Lotte Berk Method Limited v.
Renaissance Ventures
Claim Number: FA0711001108002
PARTIES
Complainant is Lotte Berk Method Limited, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lotteberk.com>, registered with GoDaddy.com,
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 9, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 12, 2007.
On November 12, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lotteberk.com> domain name is
registered with GoDaddy.com, Inc.; that
Respondent is the current registrant; that the domain name was created on June
5, 1999; and that the Administrative and Technical Contact for the domain name
is Mr. Steven Lichtman. GoDaddy.com, Inc. has verified that Respondent
is bound by the GoDaddy.com, 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 November 26, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of December 17, 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@lotteberk.com by e-mail.
A timely Response was received and determined to be complete on December 17, 2007.
On December 20, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
On December 26, 2007, Complainant filed an
Additional Submission within the time specified by the National Arbitration
Forum’s Supplementary Rule #7. On January 2, 2008, the Respondent filed an
untimely Reply to Complainant’s Additional Submission.
On January 3, 2008, due to exceptional
circumstances, the Panel extended by one week, to January 10, 2008, the time
within which its Decision was to be provided to the
National Arbitration Forum.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In 1969, Lydia Bach, Complainant’s principal, had an idea to create a
unique exercise business, while she was taking exercise classes that Lotte Berk
was teaching. In 1970, Ms. Bach bought
the worldwide rights to Lotte Berk’s name and technique, and developed a
special exercise system to tone the body rapidly. In 1971, Ms. Bach established Complainant in
Since 1970, Ms. Bach and Complainant have carefully developed the Lotte
Berk Method brand name as a distinctive, exclusive, and well known exercise
method. Since 1971, Complainant has operated studios and more recently offered
books and videos online under the LOTTE BERK METHOD mark, in which it has built
up a valuable reputation and which it registered as a trademark in the United
States under No. 3,025,691 on December 13, 2005 in class 41 and No. 3,297,297
on September 25, 2007 in classes 9 and 25. Both registrations are on the
Principal Register of the USPTO. Complainant operates websites at lotteberkmethod.com
and lotteberkmethod.net.
In
March 2006, Complainant secured transfer to it from Respondent of the domain
name lotteberkmethod.com. See Lotte Berk
Method Limited v. ATTN: lotteberkmethod.com, FA 667767 (Nat. Arb. Forum May
8, 2006). The administrative contact for the domain name in that case was Steve
Lichtman, the same individual who is now the administrative contact for the
domain name in this case. Unbeknownst to
Complainant, Steve Lichtman had also registered lotteberk.com in June 1999,
almost twenty-eight years after Complainant’s use of the LOTTE BERK METHOD
trademark began.
The disputed domain name is nearly identical to Complainant’s
registered trademark.
Respondent has no rights or legitimate interests in the disputed domain
name, which it uses to confuse the public and palm off its services as an
authentic Lotte Berk Studio. Upon entry
of the URL address lotteberk.com, Internet users are re-directed to
Respondent’s bodyfitstudio.com website, which is not affiliated with and does
not offer any of LOTTE BERK METHOD goods and/or services. Such use is not a bona fide offering of goods
or services.
Respondent has never had any rights in the trademark or the regimen
LOTTE BERK METHOD, and consequently has no rights to the ownership and use of
the disputed domain name.
Respondent registered and is using the disputed domain name in bad
faith. Respondent registered the disputed domain name primarily for the purpose
of preventing Complainant from reflecting its mark in a corresponding domain
name and diverting customers to its exercise studio. Respondent has engaged in a pattern of such
conduct. See Lotte Berk Method Limited
v. ATTN: lotteberkmethod.com, FA 667767 (Nat. Arb. Forum May 8, 2006).
Respondent also registered the disputed domain name primarily for the
purpose of disrupting the business of Complainant. When Internet users enter the URL address
lotteberk.com, as they may believe it may lead them to LOTTE BERK METHOD’s
website, they are immediately redirected to Respondent’s website for Body Fit
Studios. Such re-direction of potential
customers results in disruption of Complainant’s business and loss of revenue.
Lastly, by using the disputed domain name, Respondent has intentionally
attempted to attract, for commercial gain, internet users to
bodyfitstudios.com, where exercise classes are promoted. Respondent’s use of the disputed domain name
creates a likelihood of confusion with Complainant’s mark. By typing in the distinctive and unique
portion of Complainant’s mark with the “.com” suffix, internet users are
re-directed to Respondent’s site, which is in no way associated with
Complainant.
B. Respondent
Continuously since July, 2002, an affiliated company of Respondent, has
owned and operated, in
Respondent registered the disputed domain name on June 5, 1999. Its
website was “under construction” until approximately March 30, 2003, when the
disputed domain name was directed to the www.bodyfitstudio.com website. This was more than one year before
Complainant filed its first trademark application.
Respondent did not become aware of Complainant until March or April
2005, when the parties began negotiations for Respondent to become a licensee
of Complainant. Respondent is unaware of any actual confusion between its
studio or its website and Complainant’s business.
Respondent’s instructors at its Body Fit Studio were trained in the
Lotte Berk style of exercise before they came to work for Respondent and have
used their Lotte Berk training and other exercise programs to create a modern
and unique exercise program that satisfies current customer demand.
In March 2006, Complainant commenced claim FA 667767 against Respondent.
No Response was filed because the domain name at issue, lotteberkmethod.com,
was to have been transferred to Complainant as part of the licensing
negotiations and Respondent wanted to honor those terms, in the event that
those negotiations resumed.
Respondent acknowledges Complainant’s two trademark registrations but
says they are invalid as at the time of filing the Complaint. Registration
3,025,691 in class 41 is for “providing consultation and instruction in the
field of physical exercise; providing fitness and exercise facilities”.
According to Complainant’s website and a press release there (Exhibits B and C
to the Response), Complainant does not currently use its LOTTE BERK METHOD
trademark in connection with any class offering at its own studios. Currently
there are no licensed studios. Thus there appears to be no current use of
Complainant’s mark for class 41 services, rendering questionable the validity
of its trademark rights in class 41.
Respondent denies that the disputed domain name, which consists only of
the name Lotte Berk (the deceased woman credited with developing the line of
exercises in which Respondent’s instructors have training) is identical or
confusingly similar to Complainant’s LOTTE BERK METHOD mark. Complainant does
not allege confusion with any goods covered by
Respondent says it has legitimate fair use rights to use the name
“Lotte Berk”. The nominative fair use defence to a trademark infringement claim
is available to Respondent, which does not use “Lotte Berk” anywhere on its
website as a trademark but rather accurately and truthfully to describe an
attribute about the training credentials of its instructors. The relevant
passage reads:
“bodyfit is based on
the original exercises created in the late 1950’s by a European dancer named
Lotte Berk to keep her body healthy and supple while rehabilitating from an
injury. Over the years, these exercises
have been refined and developed into techniques that are being taught as the
core of bodyfit. Each instructor in our studio has received extensive
training in the Lotte Berk Method…”
Respondent’s website makes it clear that it is not a Lotte Berk Method
Studio and that its classes are based on the teachings of Lotte Berk.
Complainant provides no evidence that Respondent uses this website to confuse
the public and palm off its services as an authentic Lotte Berk Studio. A mark
may be used for monetary gain if its use is a truthful descriptive use and does
not deceive the public: Prestonettes,
Inc. v. Coty, 264
Respondent denies bad faith registration and use. Complainant has not discharged its burden of
proof.
Having been registered in 1999, the disputed domain name became active
on or about March 30, 2003. Complainant
did not have a website presence until at least February 2004, when it
registered lotteberkmethod.net. Respondent
registered the disputed domain name more than six years before it became aware
of Complainant. Complainant claims it
never knew until recently that the disputed domain name even existed.
Since it was unaware of Complainant and its business activities when it
registered the disputed domain name in 1999, Respondent could not have done so
in an effort to prevent Complainant from using the name. Moreover Respondent in 1999 registered only
the two domain names lotteberkmethod.com and lotteberk.com. This does not constitute a pattern of conduct.
See Home Interiors & Gifts, Inc.
v. Home Interiors, D2000-0010 (WIPO March 7, 2000); see also Ingersoll-Rand Co. v. Frank Gully, D2000-0021 (WIPO March 9, 2000).
Respondent could not have registered the disputed domain name in 1999
to disrupt Complainant’s business because Complainant then had no web-based
presence to disrupt. Complainant has provided no evidence of disruption in 1999
or of revenue lost.
Respondent’s use is descriptive, fair use and there is nothing on its
website suggesting affiliation, sponsorship or endorsement by Complainant.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See Darice, Inc. v.
The Panel has had regard to Complainant’s Additional
Submission only insofar as it responds to Respondent’s claim that Complainant’s
registered trademarks are invalid, which Complainant could not reasonably have
anticipated when it filed the Complaint. Despite the untimely filing of
Respondent’s Reply, the Panel has had regard to it insofar as it responds to
those parts of Complainant’s Additional Submission which the Panel has
admitted.
Complainant’s Additional Submission
Complainant says Registration No. 3,025,691
(‘691 registration), covering “providing consultation
and instruction in the field of physical exercise, providing fitness and
exercise facilities,” is a valid and live
Respondent wrongly alleges invalidity
simply because of a temporary non-use of Complainant’s mark in relation to
Complainant’s exercise studio. The fact
is that Complainant has temporarily closed its
The appropriate way for Respondent to seek legal redress on its assertion of non-validity of Complainant’s trademark registration is to file a proper cancellation proceeding with the Trademark Trial and Appeal Board, not by making statements without the facts to support its theory.
Even without the ‘691 registration, Complainant still maintains its trademark rights in LOTTE BERK METHOD, through common law rights and Registration No. 3,297,297. Therefore, Respondent’s argument of invalidity at the time of filing the Complaint fails.
Respondent’s Reply
Respondent says Complainant admits its mark is not in use and provides no evidence to rebut Respondent’s evidence that the ‘691 registration is invalid nor to establish that it has common law trademark rights.
FINDINGS
Complainant has established all the elements
entitling it to the relief it seeks.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Paragraph 4(a)(i) of the Policy embodies no
requirement that a complainant’s trademark rights must have arisen before the
disputed domain name was registered. See
Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005), and the cases cited therein.
This is not the appropriate forum in which to determine Respondent’s invalidity claims. So long as Complainant’s trademark registrations remain on the USPTO’s Principal Register, the Panel regards them as valid. Accordingly, the Panel finds that Complainant has rights in the registered trademark LOTTE BERK METHOD.
As to whether Complainant also has common law rights in that mark, acquired though use, despite the lack of evidence in the Complaint, Respondent’s Exhibits B and C, on which Respondent relies in contending invalidity, establish to the satisfaction of the Panel that the Lotte Berk Method has been famous for over 30 years; that Lydia Bach bought the world-wide rights to Lotte Berk’s name and technique and opened Complainant, Lotte Berk Method, Ltd, in New York City in 1971. In particular, the website comprising Exhibit C includes the statement: “a best-selling book, four best-selling exercise DVDs, hundreds of Lotte Berk articles (Vogue, Oprah, Elle, Fitness, New York Times, just to name a few), and thousands of user testimonials from celebrities and enthusiasts alike have praised these special Lotte Berk exercises.” There are links to some of the articles mentioned.
The Panel finds that, at the time of the filing of the Complaint, Complainant had common law rights in the mark LOTTE BERK METHOD and, since this is relevant to the other two elements that need to be established, that those rights had been acquired long before Respondent registered the disputed domain name in 1999.
The domain name lotteberk.com is not identical to the LOTTE BERK METHOD trademark.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO March 26, 2002); Britannia Bldg. Soc’y v. Britannia Fraud Prevention, D2001‑0505 (WIPO July 6, 2001); Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000); Koninklijke Philips Elecs N.V. v. In Seo Kim, D2001‑1195 (Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001), and the cases cited therein. See also the similar approach adopted by the U.S. Federal court in N. Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000). In particular, the content of Respondent’s website is irrelevant when considering whether the domain name is confusingly similar to the trademark.
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, is a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?” See SANOFI-AVENTIS v. Jason Trevenio, D2007-0648 (WIPO July 11, 2007).
The specific top level of domain “.com” is inconsequential and to be disregarded. See Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO Jan. 29, 2001); see also Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).
The disputed domain
name incorporates the most distinctive part of the trademark, the name Lotte
Berk. The Panel finds the disputed
domain name to be confusingly similar to the LOTTE BERK METHOD mark.
Complainant has established this element of its case.
Once a complainant establishes a prima facie case
against a respondent, the burden is on the respondent to provide evidence of
its right or legitimate interests under paragraph 4(c) of the Policy. See,
e.g., Cassava Enters. Ltd., Cassava Enters (
Complainant’s assertions that Respondent’s bodyfitstudio.com website is not affiliated with and does not offer any of Complainant’s goods and/or services and that Respondent has never had any rights in the LOTTE BERK METHOD trademark or regimen suffice to establish a prima facie case.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(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;”
Even perfunctory preparations have been
held to suffice for this purpose. See Shirmax Retail Ltd. v. CES Mktg.
Group, Inc., eResolution Case No. AF-0104; see also Lumena s-ka so.o. v.
Express Ventures Ltd., FA 94375 (Nat. Arb. Forum May 11, 2000); see also Royal Bank of
To meet the bona fide offering of goods and services requirement, Respondent must offer the trademarked goods or services and use the site only for the sale of such goods or services. See Oki Data Am., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Here Respondent’s website at www.bodyfitstudio.com, to which the disputed domain name resolves, offers services which differ from Complainant’s, in that they are claimed to be based on the Lotte Berk Method.
Respondent emphatically argues that it has legitimate fair use rights
to use the name “Lotte Berk” and that the nominative fair use defence to a
trademark infringement claim is available, since it does not use “Lotte Berk”
as a trademark on its www.bodyfitstudio.com website but rather uses that name accurately and truthfully to
describe an attribute about the training credentials of its instructors. However,
the terms of the Policy render irrelevant the questions whether there is
trademark infringement and whether there is a good defence to a claim for
trademark infringement.
There is, indeed, nothing objectionable about the content of
Respondent’s website. What Respondent’s
argument fails to address is the use of the disputed domain name to lead people
to that website.
By reason of the reputation of Complainant’s LOTTE BERK METHOD mark, Internet
users entering the disputed domain name into their browsers are likely to be looking
for a website offering Complainant’s services or those of an entity affiliated
with or approved by Complainant. Instead
they find competitive services offered by someone else. This is not use of the
disputed domain name in connection with a bona
fide offering of goods or services. Respondent has failed to displace
Complainant’s prima facie case of
absence of rights or legitimate interests on the part of Respondent.
Complainant has established this element of its case.
On June 5, 1999, Respondent
registered the two domain names lotteberkmethod.com and lotteberk.com. By then, as the Panel has found, Complainant
had acquired common law rights in the LOTTE BERK METHOD mark. Even if Respondent did not then know the identity
of Complainant, Respondent must have known then who Lotte Berk was and what her
method was. The Panel infers that it also
knew that there was a Lotte Berk fitness studio operating in
Further, Respondent accepts that it
was the respondent in Lotte Berk Method Ltd. v. ATTN:
lotteberkmethod.com. In the absence of a Response, the
learned panelist in that case found
that because Respondent’s lotteberkmethod.com
domain name was identical to Complainant’s LOTTE BERK METHOD mark and resolved
to the website of a direct competitor of Complainant, Respondent had registered
and used the lotteberkmethod.com
domain name for the sole purpose of disrupting Complainant’s business.
Here, as noted, Respondent’s
lotteberk.com domain name was registered on the same day as the lotteberkmethod.com domain name. It is confusingly similar to Complainant’s
LOTTE BERK METHOD mark and, following a period of inactivity, it resolves to
the very same website, www.bodyfitstudio.com. This Panel finds that the lotteberk.com domain
name was also registered for the sole purpose of disrupting Complainant’s business.
This is evidence of bad faith
registration and use under the Policy, paragraph 4(b)(iii). Respondent’s argument that since Complainant
had no web presence, Respondent could not have had the purpose of disrupting
Complainant’s business is unpersuasive. Businesses
were only beginning to have a web presence in 1999 and Respondent could easily
have anticipated competition from a website operated by whoever ran the Lotte
Berk Method business, even if Respondent may not have been aware of the identity
of Complainant at the time.
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith. Complainant has established this element of its case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lotteberk.com> domain name be TRANSFERRED
from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 10, 2008
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