Gruner + Jahr Printing & Publ’n Co. v. Web Mktg. Inc.
Claim Number: FA0407000295211
Complainant is Gruner + Jahr Printing & Publ’n Co. (“Complainant”), represented by Lisa Rosenburgh, of Sullivan & Worcester LLP, 1290 Ave. of the Americas, New York, NY 10104. Respondent is Web Mktg., Inc. (“Respondent”), represented by Maria V. Hardison, of Tassan & Hardison, 4143 No. 27th Street, Arlington, VA 22207.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fitnessmags.com>, <fitnessmegazine.com> and <fitnessmegazineonline.com>, registered with Bulkregister, Llc.
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.
Jeffrey N. Mausner as sole Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 8, 2004; the Forum received a hard copy of the Complaint on July 9, 2004.
On July 12, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain names <fitnessmags.com>, <fitnessmegazine.com> and <fitnessmegazineonline.com> are registered with Bulkregister, Llc. and that the Respondent is the current registrant of the names. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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”).
A timely Response to the Complaint was received and determined to be complete on August 2, 2004.
On August 11, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey N. Mausner as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant alleges the following:
Complainant, Gruner + Jahr Printing & Publishing Co., has continuously used the trademark FITNESS as the title of a magazine in the United States since at least as early as March 1996. The magazine is now and has always been known and referred to as FITNESS and/or FITNESS MAGAZINE (collectively the “FITNESS Marks” or “Complainant’s Marks”). The public perceives the FITNESS Marks to refer solely to Complainant and its publication. Complaint ¶ 10.
FITNESS MAGAZINE is issued twelve times a year with a circulation in the United States of over 1.5 million annually. FITNESS MAGAZINE is among the most famous magazines in the United States and is among Complainant’s most valuable assets. Complaint ¶ 11.
Complainant currently holds six United States Patent and Trademark Office registrations for or incorporating the FITNESS Marks, under the following registration numbers: 2,190,637; 2,499,964; 2,499,965; 2,529,713; 2,641,882 and 2,783,962. Complaint ¶ 12. As relevant to this decision, Complainant uses the <fitnessmagazine.com> and <fitnessmag.com> domain names to promote and offer its products and services. Complaint ¶ 13.
On February 2, 2004, Complainant learned that Michael O’Meara, with contact information which is identical to that of Respondent, registered the domain names <fitnessmagonline.com> and <fitnessmagazineonline.com>. Complaint ¶ 14. After Complainant requested that Mr. O’Meara transfer the domain names to Complainant, Mr. O’Meara did so. Complaint ¶¶ 15-16.
On May 24, 2004, Complainant learned that Respondent registered the domain names <fitnessmegazine.com> and <fitnessmegazineonline.com> on May 11, 2004, a date which is subsequent to the date Respondent had received actual notice of Complainant’s claims to its FITNESS Marks. Complainant, through its Attorneys, sent a letter to Respondent dated May 26, 2004, requesting the transfer of these domain names. (Complaint ¶17.)
On June 4, 2004, Complainant learned that Respondent registered the domain name <fitnessmags.com>. This domain name appears to have been registered by Respondent on February 12, 2001. On June 7, 2004, Complainant sent an email to Michael O’Meara requesting that he advise whether he is the registrant of the three Disputed Domain Names or whether he is in any way connected to Edwin O’Meara (the Administrative Contact for Respondent), and, if so, inviting his continued cooperation in transferring the Disputed Domain Names to Complainant. Complaint ¶ 18. Michael O’Meara responded that he has “referred this one” to his lawyer. Complaint ¶ 19.
To the best of Complainant’s knowledge, Respondent is not offering the sale of any goods or services under the Disputed Domain Names and is not known by these names, and has not conducted any legitimate business under these names. Rather, Respondent appears to do business only under the name MEGA FITNESS. Complaint ¶ 21.
To the best of Complainant’s knowledge, there is not now, nor has there ever been, an active website at <fitnessmags.com> or <fitnessmegazineonline.com>. As of June 4, 2004, the domain name <fitnessmags.com> did not point to an active website. As of July 6, 2004, the domain name <fitnessmags.com> redirects the user to the website at <megafitness.com>, which is a website devoted to the sale of exercise equipment, and which also contains a link to Respondent’s website at <fitnessmegazine.com>. The owner of the megafitness.com website is either the same entity as Respondent, or is related to Respondent. Complaint ¶ 22. The domain name <fitnessmegazineonline.com> also redirects the user to the website at <megafitness.com>. Complaint ¶ 23. The domain name <fitnessmegazine.com> currently points to an active website containing an online magazine titled Mega Fitness. Complaint ¶ 24.
Complainant contends that the Disputed Domain Names are identical or confusingly similar to its FITNESS Marks; that Respondent has no rights or legitimate interests in the Disputed Domain Names; and that the Disputed Domain Names were registered and are being used in bad faith.
B. Respondent alleges the following:
Complainant owns the following federal registrations for magazines:
FITNESS MIND BODY SPIRIT FOR WOMEN and Design
MIND BODY & SPIRIT FITNESS
MIND BODY & SPIRIT FITNESS and Design
Complainant owns the following federal registration for a series of books and an online magazine:
Complainant owns the following federal registration for model search contests:
FACE OF FITNESS.
Respondent disputes that Complainant has exclusive rights to use the mark FITNESS and FITNESS MAGAZINE and that the Disputed Domain Names are confusingly similar thereto. None of Complainant’s registrations include the wording “mags,” “magazine,” or “online” and most contain significant other wording. All of Complainants’ registrations have been registered under Section 2(f) of the Lanham Act. Respondent contends that this is an admission by Complainant that the word “fitness” would have been unregistrable because it is descriptive under Section 2(e) of the Lanham Act, had Complainant not claimed that the mark had “become distinctive in commerce of the goods or services set forth in the application,” (i.e., acquired secondary meaning). 37 C.F.R. ¶2.41. Response ¶¶ 6(a)(i-iii).
Respondent, aware that numerous parties were using the term “fitness” as part of a magazine title, believed that it was entitled to use the term “fitness” in connection with other wording or in a generic sense. Respondent believes that its use of the generic term “fitness” and the generic plural term “mags” eliminates any likelihood of confusion because such wording can refer to any fitness magazine, of which there are many, or the mere fact that Respondent’s website contains links to fitness magazines for sale by others. Unless Complainant has cornered the market on all fitness magazines, it is unlikely and illogical that an Internet user would believe Respondent is referring to Complainant’s magazine and, consequently, intending to benefit from an association therewith. The generic phrases “fitness mags” and “fitness magazines” are so widely used by others that Complainant cannot possibly claim exclusive rights to this wording. The use of two generic terms by Respondent is unlikely to cause confusion because FITNESSMAGS.COM merely conveys to the public that Respondent’s website will relate to “fitness magazines.” Response ¶¶ 6(a)(iv-vi).
Respondent’s use of the term “megazine” distinguishes Respondent’s domain names and does not constitute “typo-piracy.” Respondent owns a family of MEGA marks and Respondent’s use of the domain names <fitnessmegazine.com> and <fitnessmegazineonline.com> is merely an extension of its efforts to use and register the family of MEGA marks. Complainant has provided no evidence of actual confusion. Response ¶¶ 6(a)(vii-viii). Thus, Respondent’s domain names are not confusingly similar to the marks registered by Complainant.
Respondent is the owner of federal registration no. 2,336,328 for the mark MEGAFITNESS and a number of other marks incorporating the house mark MEGA.
Respondent adopted <fitnessmegazine.com> and <fitnessmegazineonline.com> because it has a family of marks identified by the term MEGA. The use of these domain names is meant to play off Respondent’s federal registrations, not Complainant’s. Response ¶ 6(b)(i).
Respondent provides a free online publication in the field of health and fitness at the website <fitnessmegazine.com>. The use of the mark MEGAFITNESS is prominent on every page of the newsletter. On the home page, there is a link to Respondent’s website <megafitness.com>. Respondent’s use of the domain name is in connection with its bona fide offering of products on its website <megafitness.com>, which Respondent has operated since 1998. Respondent is not selling publications in the field of fitness, but merely providing articles free of charge to those interested in the field of fitness. Response ¶ 6(b)(ii).
Respondent uses the domain name <fitnessmags.com> to point to its active website <megafitness.com> where it connects to websites of third parties who sell magazines in the field of fitness. In addition, Respondent, approximately two years ago and well before it was contacted by Complainant, contacted MagazineCity.com for the purpose of creating a website to sell fitness magazines published by third parties. The domain name <fitnessmags.com> was registered for this purpose. The domain name <fitnessmegazineonline.com> does not currently point to an active domain name. Response ¶ 6(b)(iii-iv). Thus, Respondent has a legitimate interest in the Disputed Domain Names.
Respondent believes that the domain name <fitnessmags.com> contains only generic terms. Respondent adopted the domain name due to its generic nature and its desire to identify a website featuring multiple magazines/publications on fitness. The use of the Disputed Domain Names by Respondent is not intended to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's FITNESS mark. Response ¶ 6(c)(i-ii).
When Respondent registered the domain names <fitnessmagonline.com> and <fitnessmagazineonline.com> and Complainant objected to the registration, Respondent agreed to transfer the domain names to Complainant without any payment to Respondent. This established Respondent’s good faith and cooperation with Complainant. When Respondent later registered the domain names <fitnessmegazine.com> and <fitnessmegazineonline.com>, it believed that Complainant would not object to or want to use the disputed domain names. At no time has Respondent tried to extort money from Complainant in exchange for the transfer of the domain names. Response ¶ 6(c)(v-vii). Thus, Respondent did not register or use the Disputed Domain Names in bad faith.
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 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; and
(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.
On first impression, Respondent’s domain name <fitnessmags.com> is confusingly similar to Complainant’s <fitnessmag.com>, the only difference being an “s” added to Respondent’s domain. Likewise, Respondent’s domain name <fitnessmegazine.com> is confusingly similar to Complainant’s <fitnessmagazine.com>, the only difference being the use of an “e” rather than the correct spelling of magazine with an “a”. The third domain name in dispute, <fitnessmegazineonline.com> merely adds the descriptive “online” to <fitnessmegazine.com>, and therefore raises the same issues as <fitnessmegazine.com>. Under the first element of Paragraph 4(a), whether the domain name is confusingly similar to Complainant’s marks, the obvious similarities between Respondent’s and Complainant’s domain names leaves only the question of whether any defenses exist which allow Respondent to retain ownership of the names.
Complainant has rights in the mark FITNESS for an online magazine, through its federal registration number 2,499,964. Complainant has developed common law rights in the mark FITNESS MAGAZINE, by use with its magazine. Although it is clear that those marks are descriptive, the federal registration of the FITNESS mark and related marks by the United States Patent and Trademark Office establishes that Complainant’s marks have acquired secondary meaning. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive or have acquired secondary meaning). Therefore, Complainant’s marks are valid and enforceable trademarks/service marks. Complainant has developed rights in a family of marks incorporating the term FITNESS, through its federal registrations and common law use.
However, Complainant cannot prohibit others from using the terms “fitness” or “fitness magazine” in a descriptive sense which does not create confusion. Even if the mark in question has become incontestable, a defense exists for a party in an infringement action for use “of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.” Lanham Act §33(b)(4), 15 U.S.C §1115(b)(4). The basis for this rule is that if a term is being used in such a descriptive sense, there will be little chance of confusion between that use of the term and the mark.
In the present case, however, there is a likelihood of confusion. Confusion could result from Respondent’s use of the <fitnessmags.com> domain name, because Complainant has developed secondary meaning for the registered mark FITNESS for an online magazine, for the common law mark FITNESS MAGAZINE for its magazine, and for its domain name <fitnessmag.com>. Internet users associate these names with the Complainant, and would naturally associate the very similar domain name <fitnessmags.com> with Complainant as well. Because the only difference between Complainant’s domain name <fitnessmag.com> and Respondent’s domain name <fitnessmags.com> is the letter “s,” persons intending to access Complainant’s website could accidentally access Respondent’s website instead, resulting in initial interest confusion.
Respondent’s domain name completely incorporates Complainant’s marks. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).
Furthermore, a potential defense to descriptiveness is weakened by the fact that Respondent is not actually using the <fitnessmags.com> domain name for a website that sells fitness magazines. Until recently, Respondent did not use the domain name at all. After this proceeding was filed, Respondent began using the domain name <fitnessmags.com> to redirect the user to the website at <megafitness.com>, which is a website devoted to the sale of exercise equipment, and which also contains a link to Respondent’s website at <fitnessmegazine.com>. This use by Respondent is too attenuated to be considered use in a purely descriptive sense. Respondent is using the domain name more to sell its fitness equipment than for a website that provides an online fitness magazine or sells fitness magazines. This non-descriptive use of the domain name makes it even more confusing. Consumers could believe that Complainant is affiliated with Respondent’s exercise equipment sold on its website.
The <fitnessmags.com> domain name is therefore confusingly similar to Complainant’s marks and <fitnessmag.com> domain name.
The other two domain names in question, <fitnessmegazine.com> and <fitnessmegazineonline.com>, are confusingly similar to Complainant’s marks and domain name <fitnessmagazine.com>, since there is no English word “megazine,” and there is only one letter difference between Respondent’s domain name and Complainant’s (with the addition of the term “online” in the second name). Respondent’s website could receive traffic meant for Complainant’s website if a person misspelled magazine as megazine. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings of Dave Matthews Band and therefore confusingly similar).
Since it has been determined that Respondent is not using the <fitnessmags.com> domain name in a non-confusing, purely descriptive sense, Respondent has no rights or legitimate interests to use the domain name. Respondent does not have a trademark or service mark incorporating that name, and Respondent is not known by that name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is one factor in determining that Respondent does not have a right or legitimate interest in the domain name); Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (Respondent does not have rights in a domain name when Respondent is not known by the mark).
The domain names <fitnessmegazine.com> and <fitnessmegazineonline.com> present a more difficult case on this second element of Paragraph 4(a). These two domain names incorporate the words MEGA and FITNESS, found in one of Respondent’s registered marks, MEGAFITNESS (Reg. No. 2,336,328), and other of Respondent’s marks using the word “mega.” Respondent creates a play on words by adding “zine” to “mega,” to sound like magazine. Respondent has had rights in the MEGAFITNESS mark for almost as long as Complainant has had rights in the FITNESS mark -- Respondent applied to register the MEGAFITNESS mark in June 1999, and it was registered on March 28, 2000. Respondent has been using the mark MEGAFITNESS since 1998.
However, <fitnessmegazine.com> is just too close to Complainant’s trademarks and domain name <fitnessmagazine.com>. It is not Respondent’s actual trademark, which is MEGAFITNESS, rather than FITNESSMEGA. Because of that, Respondent’s domain names are much closer to Complainant’s marks and domain name than they are to Respondent’s MEGAFITNESS mark, and therefore Respondent does not have rights or legitimate interests to use the domains in a manner that will cause confusion with Complainant’s marks and domain name.
Respondent has gone through several domain names which have been objectionable to Complainant. Respondent voluntarily transferred some of the objectionable domain names, and then when it selected new domain names was confronted with this domain name dispute proceeding. It should be noted that this panelist believes that there should be no objection to Respondent’s use of the domain names <megafitnessmagazine.com> or <megafitnessmag.com>, since those domains incorporate Respondent’s actual mark and are sufficiently different from Complainant’s marks and domains to prevent confusion.
Respondent adopted the domain names in issue with knowledge of Complainant’s similar marks and domain names. The <fitnessmegazine.com> and <fitnessmegazineonline.com> domain names were adopted after Respondent had received complaints from Complainant about use of other similar domain names. The closeness of these domains to Complainant’s FITNESS marks and its domain name <fitnessmagazine.com> gives rise to the inference that Respondent adopted this name with some expectation that there would be some Internet users who would misspell Complainant’s widely used domain name and end up being diverted to Respondent’s website, where they might buy fitness equipment. Consumers who end up on Respondent’s website in some other way, such as through a search engine, could also be initially confused as to whose website they are on. While Respondent’s ownership of the MEGAFITNESS mark may allow an argument that FITNESSMEGAZINE is simply a play on words, the similarity of the domain chosen by Respondent to Complainant’s domain is sufficient to establish bad faith. If Respondent simply wanted a domain name which incorporated its registered mark and the word “magazine,” it could have chosen the domain <megafitnessmagazine.com>, rather than one which would result in the diversion of traffic from the transposition of one letter.
While Respondent registered the domain name <fitnessmags.com> well before its earlier dispute with Complainant, it is still more likely than not that it was aware of Complainant’s marks and domain name <fitnessmag.com>. Fitness Magazine is a well-known magazine. Respondent, which is in the fitness equipment business, must have been aware of Fitness Magazine. Once again, the closeness of the domain chosen by Respondent indicates an expectation that there would be some Internet users who would add an “s” to Complainant’s widely used domain and end up being diverted to Respondent’s website, where they might buy fitness equipment. By the time Respondent actually began using the <fitnessmags.com> domain name, there is no question that it was aware of Complainant’s FITNESS marks and <fitnessmag.com> domain name. Once again, there is an inference that Respondent registered and used this domain with the expectation that there would be diversion of traffic from Complainant’s website.
Such registration and use of domain names constitutes bad faith pursuant to ¶ 4(b)(iv) of the Uniform Domain Name Dispute Resolution Policy, which provides as follows:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: …
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.”
See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).
Internet users who mistakenly type in Respondent’s domain names will no doubt eventually realize that they are not on the Complainant’s website. However, initial interest confusion, the diversion of Internet users momentarily to a website, is actionable confusion, and can support a finding of bad faith. See Brookfield Commun., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999).
Complainant has established all three elements required under the Uniform Domain Name Dispute Resolution Policy, and relief shall therefore be GRANTED. The domain names <fitnessmags.com>, <fitnessmegazine.com> and <fitnessmegazineonline.com> shall be transferred from Respondent to Complainant.
Jeffrey N. Mausner, Panelist
Dated: September 8, 2004
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page