Gruner + Jahr Printing & Publishing
Co. v ECORP.COM
Claim Number: FA0206000114587
PARTIES
Complainant
is Gruner + Jahr Printing &
Publishing Co., New York, NY (“Complainant”) represented by Lisa Rosenburgh, of Salans Hertzfeld Heilbronn Christy & Viener. Respondent is ECORP.COM, Indianapolis, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <fitnessmag.com>,
registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 14, 2002; the Forum received a hard copy of the
Complaint June 14, 2002.
On
June 17, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <fitnessmag.com> 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 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 15,
2002 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@fitnessmag.com by e-mail.
Having
received no timely Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 24, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Thereafter,
on July 29, 2002, the Forum notified the Panel that Respondent filed a communication that was untimely. Notwithstanding, the Panel read the
late-filed Response and determined that timely filing would not have affected
the outcome in this matter. Complainant
responded to Respondent’s submission with an untimely additional submission on
August 1, 2002.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<fitnessmag.com> domain name is confusingly similar to
Complainant’s FITNESS and/or FITNESS MAGAZINE marks. Respondent has no rights or legitimate interests in the <fitnessmag.com>
domain name. Respondent registered and
used the <fitnessmag.com> domain name in bad faith.
B. Respondent made the following points in
an untimely response:
Respondent
urged that the domain name was not identical to or confusingly similar to
Complainant’s mark and that Complainant’s mark was generic. Respondent urged
that it had not acted in bad faith.
FINDINGS
Since 1996, Complainant has continuously
used the FITNESS mark as the title of its health-related magazine. Complainant uses the FITNESS mark along with
the FITNESS MAGAZINE mark to identify it as the source of the health-related
periodical.
Complainant also conducts business at the
<fitnessmagazine.com> website.
This website is used by Complainant to promote and offer its products
and services to the general public.
Complainant’s FITNESS MAGAZINE is issued
twelve times a year to as many as 1,050,000 million subscribers annually. Complainant contends that FITNESS MAGAZINE
is among the most famous magazines in the United States and that the FITNESS
and FITNESS MAGAZINE marks have become a valuable source-identifier.
Complainant owns four registered
trademarks from the United States Patent and Trademark Office for various marks
that are substantially similar to the FITNESS mark.
Respondent registered the <fitnessmag.com>
domain name on September 18, 1997.
Complainant’s investigation revealed that Respondent failed to actively
use the domain name in connection with a website. Complainant never licensed or authorized Respondent to use either
the FITNESS or FITNESS MAGAZINE marks.
Complainant learned of Respondent’s
registration of the domain name in 2001.
Subsequently, Complainant attempted to contact Respondent via mail
(twice) and email in order to advise Respondent of Complainant’s interests in
the FITNESS and FITNESS MAGAZINE marks.
Respondent never replied to Complainant’s correspondence.
Respondent’s late-filed Response
contained no evidence to refute any of Complainant’s points other than
Respondent’s subjective statements.
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.”
In view
of Respondent's failure to submit a timely Response, the Panel shall decide
this administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Complainant established rights in the
FITNESS and FITNESS MAGAZINE marks through continuous use in commerce since
1996. Complainant claims, without proof
to the contrary, that the public associates the FITNESS and FITNESS MAGAZINE
marks with Complainant. Complainant and
the public both use FITNESS and/or FITNESS MAGAZINE in reference to
Complainant’s health-related periodical.
The establishment of common law rights in a mark as a source identifier
has been held to be sufficient for the STOP Policy ¶ 4(a)(i) standing
threshold. See British Broad.
Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP
“does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the UDRP to “unregistered trademarks and service marks”); see also
Tuxedos By Rose v. Nunez, FA 95248
(Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its
use was continuous and ongoing, and secondary meaning was established).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
In light of Complainant’s assertion that
Respondent has no rights or legitimate interest in the <fitnessmag.com>
domain name and Respondent’s failure to support any such claims in the
late-filed Response with objective data or proof, it is presumed that
Respondent has no such rights or interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names). Furthermore, the Panel is entitled to make
all reasonable inferences in favor of Complainant in the absence of a timely
Response. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Prior to filing a claim, Complainant
failed to uncover any use of the <fitnessmag.com> domain name by
Respondent. Respondent claimed in the
late-filed Response that it uses the domain name containing Complainant’s mark
to divert Internet users to “our targeted portal SerachNet.com;” yet offered no
substantive objective proof to support that statement and offered no support
for any such right that Respondent would have do use Complainant’s mark in this
manner. In fact, Respondent is passively holding the domain name that bears a
substantial relation, in name, to Complainant’s monthly periodical. Failing to actively use a domain name held
for over five years does not comport with the rights and legitimate interests
requirements in Policy ¶ 4(c)(i) and (iii).
Therefore, pursuant to these sections, Respondent’s passive holding also
warrants a finding of no rights or legitimate interests in the domain
name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, the Respondent had not used the domain
names in connection with any type of bona fide offering of goods and services);
see also Vestel Elektronik Sanayi
ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <fitnessmag.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
The bad faith circumstances, presented in
Policy ¶ 4(b), do not represent an exhaustive list of what warrants a finding
of bad faith. The Panel must refer to
the totality of circumstances in order to determine the propriety of a bad
faith registration or use holding. See
Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <fitnessmag.com> be TRANSFERRED from Respondent
to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: August 6, 2002.
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