Complainant is Buffalo-Erie Marathon Association, Inc. ("BEMA") of Amherst, New York, United States of America (“United States”), represented by Hodgson Russ, LLP, United States.
Respondent is John Elliott of Boulder, Colorado, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CSC Corporate Domains, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on March 27, 2019, providing the registrant and contact information disclosed by the Registrar. The Center received an email communication from Respondent on March 27, 2019.
The Center verified that the 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 April 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2019. The Center received three email communications from Respondent on April 5 and 8, 2019. The Response was filed with the Center on May 2, 2019. In response to Respondent’s submission, Complainant submitted an unsolicited supplemental filing with the Center on May 2, 2019. Respondent sent two email communications to the Center on May 2, 2019, in response to Complainant’s supplemental filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 8, 2019. 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.
In its discretion, the Panel has decided to consider Complainant’s supplemental filing and Respondent’s email in response thereto. 4. Factual Background
The Parties in this case have made numerous allegations against each other, and each Party has sought to present a timeline of events supporting its position in this case. A history going back some 20 years is involved here. A comprehensive summation of the Parties’ respective assertions will not be attempted here, as it is not necessary to address the essential issues here and decide this case.
Complainant is a non-profit organization that organizes and conducts the Buffalo Marathon running event every May in the city of Buffalo, New York. According to the Affidavit of Complainant’s Executive Director, Greg Weber (“Weber”), “The Buffalo Marathon” has taken place “since as early as 2000”.
(According to Respondent, there had been a marathon in Buffalo at some point prior to 2000, but it was discontinued and then revived in 2001 as the “Buffalo-Erie Buick Marathon”. In 2002, the race was called the “Nissan Buffalo Marathon”.)
Weber states in his Affidavit that he became Complainant’s Executive Director in December 2014. He states that he applied for Complainant’s trademarks with the United States Patent and Trademark Office (“USPTO”). According to Weber, none of his predecessors had sought to register BUFFALO MARATHON as a trademark.
On February 16, 2016, the USPTO registered the word mark BUFFALO MARATHON under Reg. No. 4,900,644. This registration indicates a first use of the mark in commerce in May 2001.
The Domain Name was registered on February 28, 2000. At various points in time, the Domain Name resolved to a website discussing Complainant’s annual race event, and at various points in time, it appears that the Domain Name was linked to Respondent’s more general website, at which Respondent has provided information about various marathon races around the world.
According to the Weber Affidavit, Respondent John Elliott “was at one point a vendor for the Buffalo Marathon”. Weber states that he acquired this understanding from his predecessors (presumably a reference to the former officers of Complainant), “who are now unfortunately deceased”. The Weber Affidavit goes on to say:
“Sometime in early 2000, [Respondent] offered to procure a domain name for Buffalo Marathon so that runners would be able to register for the run online, instead of in person. This was a relatively new concept at the time, and [Respondent] professed expertise in that area. Whereas the Race Director at the time, John Beishline, was not as familiar with how online registration would work.
[Respondent] used Mr. Beishline’s ignorance at the time to his advantage. Not only did [Respondent] sell Mr. Beishline the services of runner registration through his own company Marathon Guide (where [Respondent] would benefit a certain percentage of each registration fee), [Respondent] unscrupulously registered [the Domain Name] in his own name, without any authority or license to do so.”
Weber further states in his Affidavit:
“When I first attempted to update the Buffalo Marathon website, in early 2015, I learned that [the Domain Name] was not registered to [Complainant]. Rather, I learned that [Respondent] had registered the Domain Name in his own name, and to my knowledge without authorization.”
(Respondent states that he registered the Domain Name “long before” he had ever heard of Mr. Beishline. It is not disputed, however, that Respondent eventually permitted the Domain Name to be used in association with the annual marathon in Buffalo (which marathon went under various names over time).)
There is nothing in the record to reflect any written agreement between Complainant and Respondent in 2000 or in subsequent years. As such, there is no hard evidence of record pertaining to the terms of the purported agreement under which Respondent agreed to provide services to Complainant and, allegedly pursuant thereto, registered the Domain Name.
To put it more pointedly, the record does not include contemporaneous documents which could reveal whether the Parties at the time (in the early 2000s) understood that Respondent would be registering the Domain Name, whether he would be doing so in his own name, whether and how Respondent would be compensated for providing online race registration services, or whether it was known that Respondent allegedly would be linking the Domain Name to his more general website, Marathon Guide.
In 2015, Weber states, Complainant replaced Respondent with another provider of online race registration services. Between October 2016 and March 2018, Weber sent several emails to Respondent asking that he relinquish the Domain Name. It appears from the record that Respondent never replied to these emails.
The Weber Affidavit also states that Weber learned from several other race directors in the United States running community that Respondent “has done the same exact thing – registering domain names for races under his own name for his own personal benefit, and refusing to transfer ownership to the appropriate running organization”.
Complainant attached to its unsolicited supplemental filing an Affidavit of one of its founding directors, Stephen Podlas (“Podlas”). Among other things, Podlas stated:
“When [Respondent] came to Buffalo in 2000, I recall him telling John Beishline that Buffalo Marathon registration should be done on a computer, using his website. (…)
I understood [Respondent’s] proposal to mean that he would list Buffalo Marathon on his website.
I certainly had no idea, nor did John Beishline authorize him, to register the [Domain Name].”
The Podlas Affidavit does not explain how the affiant had – or could have had – personal knowledge that John Beishline never authorized Respondent to register the Domain Name. In any event, in his email response to Complainant’s supplemental filing, Respondent flatly denies being in Buffalo in 2000. Respondent stated that he passed through Buffalo in 1984 during his nationwide motorcycle tour, and did not visit Buffalo again until 2010. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent disputes Complainant at virtually every turn. Moreover, Respondent asserts that Complainant has engaged in Reverse Domain Name Hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark BUFFALO MARATHON through registration demonstrated in the record. The Panel concludes further that the Domain Name is identical to that mark. For purposes of this element under the Policy, it does not matter whether Complainant’s mark existed at the time Domain Name was registered.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel need not address the “rights or legitimate interests” issue, given its decision on the “bad faith” issue below. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes from this record that Complainant has failed to prove that Respondent registered the Domain Name in bad faith. Although both Parties offer various versions about the history of marathon races in Buffalo, New York over the years, and what these races were called at various points in time, and who was involved in organizing the races at various moments in time, and whom Respondent knew and when, there is no competent evidence in the record that Complainant had any trademark rights in BUFFALO MARATHON in February 2000, when Respondent registered the Domain Name.
According to Respondent, he registered the Domain Name, along with numerous other domain names including a geographic location and the word “marathon,” in aid of his main website (“Marathon Guide”) at a time (2000) when search engines were not as prevalent a source for enhancing Internet traffic. The Panel finds this a plausible explanation of Respondent’s motives vis-à-vis the Domain Name. The Panel also notes that, according to an annex to Complainant’s supplemental filing, the race in 1999 – i.e., the most recent annual race at the time the Domain Name was registered – was called “The Ford Buffalo Marathon”.
There is no firm evidence in the record to establish that Respondent knew in February 2000 that Complainant (or anyone else) was actually planning to revive the annual Buffalo race and call it the “Buffalo Marathon”. The Podlas Affidavit appears to come close, by referring to Respondent’s alleged visit to Buffalo in 2000 (no month specified), but Respondent flatly denies having been in Buffalo in 2000. Whether Respondent was in Buffalo in 2000 is a disputed issue of fact not easily resolved without a credibility assessment.
In addition, as noted above, the record does not contain any contemporaneous evidence of Respondent’s agreement with Complainant to use the Domain Name in connection with online race registration services. There is no documentary evidence to back up the hearsay account of Respondent’s dealings with the predecessors of Complainant’s current Executive Director.
The Policy is designed to address clear cases of cybersquatting, and the streamlined process accompanying a dispute under the Policy is ill-equipped to address cases where there are gaps in the record and conflicting accounts which cannot be cured or reconciled through the process of discovery, cross-examination, credibility assessment, and so forth. Whether Complainant has any sort of viable legal cause of action against Respondent outside the narrow confines of the Policy is not for this Panel to consider.
Complainant has not established Policy paragraph 4(a)(iii). As such, the Complaint fails. D. Reverse Domain Name Hijacking
The Panel declines to find Reverse Domain Name Hijacking (“RDNH”) in this case. As discussed above, the record here does not adequately confirm whether there have been material misstatements of a deliberate nature by either Party. Moreover, even if one accepts Respondent’s version of events, one fact sometimes important to the RDNH issue looms here – Respondent apparently never bothered to reply to Complainant’s numerous pre-Complaint efforts to resolve the dispute over ownership of the Domain Name. If Respondent had taken the trouble to reply to Complainant before this proceeding was initiated and explain his version of events, this proceeding might never have been initiated. As such, even if there are some serious weaknesses with Complainant’s case, at least as far as the record here reflects, the fact remains that Complainant did make a serious effort to resolve this dispute before launching the Complaint in this proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied. No finding of RDNH is made here.
Robert A. Badgley
Sole Panelist
Date: May 16, 2019
Full & Egal Universal Law Academy