ‘RUNNER’ the result is various clubs and associations, more specifically running organizations. The words ‘CLUB’ and ‘RUNNER’ are very common words and thus produce more results other than even the Respondents domain CLUBRUNNER.COM, therefore requiring anyone who purely uses a ‘search’ engine to be more prudent in their research. The Respondents current ‘Home’ page is very specific about its contents and ownership and in comparison the Complainants current ‘Home’ page is also very specific about its contents and ownership, which any reader would be able to differentiate…. To the best of the Respondents knowledge, the Complainant had no presence on the Internet until sometime early 1999, far after the Respondents use of the CLUBRUNNER.COM web site.
"ii. (1) The CLUBRUNNER domain name and its corresponding website has been in continuous operation since January 2, 1997, and is still in use prior to the Complainants complaint….
(2) On February 15, 2000, Respondent received a Certificate of Registration for the Service Mark ‘CLUBRUNNER’, from the US Patent & Trademark Office, number 2,318,986 under class 42, (namely, Providing information in the field of fitness via a global computer information network) i.e. the Internet…. Subsequently, approximately 2 months later, on April 4, 2000, Complainant received a Registered Trademark number 2,344,604 for its CLUBRUNNER design (logo). Complainant does NOT have a registered Service Mark for the name CLUBRUNNER alone. Complainant’s trademark is under class 9, which is a product (namely Computer software for Health Club Management) along with a disclaimer that states, ‘NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CLUB’’ APART FROM THE MARK AS SHOWN’, i.e. the trademark design (logo)….
(3) Complainant erroneously states in Complainant’s ‘Other Legal Proceedings’, number , section 3, that Respondent failed to notify United States Patent and Trademark Notice, herein referred to as PTO, of their pending trademark. However, during the application process, the Respondent did in fact inform the PTO examining attorney about the CLUBRUNNER trademark application and usage. The Respondent’s PTO examining attorney informed Respondent that they did review the Complainant’s application. Thus, the PTO office was fully aware of the Complainants application and the PTO still issued Respondent a preliminary approval that there were no conflicts and subsequently approved and issued a Registration….
(4) If Complainant considered Respondents use of the word mark CLUBRUNNER to be in conflict, then the Complainant failed to notify the PTO of the Respondents use of the name CLUBRUNNER during their application process. The Respondent provided the Complainant, ample opportunity of almost six months to oppose the SERVICE MARK application thru normal PTO procedures. In addition the Complainants President improperly filed a lawsuit against, Frank Fusco, an officer of the Respondent, claiming that they he had a Registered Trade Mark/Service Mark, which was untrue and is a possible violation of the ‘Trademark Act of 1946’ as amended….
(5) Respondents right to use Registered Service Mark is dictated by Trademark Act of 1946, 60 Stat. 427, as amended, codified in 15 U.S.C. 1051 et. seq.
Sec 1057 subparagraph b of the US Code Title 15 states:
‘Certificate as prima facie evidence. A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.’
Sec 1072 of the US Code Title 15 states:
‘Registration of a mark on the principal register provided by this chapter or under the Act of March 3 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant’s claim of ownership thereof.’
"iii. (1) The Respondents registration of the name CLUBRUNNER.COM could not be viewed as being in bad faith because Respondent registered the domain name prior to the Complainant’s application and subsequent registration of their logo (design) as a Trademark. In addition, Respondents use of the domain name CLUBRUNNER.COM cannot be characterized as usage in bad faith since the US PTO has granted a registration of the Service Mark, CLUBRUNNER upon their application and finding no conflicts….
(2) In addition to (1) above, the CLUBRUNNER.COM web site has been a not-for-profit informational web site since its inception, and therefore operates without commercial gain. There are no products sold on the web site, nor has any listed company paid for it’s link. The Respondent does not sell or compete with the Complainant in the selling of Health Club software. The offer to sell the domain name in 1997 came only after the Complainant contacted the Respondent approximately 8 months after the domain name was registered. The Respondent currently maintains this and one other website for its own use and does not sell or ‘cyber squat’ Internet domain names. The original offer to sell the domain name, is prior to the implementation of the ‘Rules for Uniform Domain Dispute Resolution Policy’ approved October 24, 1999, but regardless the amount requested was less than the out of pocket expenses incurred to at that time, which included, the Internic Registration Fee, the monthly web hosting fee for 9 months and the monies spent on the web site development. This amount in question was part of a negotiation, after the Complainant contacted the Respondent. The domain name was never ‘up for sale’, anytime prior to the Complainant contacting the Respondent. In reference to the respondents letter dated February 28, 1998, the letter specifically states that charging a monthly fee was under discussion but this in fact was never implemented….
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to the Complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
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 to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- Respondent’s 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.
Without deciding this question, and for the sake of administrative efficiency, the Panel will assume that Respondent’s domain name "clubrunner.com" is identical or confusingly similar to a trademark in which Complainant has rights.
In order to prevail on its claim of abusive domain name registration under the Policy, Complainant must also establish that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, para. 4(a)(ii)). The Policy expressly 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
- 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
- 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, para. 4(c))
The USPTO has registered the service mark "CLUBRUNNER" in the name of Respondent. The USPTO granted Respondent’s registration for the "CLUBRUNNER" word mark prior to the date it granted registration for Complainant’s word and design mark "ClubRunner" (see Factual Background, supra). Respondent has registered the domain name "clubrunner.com" that is essentially identical to the mark it has registered, with the exception of differences that are legally insignificant from the standpoint of domain names (involving addition of the generic top-level domain name (gTLD) ".com" and variations in letter case usage). Respondent has actively used the domain name in connection with hosting a website. Such use predated Complainant’s registration of its "ClubRunner" trademark.
Prior to registration of a service mark, the USPTO publishes the applicant’s proposed mark. Interested persons may oppose the grant of registration. Subsequent to registration, in appropriate circumstances, proceedings to cancel a registered mark may be pursued before the USPTO. A party may contest the validity of a mark in the course of an infringement proceeding before the U.S. federal courts, and such courts have authority to direct the cancellation of the registration of a mark.
Registration of a service mark with the USPTO confers a presumption of validity in U.S. law. Registration of a service mark is contingent upon use of the mark in commerce. The USPTO is authorized to grant concurrent registration of identical or similar marks in appropriate circumstances. Such circumstances may include those in which marks are used for different classes of goods or services.
In the present proceeding, the USPTO has registered the service mark "CLUBRUNNER" to Respondent. The USPTO has determined that Respondent has rights in the mark. Respondent has exercised such rights by reflecting the mark in the "clubrunner.com" domain name, and by using that name in connection with its website. On this basis, the Panel determines that Respondent has rights in the domain name within the meaning of paragraph 4(a)(ii) of the Policy.
The essence of Complainant’s complaint is that the USPTO should not have granted Respondent’s registration of the "CLUBRUNNER" service mark. Complainant has presented evidence that it considers to support this claim. The Panel in this proceeding will not review a formal determination by the USPTO as to whether a service mark was entitled to registration. A request for such review is appropriately addressed to the USPTO or to the U.S. federal courts.
Complainant has failed to establish that Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. The Panel therefore rejects Complainant’s request to direct the registrar to transfer the disputed domain name to it.
Complainant, Clubrunner, Inc., has failed to establish that Respondent, One Stop Computer Shop, Inc., has no rights or legitimate interests in the disputed domain name "clubrunner.com" within the meaning of paragraph 4(a)(ii) of the Policy. The Panel therefore rejects Complainant’s claim of abusive domain name registration against Respondent, and denies its request that the Panel ask the registrar to transfer the domain name "clubrunner.com" from Respondent to it.
Frederick M. Abbott
Dated: August 14, 2000