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Generic Top Level Domain Name (gTLD) Decisions |
Gruner + Jahr Printing & Publ’n Co.
v. Web Mktg. Inc.
Claim Number: FA0407000295211
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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:
FITNESS
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.
FINDINGS
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., [1999] USCA9 225; 174 F.3d
1036 (9th Cir. 1999).
DECISION
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
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