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, Emmaus, Pennsylvania 18098-0099, United States of America. The Complainant is represented in this proceeding by Kevin G. Smith and Cynthia Clarke Weber, Sughrue Mion, PLLC, 2100 Pennsylvania Avenue, N.W., Washington, DC 20037-3213, United States of America.

The Respondent in this proceeding is Christianne Schelling, an individual whose address is P.O. Box 58, Three Rivers, California 93271, United States of America.

The domain name in dispute is <healthywoman.biz>.

The registrar for the disputed domain name is Network Solutions, Inc., 21355 Ridge Top Circle, Lakeside 3, Dulles, Virginia 20166, United States of America.

This dispute is to be resolved in accordance with the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the WIPO Supplemental STOP Rules).

The Complaint was filed on April 26, 2002, by e-mail, and on April 30, 2002, in hard copy. Complainant submitted an amended Complaint on May 2, 2002, by e-mail, and on May 6, 2002, in hard copy.

On May 9, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On May 31, 2002, the Center sent a Notification of Respondent Default to Respondent. From May 31, 2002, to June 4, 2002, there were e-mail communications between the Center and Respondent. The Respondent claimed to have submitted a Response but the Center never received such a Response.

The Administrative Panel submitted a Declaration of Impartiality and Independence on June 14, 2002, and the Center proceeded to appoint the Panel on the same date. The Panel finds the Center has adhered to STOP, the STOP Rules and the WIPO Supplemental STOP Rules in administering this Case.

The Complainant submitted United States trademark and service mark applications for the "Healthy Woman" mark on November 22, 1999, and October 10, 2001. In addition, Complainant has registered the domain names <healthywoman.com> and <healthywoman.info>. Complainant does not as yet publish a magazine entitled "Healthy Woman", nor does it provide web sites for the two mentioned domain names.

Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on April 4, 2002.

- For many decades, Complainant has been in the business of publishing books and magazines.

- Complainant has trademark and service mark applications for the United States, owns trademark registrations in Greece, Mexico, South Africa and Spain, and has numerous pending applications in other countries for "Healthy Woman".

- Complainant intends to use the "Healthy Woman" trademark not only for a publication (print and on-line), but plans to use it for collateral items such as a series of books on health, fitness, exercise and lifestyle; a syndicated column in the field of health, fitness, diet, exercise and lifestyle as well as ancillary promotional items.

- Respondent’s domain name is identical or confusingly similar to the trademark and service mark, "Healthy Woman", for which Complainant has applied and to the domain names, <healthywoman.com> and <healthywoman.info>, registered by Complainant. As a result, Complainant would be mistaken as the source of the disputed domain name by internet users. Complainant's trademark and service mark applications and Complainant's domain names were registered before Respondent registered the disputed domain name.

- Respondent is not part of nor affiliated with Complainant and there is no legitimate reason for Respondent to register or use Complainant’s Trademark in its domain name.

- The Respondent registered the <healthywoman.biz> domain name in bad faith. Respondent chose the domain name <healthywoman.biz> with full knowledge of Complainant’s rights therein. Respondent was on constructive notice of Complainant’s trademark rights in and applications for the trademark and service mark "Healthy Woman".

- Respondent's use of the disputed domain name would infringe the Complainant's trademark and service mark "Healthy Woman". Such use would cause Complainant serious and irreparable damage, which would continue unless the disputed domain name were transferred to Complainant.

- Respondent did not file a Response, thus Complainant's contentions are uncontested. In accordance with STOP Rule 5(e), the Panel will proceed to a decision based on the Complaint alone.

- Since the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and the Respondent acknowledged receipt in e-mail exchanges with the Center May 31-June 4, 2002, the Panel is convinced that Respondent was notified of these proceedings and that due process has been satisfied.

In order for Complainant to prevail and have the disputed domain name <healthywoman.biz> transferred to it, the Complainant must prove the following (STOP, para 4(a)(i-iii):

- the domain name is identical to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered or is being used in bad faith

The Complainant has based its claims to mark rights in the disputed domain name <healthywoman.biz> on its two applications for United States trademark and service mark ownership of "Healthy Woman" (annexes 3 and 4 to the Amended Complaint), and on its claimed trademark registrations in Greece, Mexico, South Africa and Spain.

Complainant has provided no evidence of the claimed trademark registrations in Greece, Mexico, South Africa or Spain, and accordingly the Panel cannot verify that they exist. The Complainant states the United States applications were filed on November 22, 1999, and October 10, 2001 (the Amended Complaint, p. 6 and Annexes 3 and 4). The Complainant apparently assumes that filing trademark and service mark applications for "Healthy Woman" gives it rights in this mark. The Panel knows of no authority supporting this position and the Complainant does not supply any.

Contrary to what the Complainant is proposing, the Panel finds the broad consensus in domain name dispute resolution is that a trademark application alone is not sufficient evidence of mark rights in a disputed domain name. (See for example: First Tuesday Limited v. The Startup Generator and Christopher Stammer, WIPO Case No. D2000-1732, (February 12, 2000): "…neither the United States application nor the community trademark application, nor specific applications in particular countries provide evidence in and of themselves of trademark rights…."; or Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, (June 13, 2000): "Complainant does not have an extant trademark application. Even if it did, this would not create a presumption of secondary meaning.")

There are some cases where the trademark application has been mentioned along with use of the mark as being sufficient evidence of mark rights, but the use is given far more weight. (Ontrack Data International, Inc. v. Barbara Drewett, NAF FAO109000099767, (November 2, 2001); and Synaxia Networks Corporation and Synaxia Limited v. Koray Kulcu, NAF Case No. FA0010000095849, (December 6, 2000).

However, Complainant has provided the Panel with no evidence of its current use of the trademark or service mark "Healthy Woman". Instead, Complainant has conveyed to the Panel only Complainant's intent to publish a magazine and engage in other activities using that mark. This asserted prospective use of a trademark is not sufficient evidence that the Complainant has acquired mark rights in the disputed domain name <healthywoman.biz>.

The Panel thus concludes that the Complainant has not carried its burden of proof to show that "the domain name is identical to a trademark or service mark in which the Complainant has rights;" (the STOP 4(a)(i)).

Since the STOP requires the Complainant to prevail under each section of the STOP at 4(a)(i-iii), the Panel does not need to discuss 4(a)(ii-iii), i.e., whether the Respondent has legitimate rights or interests in the domain name and whether the Respondent registered or is using the disputed domain name in bad faith.

The Center has informed the Panel that there is a second IP claimant for the disputed domain name. The Panel has found the Complainant did not establish legitimate rights in the disputed domain name. The Respondent is in default and thus also has not established legitimate rights in the disputed domain name. Therefore, per STOP Rule 15(e)(iii), the second IP claimaint should be allowed to proceed.

The Panel has found that the Complainant failed to show that it had trade or service mark rights in the disputed domain name <healthywoman.biz> per STOP at section 4(a)(i). The Respondent is in default and thus did not demonstrate legitimate rights in the disputed domain name. Therefore, per STOP Rule 15(e)(iii), the second IP claimant should be allowed to proceed with its challenge.

Pursuant to STOP section 4(i) and STOP Rule 15, the Panel orders that the disputed domain name, <healthywoman.biz>, remain registered to the Respondent, Christianne Schelling.