Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Rodale, Inc., a corporation organized and existing under the laws of the State of Pennsylvania, with a principal place of business at 33 East Minor Street, United States of America.

Respondent is Cambridge, located at 3555 NW 74^th Avenue, Miami, Fl 33122, United States of America.

The domain name at issue is <scubadiving.biz> (the "Domain Name"). The Domain Name was registered with IHoldings d/b/a Dot Registrar.com (the "Registrar"), Miami, FL 33172 , United States of America, on March 27, 2002.

Complainant filed its Complaint with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on April 27, 2002, and in hardcopy on April 29, 2002. The Complaint was filed pursuant to the Start-up Trademark Opposition Policy for .BIZ ("the STOP") adopted by NeuLevel and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and is in accordance with the Rules under that Policy ("the STOP Rules") and the WIPO Supplemental STOP Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").

On May 14, 2002, the Center transmitted a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent. Copies of the Complaint were also sent to ICANN and the Registrar. The Respondent was notified by email and by Federal Express to the addresses provided in the Domain Name registration. Federal Express has confirmed that it delivered the Center’s package to Respondent’s address on May 17, 2002.

Respondent was advised that a Response to the Complaint was required within 20 calendar days, or June 3, 2002. Respondent did not submit a Response.

On June 13, 2002, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.

Complainant is the owner of U.S. trademark registrations for the mark RODALE’S SCUBA DIVING used in connection with a magazine on scuba diving. (Registration Nos. 1,759,846, registered March 23, 1993, and 2,447,396, registered May 1, 2001). Complainant has been using the mark since 1992 for its magazine. Complainant also has registered the domain names <scubadiving.com> and <scubadiving.info>.

Although not disclosed in the Complaint, the Panel has learned (from the U.S. Patent and Trademark Office ("PTO") website) that Complainant has also registered the trademark <scubadiving.com> (Reg No. 2,458,750). That mark, however, has been registered in the supplemental registry, which is for descriptive marks for which secondary meaning has not been proven.

Respondent registered the domain name <scubadiving.biz> on March 27, 2002. The statement on Respondent’s address, as provided in WHOIS, says: "This domain is for sale." Respondent has not provided any information about the domain name and has not responded to the Complaint.

Complainant asserts that each of the elements specified in Paragraph 4(a) of STOP are satisfied.

Complainant asserts that the Domain Name is identical to and/or confusingly similar to its trademark RODALE’S SCUBA DIVING and to its domain names <scubadiving.com> and <scubadiving.info>.

Complainant argues that Respondent has no rights or legitimate interests in the domain name. The totality of Complainant’s claim in this regard reads: "As Respondent well knows, Respondent is not part of or affiliated with Complainant and its SCUBADIVING goods and services. There is no legitimate reason for Respondent to register or use Complainant’s mark in its domain name, and no explanation for doing so."

Complainant contends that Respondent has registered the Domain Name in bad faith because Respondent registered the Domain Name with the intent to create a likelihood of confusion and appropriating and trading upon Complainant’s goodwill and reputation.

In addition, Complainant alleges respondent is a domain re-seller, and therefore registered in bad faith.

In order to succeed in its claim, Complainant must establish all three of the elements in Paragraph 4(a) of the STOP:

(i) the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered or used in bad faith.

Complainant has failed to establish the threshold, first element necessary to succeed on the STOP claim: that it owns trademark rights and that the Domain Name is identical to that trademark. The words "scuba diving," when used for a publication or internet site related to scuba diving, appear to be generic or at least highly descriptive. Pet Warehouse v. Pets.Com, WIPO Case No. D2000-0105 (April 13, 2000). "Scuba diving" is defined in the dictionary as "skin diving with scuba apparatus." (www.dictionary.com) "Scuba diving" is not merely one of many generic names for the activity that is the subject of Complainant’s publications, it is the only name used to describe skin diving with scuba apparatus. To allow any party to have monopoly rights to use the term "scuba diving" as a trademark in connection with the sport of scuba diving would hinder the public’s ability to describe and refer to the sport.

Even if "scuba diving" was not a generic term, Complainant has not submitted evidence that the phrase "scuba diving," as used by Complainant, has acquired secondary meaning. To the contrary, the record supports a finding that Complainant’s mark lacks secondary meaning. That is because, in the two trademark registrations on which Complainant relies, Complainant was forced to disclaim any rights in the phrase "scuba diving" except when used in conjunction with the word "Rodale’s."

The conclusion that "scuba diving" lacks secondary meaning is reinforced by the PTO’s refusal to register <scubadiving.com> on the principal registry. This is powerful evidence that the PTO believes that the mark "scuba diving" is at least descriptive, and that Complainant lacks persuasive evidence to the contrary (or else it would have submitted it to the PTO rather than agree to registration on the supplementary registry). Cf. Pet Warehouse, supra (complainant’s abandonment of trademark application, in face of PTO refusal to register on grounds of descriptiveness, is evidence that mark lacks secondary meaning); Shopping.com v. Internet Action Consulting, WIPO Case No. D2000-0439 (July 28, 2000); Decision Analyst, Inc. v. Dohring, WIPO Case No. D2000-1630 (February 6, 2001).

For all these reasons, the Panel holds that Complainant has failed to satisfy paragraph 4(a)(i) of the STOP. That does not, however, end the Panel’s inquiry. Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking. That is true notwithstanding that Respondent has not requested such a finding, and even in the absence of a Response, because the Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the STOP in bad faith to attempt to deprive a registered domain name holder of a domain name. STOP Rule 15(d) ("If after considering the submissions the Panel finds that the complaint was brought in an attempt at Reverse Domain Name Hijacking the Panel shall state its findings to this effect in its decision.") (emphasis added).

The Panel finds that the Complaint was brought in bad faith. First, Complainant conspicuously failed to mention in the Complaint the material facts that (1) that it disclaimed any exclusive rights to the phrase "scuba diving" in the two trademark registrations on which it relied, and (2) that <scubadiving.com> is registered only on the supplemental registry. The failure to bring these material facts to the Panel’s attention constitutes a bad faith abuse of the STOP process. Cf. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July, 6, 2001) (criticizing Respondent for misconduct in UDRP proceeding). Second, and in any event, the Complaint is so lacking in merit that it can only have been brought in a bad faith effort to deprive the Respondent of its domain name. STOP Rule 1. Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001). Taken together, these facts warrant a finding of Reverse Domain Name Hijacking.

The Panel finds that the Complainant has failed to establish rights in the mark "scuba diving" and has failed to show that the Domain Name <scubadiving.biz> is identical to its mark "Rodale’s Scuba Diving." Accordingly, Complainant has failed to satisfy Paragraph 4(a)(i) of the STOP. The Panel therefore rejects the STOP Complaint and denies the request to transfer the Domain Name to the Complainant. Moreover, in light of the frivolous nature of Complainant’s Complaint and Complainant’s attempt to mislead the Panel by omitting material evidence from its Complaint, the Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.