DECISION

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.

Identical to and/or Confusingly Similar

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 domain name registered by Respondent, <fitnessmag.com>, is confusingly similar to Complainant’s FITNESS and FITNESS MAGAZINE marks.  Complainant uses the marks for its monthly periodical related to health and fitness.  Respondent uses the common word “fitness” in the domain name but because it is used in conjunction with “mag” it is confusingly similar to Complainant’s mark and associated product.  This is because “mag” is a common abbreviation for “magazine.”  Hence, Respondent’s entire domain name has a relation to Complainant’s business and products.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

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”).

Complainant never authorized Respondent to use Complainant’s marks; Complainant never empowered Respondent with a right to use its marks; and Respondent has provided no proof of apparent connection with Complainant’s business or the magazine industry.  Respondent is not commonly known by the <fitnessmag.com> domain name or the FITNESSMAG moniker.  Thus, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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.

Registration and Use in Bad Faith

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”).

Respondent’s passive holding of the <fitnessmag.com> domain name represents both bad faith registration and use.  An inactive use for over five years of a domain name that is confusingly similar to another entity’s mark leads to the inference of bad faith.  See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

            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.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1356.html