DECISION

IM=X Pilates, Inc. v. Ian Thatcher

Claim Number:  FA0401000224554

PARTIES

Complainant is IM=X Pilates, Inc., New York, NY (“Complainant”) represented by Heather Craig, 566 7th Avenue, Suite 701, New York, NY 10018.  Respondent is Ian Thatcher, 570 5th Street, Apt. 3, Brooklyn, NY 11215 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <imxpilates.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 8, 2004; the Forum received a hard copy of the Complaint on January 12, 2004.

On January 11, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <imxpilates.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 January 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2004 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@imxpilates.com by e-mail.

Complainant’s original exhibits included three copies of an IM=X videocassette entitled “Pilates Workout.”  Because the Forum notified Respondent at two addresses, two videos were required for notify Respondent, leaving the case file short one videocassette.  On January 16, 2004, to complete the case file, the Forum requested another “Pilates Workout” videocassette from Complainant.  On January 16, 2004, the Forum received an additional copy of the “Pilates Workout” video.  Included in this submission was also a  “Xerciser Lower Body” video.  While the Forum has included the “Xerciser Lower Body” video, it had not received the requisite copies consistent with a filing of a complaint.  Additionally, the Forum has not notified Respondent of the “Xerciser Lower Body” video.

Having received no 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 February 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

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, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <imxpilates.com> domain name is confusingly similar to Complainant’s IM=X mark.

2. Respondent does not have any rights or legitimate interests in the <imxpilates.com> domain name.

3. Respondent registered and used the <imxpilates.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant registered the IM=X mark with the United States Patent and Trademark Office (“USPTO”) on April 30, 1996 (Reg. No. 1971305).  The IM=X mark is an abbreviation for Integrated Movement Xercize, referring to a specific methodological exercise program commonly known as Pilates.  Complainant conducts business under the name IM=X Pilates, and has used the IM=X mark in commerce since March 1, 1995. 

Respondent was certified by Complainant as a personal fitness trainer and group fitness instructor in March 2002.  Respondent registered the disputed domain name <imxpilates.com> on March 31, 2002, after attending Complainant’s certification course.  The domain name was unused for over a year.  Respondent constructed a website located at the <imxpilates.com> domain name after Complainant’s representatives informed Respondent of potential legal consequences pertaining to the continued use of the domain name.

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 Response, the Panel shall decide this administrative proceeding on the basis of 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.

Procedure

It is in the Panel’s discretion to examine service of process and its effects on the parties.  In this instance, the Complainant submitted an additional exhibit—the “Xercise Lower Body” video—after the Response period.  The Panel finds that the Complainant’s timely submission of the first video—“Pilates Workout”—is sufficient for its argument; because Respondent received this video in a timely manner, the Panel finds no error or prejudice in service.  Additionally, the Panel will not consider the “Xercise Lower Body” video.

Identical and/or Confusingly Similar

Complainant has established rights in the IM=X mark through registration with the USPTO and continuous use in commerce since 1995. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

The domain name is confusingly similar to the mark because the domain appropriates the entire mark and simply omits the equals sign and affixes the term “pilates” to the end of the mark.  The omission of the sign and the addition of the term fail to sufficiently distinguish the domain from the mark because symbols such as equals signs are not reproducible in domain names and the term “pilates” relates directly to Complainant’s business. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks . . . does not alter the fact that a name is identical to a mark"); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a term that has an obvious relationship to Complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Therefore, Complainant has sufficiently demonstrated that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The fact that Respondent has failed to respond to the Complaint may be construed as an implicit admission that Respondent lacks right to or legitimate interests in the disputed 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

There is no evidence before the Panel to suggest Respondent is commonly known by the domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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).

Furthermore, the evidence reveals that Respondent made no use of the disputed domain name for over an entire year.  Only after Respondent received communication from Complainant’s attorneys requesting Respondent cease using the domain name did Respondent construct a website.  Such use fails to demonstrate rights or legitimate interests under Policy ¶ 4(a)(ii).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving Complainant’s “cease and desist” notice); see also 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, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Therefore, Complainant has established that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent had knowledge of Complainant’s rights in the IM=X mark and the Pilates exercise program that Complainant offered because Respondent had been certified as a Pilates instructor immediately preceding the disputed domain name’s registration.  The registration and use of a domain name confusingly similar to a trademark, of which the registrant had knowledge, demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Furthermore, Respondent passively held the disputed domain name for over a year and only provided content on an attached website after receiving notice of Complainant’s intentions to pursue legal options relating to the infringing use of Complainant’s IM=X mark.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); 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).

Therefore, Complainant has established that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <imxpilates.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  February 25, 2004

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