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Bally Total Fitness, Inc. v. Mike Torres, a/k/a/ Dallas Internet Service, a/k/a/ Global Media Consulting [2001] GENDND 1269 (11 July 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Bally Total Fitness, Inc., a Delaware corporation, with its principal place of business in Chicago, Illinois, USA ("Bally").

Respondent is Mike Torres, allegedly known also as Dallas Internet Services and as Global Media Consulting. Mike Torres appears to have a mailing address in Miami, Florida, USA ("Torres"). Dallas Internet Service appears to have a mailing address in Dallas, Texas, USA ("Dallas"). Global Media Consulting appears to have a mailing address which is the same as Torres’s mailing address ("Global").

The domain name in issue is <ballysfitness.com>.

The registrar is TUCOWS.COM, INC., located in Toronto, Canada ("Tucows").

The WIPO Arbitration and Mediation Center (the Center) received Bally’s complaint via email on April 14, 2001, and in hard copy on April 17, 2001. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Bally made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 24, 2001.

On April 18, 2001, the Center transmitted via email to Tucows a request for registrar verification in connection with this case. On April 18, 2001, Tucows transmitted via email to the Center Tucows’s confirmation that (1) Dallas is the registrant of the domain name in issue, (2) the Policy applies to the domain name, and (3) the current status of the domain name is "currently on hold ... , to ensure that no changes of Registrar or ownership occur for the duration of the dispute."

On April 24, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to Dallas via email and post/courier to Dallas’s email and mail addresses in Dallas. The couriered documents were apparently refused by the addressee. In the Notification, the Center advised that the response was due by May 13, 2001, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by May 13, 2001, -- including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default. It appears from WIPO records that the emailed Notification was delivered and opened by Dallas.

On May 15, 2001, the Center transmitted via email to Dallas Notification of Respondent Default, advising Dallas inter alia (1) it had failed to comply with the deadline for submissions of a response, (2) the Center would proceed with the appointment of an Administrative Panel, (3) the Panel would decide in its discretion whether to consider a response if one were to be submitted later. It appears from WIPO records that this emailed Notification was delivered and opened by Dallas.

On June 13, 2001, the Center advised the parties via email of the appointment of David W. Plant as Presiding Panelist and Michael Albert and Ross Carson as Panelists, and that the decision was due June 27, 2001.

The complaint is based on the marks BALLY TOTAL FITNESS and <ballyfitness.com>.

Bally avers that it owns registrations in the United States for the BALLY TOTAL FITNESS mark. Copies of seven certificates of registration with the United States Patent and Trademark Office appear at Annex F to the complaint. First use in commerce is asserted in one registration to have been as early as August 1, 1990. Bally asserts all seven registrations are valid, subsisting, and in full force and effect.

Bally avers it has owned, used and operated the service mark and Internet domain name <ballyfitness.com> continually in interstate commerce since 1995.

Bally avers it is "the largest and only nationwide commercial operator of fitness centers in the United States." It states it has "approximately 4 million members and 335 locations in 27 states and Canada." Bally avers it has used both marks continually in connection with its fitness centers and related goods and services.

Bally avers that all three elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in issue is identical or confusingly similar to a mark in which Bally has rights,

2. respondent has no rights or legitimate interests in the domain name; and

3. the domain name was registered and is being used in bad faith by respondent.

Bally asserts the domain name at issue is confusingly similar to Bally’s mark BALLY TOTAL FITNESS and its mark <ballyfitness.com>. Bally states that the pronunciation of the terms is nearly identical and the domain name is a likely misspelling of <ballyfitness.com>. Bally cites four WIPO decisions to the effect that domain names containing common misspelling of trademarks are confusingly similar to such marks. The cases cited are WIPO Cases Nos. D2000-0323, D2000-0548, D2000-0578, and D2000-0869, respectively.

Bally asserts respondent has no rights or legitimate interests in the domain name in issue, stating respondent does not own a trademark registration "covering the mark [sic]," and has had no common law use of the mark prior to Bally’s adoption and use of its two marks.

Bally avers respondent has registered and used the domain name in issue in bad faith in light of the following chronology of events:

Torres registered the domain name <ballysfitness.com> on February 29, 2000. Until March 23, 2001, Global directed traffic from the <ballysfitness.com> web site to "a site that features the ‘First Card’ credit card." Bally is not affiliated with First Card. (Footnote 1)

Torres, a/k/a Global Media Consulting, own more than 50 domain names, "many of which are variations of famous third-party trademarks and service marks," such as <maxwelhouse.com>,<jcpenys.com>, and <fiedlanstream.com>. Printouts from WHOIS searches appear at Annex A to the complaint.

On March 23, 2001, WHOIS registration information was changed to show Dallas Internet Services as the owner. Dallas has no registration "covering the mark" and had no common law use before Bally’s adoption and use of its two marks. Dallas owns domain names that are "variations of famous third-party trademarks and service marks," such as <natonalgeograhic.com>, <nationlgeographic.com>, and <nissandrive.com>. Printouts from WHOIS searches appear at Annex C to the complaint.

In addition to the confusing similarity of Bally’s two marks and the domain name in issue, registration of numerous domain names that incorporate well-known trademarks, for which registrant could not reasonably make legitimate use, "are evidence of both a lack of legitimate interest and bad faith use and registration under the Policy." Bally cites WIPO Case No. D2000-0032.

Respondent currently markets on the <ballysfitness.com> site "vacation rental services, free credit reports, credit cards, gambling, debt relief, electronics and hotels." Bally has neither endorsed nor sponsored any of these products or services. Respondent has "intentionally attempted to attract, for commercial gain, Internet users to the web site "ballysfitness.com" by creating a likelihood of confusion" with Bally’s marks as to source, sponsorship, affiliation, or endorsement of the web site of a product or service featured on the web site.

Global and Dallas are not legal entities. The provision of false contact information is further evidence of respondent’s bad faith, citing WIPO Cases Nos. D2000-0003, D2000-0138, and D2000-0817.

Bally requests that the domain name in issue be transferred to Bally.

The complaint concludes with the requisite certificate as to completeness and accuracy and is signed by Bally’s counsel.

In light of respondent’s failure to respond, the Panel has elected to decide this dispute based upon the complaint. Rules, Paragraphs 5.(e) and 14.(a).

Paragraph 4.(a) of the Policy directs that Bally must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to a mark in which Bally 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.

Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence of a respondent’s registration and use of a domain name in bad faith.

Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

The true identity of respondent must be taken as accurately averred by Bally. In Annex A to the complaint, Torres is shown in some WHOIS printouts as the Administrative and Billing Contacts for domain names registered by Global. Torres’s and Global’s mailing addresses are identical. The domain servers are shown in Annexes A, B and C as the same for Global and for Dallas. As shown in Annexes A and C, Technical Contacts are the same for Global and Dallas. In light of this record, it is fair to infer that Bally’s averments on this score are correct, namely that Torres, Global and Dallas are indeed the same entity.

The Panel has assured itself that the parties have been treated with equality and respondent has been given a fair opportunity to present its case. Rules, Paragraph 10.(b). Accordingly, in the Panel’s view, respondent has been afforded due process.

Bally has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy. It is especially important in a default situation that a complainant meet its burden of proof.

Bally contends that its marks and respondent’s domain name are confusingly similar. Bally points to the similarities between the domain name and the dominant portions of Bally’s two marks and to authority to the effect that differences of the kind here do not detract from a finding of confusing similarity. Bally points also to respondent’s practice of registering variations on well-known marks, compelling the inference that respondent intends to create confusion.

There is no question from this record that Bally has rights in the two marks on which it relies. The disputed domain name, <ballysfitness.com>, differs by only one letter, the common suffix "s", from Bally’s mark <ballyfitness.com>. The dominant portion of both the domain name and Bally’s mark (and of Bally’s other marks) is the same strong, arbitrary, and distinctive mark "Bally". Some of the goods and services provided on respondent’s web site (e.g. credit cards) overlap with goods or services covered by Bally’s trademark registrations. In short, the result is likely to be confusion as to source, origin, sponsorship, or affiliation.

The Panel finds that the domain name and the two Bally marks are confusingly similar. Accordingly, Bally has carried its burden on this element of Paragraph 4.(a).

Bally has demonstrated (1) Bally’s ownership of the two marks, (2) the validity of the two marks, (3) continuous use of the marks since 1990 and 1995, respectively -- both years before respondent registered the domain name, (4) the acclaim and good will associated with the marks, and (5) the lack of any right or interest in the mark or the domain name on the part of respondent.

Bally has averred without contradiction that respondent’s use of the domain name in issue has been without authorization of Bally. Also, many of the products and services offered by respondent at the site in issue have nothing to do with Bally, and such offers have not been authorized by Bally.

Here, also, Bally has carried its burden of proof.

In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Bally.

The Panel finds that Bally has proven that repondent’s conduct evidences bad faith registration and use under the Policy, Paragraph 4.(b)(iv).

It is beyond any dispute that respondent has used the domain name intentionally to attract for commercial gain Internet users to respondent’s web site by creating a likelihood of confusion with Bally’s two marks. Respondent has registered and used the domain name to create a site through which respondent offers goods and services unaffiliated with Bally. This evidences respondent’s bad faith both in registration and in use of the domain name in issue. In addition, respondent has registered many other domain names which are variations on well-known marks -- a pattern manifesting classical cybersquatting. Also, respondent is not well served by the apparent attempt to hide the true identity of the owner of the domain name registration in issue here.

In light of the findings by the Panel, the Panel decides that Bally has met its burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).

Accordingly, the Panel requires that the registration of the domain name <ballysfitness.com> be transferred to Bally.

David W. Plant
Presiding Panelist

Michael A. Albert
Panelist

Ross Carson
Panelist

Dated: June 28, 2001

1. Bally’s Registrations Nos. 2,360,487 and 2,373,149 are for "credit card services," with first use asserted as December 7, 1999. The other five Bally registrations are for health and fitness club services or nutritional supplements and the like. (back to text)