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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Busy Body, Inc. v. Fitness Outlet Inc.
Case No. D2000-0127
1. The Parties
The Complainant is Busy Body, Inc., a corporation organized in the State of Texas, United States of America (USA), with place of business in Addison, Texas, USA.
The Respondent is Fitness Outlet Inc., with address in Lake Forest, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "efitnesswarehouse.com".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on March 4, 2000, and by courier mail received by WIPO on March 6, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On March 8, 2000, WIPO completed its formal filing compliance requirements checklist. On March 8, 2000, WIPO transmitted notification of the complaint to Network Solutions.
b. On March 13, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via e-mail and courier mail. On March 14, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via telefax.
c. On April 6, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by e-mail, telefax and courier mail.
d. On April 6, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On April 7, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e. On April 8, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by April 22, 2000. On April 8, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. On April 12, 2000, the Panel received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has provided a printout from the U.S. Patent and Trademark Office (U.S.P.T.O.) Trademark Text and Image Database (Complaint, Exhibit B) showing its U.S.P.T.O. service mark registration dated January 16, 1996 for "FITNESS WAREHOUSE", number 1,948,035, on the Principal Register. Complainant has provided a U.S.P.T.O. database printout (Complaint, Exhibit C) of its U.S.P.T.O. service mark registration dated January 16, 1996 (number 1,948,034, on the Principal Register) that shows the words "FITNESS WAREHOUSE" in combination with a design (stylized letters "FW" followed by the words "FITNESS WAREHOUSE"). Complainant has provided a U.S.P.T.O. database printout (Complaint, Exhibit D) of its U.S.P.T.O. service mark registration dated January 16, 1996 (number 1,948,036, on the Principal Register) that shows the words "FITNESS WAREHOUSE" in combination with a design (also stylized letters "FW" followed by the words "FITNESS WAREHOUSE"). Complainant states that these service mark registrations remain valid and subsisting. The validity of Complainant’s service mark registrations for "FITNESS WAREHOUSE", with and without design combination, has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid service mark registration for "FITNESS WAREHOUSE" in the United States.
Network Solutions’ WHOIS database query response (Complaint, Exhibit A) indicates that "FITNESS OUTLET INC.", with Administrative Contact at "FITNESS OUTLET INC.", is the registrant of the domain name "EFITNESSWAREHOUSE.COM". The record of this registration was created on July 28, 1999, and was last updated on August 16, 1999.
There is evidence that the domain name "efitnesswarehouse.com" has been used by Respondent to conduct business (or attempt to conduct business) on the Internet. Complainant has provided a copy of a telefax that shows a computer screen printout, dated January 6, 2000, of a web page headed "efitness warehouse", showing exercise equipment for sale, and stating "At eFitness Warehouse we will save you up to 60% off retail (e Fitness Warehouse is a Division of FITNESS OUTLET INC)" [differential spacing as in original]. The foregoing web page printout does not indicate the domain name address at which it appeared. (Such information may have appeared on the original printout. If it did, it was subsequently obscured by Complainant’s telefax number). Complainant has provided a copy of a magazine advertisement, with the name and date of the periodical partially obscured, but apparently an issue of "Fitness Management" in 1999, page 73, showing an advertisement for "eFITNESS WAREHOUSE", including an Internet address "www.efitnesswarehouse.com", stating, inter alia " ‘Your Source for New and Refurbished Commercial Gym Equipment’ ". (Complaint, Exhibit I). Also accompanying Complainant’s file is a screen printout, dated March 13, 2000, of a web page at "http://store.yahoo.com/fitness equipment/" showing the same information as the January 6, 2000 web page printout referred to above.
Complainant registered the domain name "fitnesswarehouse.com" on July 14, 1997, and uses this domain name to promote and transact sales of exercise equipment on the Internet. (Complaint, Exhibit G, and Panel’s visit to http://www.fitnesswarehouse.com of April 21, 2000).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
Complainant indicates that it is the owner of valid and subsisting U.S.P.T.O. service mark registrations for "FITNESS WAREHOUSE", and "FITNESS WAREHOUSE" in combination with designs (Complaint, paras. 10-13) (see Factual Background supra). Complainant indicates that it has used (through its predecessors-in-interest) the service mark "FITNESS WAREHOUSE" in commerce for "retail store and mail order services featuring home and commercial fitness equipment" since 1981 (id., para. 10). It states that the combination marks have been in commercial use since November 1992 (id., paras. 11-12). Complainant refers to its three registered service marks together as the "Marks".
Complainant indicates that it is "is also the owner of the domain name FITNESSWAREHOUSE.COM, registered on July 14, 1997 to its predecessors-in-interest and transferred to the Complainant on November 17, 1999" (id., para. 15).
Complainant states, at paragraph 16 of its complaint:
"(c) The Complainant’s Marks and Domain Name have been and are recognized by the public and the industry as originating from a single source, namely the Complainant, and the Complainant’s Marks and Domain Name serve to distinguish the Complainant’s goods and services from the goods and services of others.
"(d) The Complainant, through its (and its predecessors-in-interest’s) significant efforts, skills and experience, has acquired and enjoys substantial goodwill and a valuable reputation through the Complainant’s distinctive Marks. The maintenance of high standards of quality and excellence for the Complainant’s services has contributed to this valuable goodwill and reputation.
"(e) The Complainant has expended and continues to expend a significant amount of time and money to advertise, offer for sale, and promote the Complainant’s services through its distinctive Marks.
"(f) The Complainant alleges that the domain name owned by the Respondent for EFITNESSWAREHOUSE.COM infringes the federal and common-law service mark rights of the Complainant in its registered service marks "FITNESS WAREHOUSE" and its prior-registered domain name FITNESSWAREHOUSE.COM.
"(g) In late 1999, the Complainant became aware that the domain name EFITNESSWAREHOUSE.COM had been registered by the Respondent. Through its attorneys, on January 10, 2000, the Complainant requested the Respondent to cease and desist using the domain name EFITNESSWAREHOUSE.COM, on the basis that the Respondent’s domain name was confusingly similar to the Complainant’s Marks and Domain Name. The Respondent did not respond to the Complainant’s request, sent via certified mail, return receipt requested and via Federal Express. …
"(h) The Respondent’s domain name is confusingly similar to the Complainant’s Marks. The Respondent’s domain name EFITNESSWAREHOUSE.COM is a compound term consisting of the Complainant’s Mark "FITNESS WAREHOUSE" and the letter "e." An additional similarity is the fact that, like the Complainant, the Respondent is in the fitness equipment industry. Both the Respondent and the Complainant are fitness equipment retailers. Moreover, both the Respondent and the Complainant offer fitness equipment via retail stores and on the global computer network. Therefore, the Respondent’s domain name is likely to cause consumer confusion, since the Respondent’ domain name actually subsumes, and is confusingly similar to, the Complainant’s Marks.
"(i) The Respondent has no legitimate interest in the domain name EFITNESSWAREHOUSE.COM since the Respondent’s domain name EFITNESSWAREHOUSE.COM was registered on July 28, 1999, at least seventeen (17) full years after the Complainant’s first use (through its predecessors-in-interest) of the Marks, three (3) full years after the Marks had been granted federal service mark registrations, and almost two (2) years after the Complainant (through its predecessors-in-interest) registered the domain name FITNESSWAREHOUSE.COM.
"(j) Also, since the Respondent conducts business in the fitness industry, it is highly likely that the Respondent would have been aware of the existence of the Complainant and the goods and services that the Complainant offers. It is also highly likely that the Respondent would have become aware of the Complainant’s Marks once the Respondent chose to register its domain name. It seems logical that the Respondent would have considered FITNESSWAREHOUSE.COM as a possible domain name prior to proceeding to register its domain name EFITNESSWAREHOUSE.COM. The Complainant respectfully submits this point as evidence of the Respondent’s bad faith in registering its domain name.
"(k) The Respondent should have been on notice that the Complainant was using the Marks and Domain Name. It was the Respondent’s duty to determine if the registration of its domain name infringed or violated the rights of any third party. Either the Respondent failed to determine if any infringement existed or the Respondent chose to infringe the Complainant’s Marks and Domain Name. By choosing to ignore the issue of infringement, the Respondent acted irresponsibly and in bad faith, and should be held accountable for such infringement. Additionally, by ignoring the Complainant’s cease and desist letter, the Respondent once again chose to act in bad faith and ignore the Complainant’s assertion of its service mark rights.
"(l) For the reasons discussed above, by registering and using the domain name EFITNESSWAREHOUSE.COM, the Respondent has acted in bad faith, as defined in Section 4(b) of the Policy by intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation and endorsement of the Respondent’s web site.
Complainant requests that the Panel ask the Registrar to transfer the domain name "efitnesswarehouse.com" from Respondent to it (id., para. 17).
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion . The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts, and confirmations of the sending of e-mail and receipt of fax transmissions, that the party designated as the Administrative Contact for the Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 14(b)).
Complainant is the holder of the registered service mark "FITNESS WAREHOUSE in the United States and is using that mark in commerce (see Factual Background, supra) . Complainant’s registration of the service mark on the Principal Register at the U.S.P.T.O. establishes a presumption of validity of that mark in U.S. law , and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the service mark "FITNESS WAREHOUSE". Based on the January 16, 1996, date of Complainant’s registration of the service mark "FITNESS WAREHOUSE", the Panel determines that Complainant’s rights in that service mark arose prior to Respondent’s registration, on July 28, 1999, of the disputed domain name "efitnesswarehouse.com".
Respondent has registered the domain name "efitnesswarehouse.com". This name is identical to Complainant’s service mark "FITNESS WAREHOUSE", except that (1) the domain name adds the prefix "e" to the word "fitness", (2) the domain name eliminates the space between the two words constituting the mark, (3) the domain name adds the generic top-level domain name ".com", and (4) the domain name employs lower case letters, while the service mark is used with all capital letters (see http:/www.fitnesswarehouse.com).
Insofar as domain names are not case sensitive, and the elimination of the spacing between words in domain names is dictated by technological factors and common practice among domain name registrants, the Panel concludes that use of the lower case letter format in "efitnesswarehouse.com", and elimination of the space between the words "fitness" and "warehouse" to form that name, are differences without legal significance from the standpoint of comparing "efitnesswarehouse.com" to "FITNESS WAREHOUSE.  Similarly, the addition of the generic top-level domain (gTLD) name ".com" is likewise without legal significance since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific service provider as a source of goods or services. 
The question remaining is whether the addition of the prefix "e" to the word "fitness" is sufficient to distinguish the disputed domain name from Complainant’s service mark.
The Panel determines that the prefix "e" has become a generic or common descriptive term used to identify electronic commerce activity – a type of business activity -- routinely in relation to commercial websites on the Internet . This use finds a clear manifestation in the term "e-commerce" or "ecommerce" that is now a common term in the English language used to describe the conduct of business over an electronic network. WIPO, for example, refers to its electronic commerce-related activities by the term "Ecommerce" (see http://ecommerce.wipo.int, visited by the Panel, April 21, 2000). The prefix "e" is often added to other terms to create domain names. If the mere addition of "e" to a service mark were sufficient to distinguish new Internet service sources from existing service sources (electronic or non-electronic), it would be extraordinarily difficult for existing service sources to maintain their identities in the electronic commerce marketplace. The Panel concludes that addition of the prefix "e" to the word "fitness" to form the word "efitness" constitutes the mere addition of a generic or common descriptive identifier for a type of business activity. This does not distinguish the term "efitness" from "fitness" for purposes of avoiding a determination that the terms are substantially similar. The Panel finds that the domain name "efitnesswarehouse.com" is confusingly similar to the service mark "FITNESS WAREHOUSE". The Panel notes that Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "efitnesswarehouse.com", other than that it has registered the domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. In addition, bad faith use of a domain name does not establish rights or legitimate interests in respect of such name in the sense of paragraph 4(a)(ii) of the Policy.
The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
There is evidence on the record of this proceeding that Respondent has used the domain name "efitnesswarehouse.com" to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location. Respondent and Complainant were attempting to attract customers in the same line of business. It is not clear from the evidence presented by Complainant that Respondent was ever successful in its enterprise, but the Policy speaks to "attempt", and not to success.
The Panel determines that Respondent has registered and used the domain name "efitnesswarehouse.com" in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "efitnesswarehouse.com" to the Complainant.
Based on its finding that the Respondent, Fitness Outlet Inc., has engaged in abusive registration of the domain name "efitnesswarehouse.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "efitnesswarehouse.com" be transferred to the Complainant, Busy Body, Inc.
Frederick M. Abbott
Date: April 22, 2000
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. Complainant has furnished evidence of registration of two combination word and design marks, including "FITNESS WAREHOUSE". In light of the undisputed fact of its registration of "FITNESS WAREHOUSE", standing alone, as a service mark, the Panel does not consider it necessary to inquire into the legal significance of the two composite mark registrations, including any issues that might arise in connection with comparing those composite marks to the disputed domain name.
3. 15 USCS § 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954. This sole panelist notes that in an earlier case in which he served as Presiding Panelist, the panel decided that a complainant had failed to establish rights in a service mark combining the words "pet" and "warehouse", both of which were generic terms. In that case, the U.S.P.T.O. had refused registration of the service mark Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105, April 13, 2000. In the present case, the Complainant has disclaimed in its registrations an exclusive right in the term "warehouse", except as used in the marks as registered, and the U.S.P.T.O. has granted registration for the marks. The Panel will not inquire behind the presumption of validity conferred under U.S. law by the decision of the U.S.P.T.O. to register the Complainant’s service marks.
4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055, (9th Cir. 1999).
5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield, id. For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
6. The U.S. Court of Appeals for the Seventh Circuit has held that: "an adjective can be a generic term when that word is a part of a common descriptive name of a kind of goods. In order to be generic, however (as the word implies), the word in question must serve to denominate a type, a kind, a genus or a subcategory of goods." G. Heileman Brewing v. Anheuser-Busch, (7th Cir. 1989), 873 F. 2d 985, 997, citing Henri's Food Products Co., Inc. v. Tasty Snacks, Inc., 817 F.2d 1303, 1305-06 (7th Cir. 1987). This reasoning would apply to types of services as well.