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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weider Publications, Inc. v. Nextlevel.com
Case No. D2001-0050
1. The Parties
The Complainant is Weider Publications, Inc., a Delaware corporation with a principal place of business at 21100 Erwin Street, Woodland Hills, CA 91367-3772 USA.
The Respondent is Nextlevel.com, #207–425 Carrall St., Vancouver BC V6B 6E3, Canada.
2. The Domain Name and Registrar
The disputed domain name is <mensfitnessespanol.com>. The Registrar of this domain name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, USA.
3. Procedural History
The essential procedural history of this proceeding is as follows:
(a) The Complainant initiated the proceeding by filing a complaint by email received by WIPO the Arbitration and Mediation Center ("the Center") on January 10, 2001, and by courier/mail received by the Center on January 15, 2001, together with payment. On January 12, 2001, the Center transmitted by email an acknowledgement of receipt of the Complaint to the Complainant and Respondent. On January 15, 2001, the Center transmitted a Request for Registrar Verification to the Registrar, Network Solutions, Inc. (with the Registrar’s Response received by WIPO on January 16, 2001).
(b) On January 18, 2001, the Formal Requirements Compliance Checklist was completed. The Panel has independently reviewed these Requirements and concurs with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules").
(c) On January 18, 2001, the Center transmitted notification of the Complaint and commencement of the proceeding to the Respondent via e-mail, and on January 19, 2001, via facsimile and courier mail. The case file record shows that the fax notification to the administrative contact, technical contact and billing contact number of the Respondent was successfully transmitted. The case file also shows that this notification was sent on January 18, 2001, to two email addresses, one being the email contact address of the Respondent as provided by the Registrar and the other being to <firstname.lastname@example.org>. The email to the Respondent’s email contact address was transmitted, however the email to email@example.com was not able to be transmitted.
(d) On February 9, 2001, the Center dispatched a Notification of Respondent’s Default to all concerned parties via e-mail. This Default Notification was transferred by email to the contact email address of the Respondent and was not returned.
(e) On February 15, 2001, the Center invited the undersigned panelist to serve in this proceeding. This invitation was accepted by completion and signature of the Statement of Acceptance and Declaration of Impartiality and Independence, sent to the Center by facsimile on February 21, 2001.
(f) On February 22, 2001, the Center dispatched a Notification of Appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") and Projected Decision Date of March 8, 2000, to all concerned parties via e-mail. The email to the Respondent’s email address was not returned.
Having reviewed the communications record in the case file of this proceeding the Panel is satisfied that the Center has discharged its responsibilities under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". The Panel also finds that it has been properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules. The Panel has received no requests from the Complainant or Respondent regarding further submissions, waivers or extensions of deadlines. The proceeding has been conducted in English.
4. Factual Background
Complainant is the owner of a service mark (U.S. Registration No. 75230631) for "MEN’S FITNESS" for computer services, namely, providing on-line magazines in the field of health and fitness and providing information in the field of health and fitness via a global communication information network site. The US Patent and Trade Mark Office record indicates that this "MEN’S FITNESS" service mark has been in use since August 1995. Complainant is also the owner of USA federal trademark registrations (U.S. Registration Nos. 74664965 and 73679354) of "MEN’S FITNESS" for use with magazines dealing with a variety of topics, including the fields of health and fitness. The US Patent and Trade Mark Office record indicates that Complainant has used the MEN’S FITNESS trademarks since at least 1987.
The Complainant has provided a search of Network Solutions' WHOIS database which indicates that the Respondent has registered 50 domain names, three of which partly incorporate the names of well known magazines, namely architecturaldigestespanol.com, glamourargentina.com and vogueespanol.com.
A view by the Panel on March 8, 2001, of <www.mensfitnessespanol.com>, the web site with the domain name the subject of this proceeding, resulted in the message:
"While trying to retrieve the URL: http://www.mensfitnessespanol.com/
The following error was encountered:
Unable to determine IP address from host name for www.mensfitnessespanol.com
The dnserver returned:
No DNS records"
Network Solutions’ Verification Response sent to the Center on January 17, 2001, states that
"The domain name registration(s) is in ‘Active’ status. The Complainant’s search of the Registrar’s whois database records shows that for the domain name <mensfitnessespanol.com> "Record created on 30-May-2000" and that "Record last updated on 30-May-2000."
5. Parties’ Contentions
The Complainant asserts that it publishes a monthly printed magazine under the "MEN’S FITNESS" mark. The Complainant provides no evidence thereof. The Complainant argues that:
"c. The domain name mensfitnessespanol.com is confusingly similar to the MEN’S FITNESS trademarks and service mark registered to and used by Complainant on magazines and on-line magazines. Because the Respondent formed the mensfitnessespanol.com domain name by combining the registered marks of Complainant with the word "espanol", persons encountering the mensfitnessespanol.com domain name will wrongly believe that information contained on the mensfitnessespanol.com web site emanates from, is endorsed by, or is licensed by Complainant. See BBC v. Renteria in which the bbcespanol.com, bbcespanol.net and bbcespanol.org domain names were found to be confusingly similar to the BBC trademark and in which it was held that consumers of news in the Spanish language would be confused into thinking that the bbcespanol.com, bbcespanol.net and bbcespanol.org domain names were associated with the British Broadcasting Corporation. BBC v. Renteria, WIPO Case No. D2000-0050 (Decided March 23, 2000) (See paragraph 6B therein).
d. The Respondent has no rights or legitimate interests in the Disputed Domain Name. More specifically:
i. Respondent is not commonly known by the Disputed Domain Name, and has acquired no trademark or service mark rights in the Disputed Domain Name.
ii. Respondent has not used or made demonstrable preparations to use the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Although Respondent registered the Disputed Domain Name on May 30, 2000 (see Exhibit A), Respondent has not made any use of the Disputed Domain Name. Attempts to access a web site at the Disputed Domain Name proved unsuccessful on December 28, 2000, and at other earlier dates.
iii. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
e. By registration of the Disputed Domain Name, the only reasonable motivation attributable to Respondent is an intent to profit from and trade on the name and good will of Complainant’s longstanding and well-known registered trademarks, registered service mark, and magazine.
f. By registering the Disputed Domain Name, Respondent can only have acted to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of any web site the Respondent creates at the Disputed Domain Name.
g. Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the MEN’S FITNESS mark in a corresponding domain name directed to Spanish speaking consumers.
h. Further evidence of Respondent’s bad faith registration of and use of the Disputed Domain Name is shown by the fact that Respondent has registered domain names that incorporate registered magazine names and trademarks of others in addition to the registered marks of Complainant. Dell Computer Corp. v. Ewaldsson, WIPO Case No. D2000-1087 (Decided November 17, 2000); AltaVista Company v. Stoneybrook, WIPO Case No. D2000-0886 (Decided October 20, 2000). Respondent has registered the domain names architecturaldigestespanol.com, glamourargentina.com, and vogueespanol.com that incorporate the well-known magazine names and trademarks of others. A screen shot of a Network Solutions WHOIS database listing showing 50 domain names registered to Nextlevel.com captured on December 28, 2000, is attached as Exhibit H."
The Complainant seeks transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complaint or otherwise participate in the proceedings.
6. Discussion and Findings
The ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is incorporated into the registration agreement between the Respondent and the Registrar (Network Solutions’ 5.0 Service Agreement is in effect) for the domain name the subject of this proceeding. Paragraph 4(a) of the Policy requires that the Respondent submit to this administrative proceeding in the event a third party such as the Complainant asserts that:
- the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- the Respondent has no right or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The Policy provides that the Complainant must prove that these three elements are present.
Domain Names Identical or Confusingly Similar to the Mark of the Complainant
The Complainant’s argument is that its mark "MEN’S FITNESS", registered in the United States of America as a service and trademark, is confusingly similar to the disputed domain name <mensfitnessespanol.com>. The Complainant has shown that it has used this mark at least since 1987. Other than the ".com" addition required for technical reasons, the domain name includes the word “espaňol” which in English means “Spanish”. The Complainant’s registered mark includes the additional possessive grammatical mark between the ‘n’ and ‘s’ in “MEN’S” and while it includes the word “espanol” excludes the tilde above the ‘n’ in the Spanish word “espaňol”. The Complainant has provided evidence of use of its registered mark on the internet at the web site of the domain name <mensfitness.com>.
It is clear that the words making up the registered service and trademarks of the Complainant also make up a significant part of the disputed domain name <mensfitnessespanol.com>. The inclusion of the descriptive word “espaňol” with the tilde omitted, and the omission of the grammatical mark in “men’s” do not significantly distinguish the disputed domain name from the Complainant’s registered marks. In the Panel’s view the very close similarity of the domain name to that of the Complainant’s registered marks could (but will not necessarily always) confuse by leading the viewer, particularly one in the United States, into the mistaken belief that there was some association between the Complainant’s registered mark and the disputed domain name. This remains the case even if such confusion would only arise in a limited geographic area such as in the United States of America. Accordingly, the Panel finds that the domain name <mensfitnessespanol.com> is confusingly similar to the Complainant’s registered service mark and trademark.
Rights to or Legitimate Interests in the Domain Name
The Respondent has not responded to the Complaint and hence has not indicated whether or not it has any right or legitimate interests in respect of the domain name. However, the onus of proving that the Respondent has no such right or interest lies, at least initially, upon the Complainant. Proving that the Respondent has no rights or legitimate interests in respect of the domain name involves proving a negative. Proving a negative can be particularly difficult. Paragraph 4(c) of the Uniform Policy sets out circumstances, in particular but without limitation, which, if found by the Administrative Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii). The provisions of this paragraph are as follows:
"c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not provided evidence of any of the circumstances set out in paragraph 4 (c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain name <mensfitnessespanol.com>. It must be remembered however, that the Respondent is not required to show that it has such a right or legitimate interest but rather the onus, at least initially, is on the Complainant to show that the Respondent has no rights or legitimate interests in the domain name.
Unlike WIPO Cases D2000-0003 and D2000-0050 concerning "telstra" and "bbcespanol" respectively, this proceeding does not involve an invented word or acronym which otherwise has no meaning. Mensfitnessespanol is a domain name made up of ordinary words in the English and Spanish languages, namely "men’s" "fitness" and "espaňol". The disputed domain name is one that a person might use without necessarily seeking to create an impression of an association with the Complainant. A search using an Internet search resource (the Panel used metacrawler.com and google.com on March 8, 2001) for the words "mens fitness espanol" resulted in a large number of results with links to American, Mexican, and Spanish entities using a name which included the words "mens" and "fitness" and "espanol", and covering information and directory sites and others which dealt with many things associated with mens physical and mental health and fitness in the Spanish and English languages. Given the generic and descriptive nature, in Spanish and English, of the three words making up the domain name (ie. “men’s”, “fitness” and “espaňol”) any number of persons around the world might have a right or legitimate interest in respect of the disputed domain name. The words “mens fitness espanol” in the domain name might be legitimately used by a person with a commercial or non-commercial interest in information concerning, exchange of views on, or conducting business in, something associated with men’s fitness in both the English and Spanish languages. For these reasons the Panel cannot accept, in the absence of any other evidence, the Complainant’s assertion that the “… only reasonable motivation attributable to Respondent is an intent to profit from and trade on the name and good will of Complainant’s longstanding and well known registered trademarks, registered service mark, and magazine.”
The fact that the domain name <mensfitnesespanol.com> does not devolve to a website and that it is registered in the Respondent’s name, do not by themselves necessarily show that the Respondent has no right or legitimate interests in respect of the domain name. The fact that the domain name has apparently not been used since its registration on May 30, 2000 (just over nine months) is not sufficient, by itself, to show that the Respondent has no right or legitimate interest in respect of the domain name.
In this case other evidence to suggest that the Respondent has no rights or legitimate interest in the disputed domain name is the registration of 50 different domain names with the Registrar, three of which include the names of some well known trademarks and magazines. The Complainant asserts, and the Respondent has not denied, that these well-known magazines and trademarks belong to "others" and are not those of the Respondent. However, the Complaint contains no assertion that the Respondent is engaging in a system of registering domain names in which it has no rights or legitimate interest. Without any assertion from the Complainant as to the nature of the Respondent’s interest in (or reasons for registering) the three domain names containing trade marks or names of magazines belonging to others, the Panel cannot be expected to speculate on the reason for registration of these three domain names, or to speculate on whether or not the Respondent has a legitimate interest in the three names.
The Complaint also states at paragraph 7C. that "Upon information and belief, Respondent may be contacted by telephone in Las Vegas, Nevada, USA at (702) 591-2600." No significance is made of this statement in the Complaint. There is no allegation or evidence that the Respondent has given a false address or otherwise attempted to mislead the Registrar or is in breach of its agreement with the Registrar. This piece of information might indicate that the Respondent knew of the Complainant’s rights in the mark "MEN’S FITNESS". However, in the absence of any assertion to this effect by the Complainant, it would be mere speculation on the part of the Panel, and thus inappropriate, for the Panel to do so.
The Complainant has provided no evidence, for example the results of a search at any Canadian authority which would tend to substantiate the Complainant’s assertions that the "Respondent is not commonly known by the Disputed Domain Name, and have acquired no trademark or service mark rights in the Disputed Domain Name." An electronic search of telephone directories, company and business names, and a search of the trade mark office in at least Canada (the jurisdiction where the Respondent has its address) as well as a search of the Internet itself, could relatively easily have been conducted to potentially provide substantiation for the assertions of the Complainant but the Complainant has not provided any such evidence. This lack of evidence is crucial when the words that make up the domain name are descriptive and generic, and are ones that a person might choose without necessarily seeking to create an impression of an association with the Complainant.
The only evidence provided to the Panel that suggests the Respondent has no rights or legitimate interest in respect of the disputed domain name, is:
i) the Respondent has not used the domain name since its registration, a little over nine months ago;
ii) the Respondent has registered 50 domain names, three of which include the names of well known magazines, however the Complainant does not assert or suggest that the Respondent, by so registering such domain names is infringing the rights of others or is engaging in a system of registration of a number of domain names in which the Respondent has no legitimate interest; and
iii) the Respondent can be contacted by telephone in Las Vegas, Nevada USA by calling a certain telephone number. In this regard there is no assertion that the Respondent provided misleading information to the Registrar or even that the Respondent knew, or can be presumed to know, about the Complainant’s registered marks in the United States of America.
This evidence, neither together nor any of it alone, can be regarded as sufficient to show that the Respondent has no rights or legitimate interests in the disputed domain name <mensfitnessespanol.com>, a name made up of generic and descriptive words in Spanish and English. Hence, the Panel finds that the Complainant has failed to show that the Respondent has no rights or legitimate interests in respect of the domain name, as required by the Policy.
In view of the above, it is not necessary to continue with any consideration of whether the domain name was registered and is being used in bad faith. However, it might also be noted that the Complainant has not raised any other evidence that would show that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel notes that it would be contrary to the purpose of the Policy to enable a person to register a domain name confusingly similar to that of a service or trade mark holder, when the purpose of doing so was illegitimate and in bad faith (within the meaning of the Policy) but that this was hidden by the Respondent simply remaining silent when a dispute arose. However, it would also be contrary to the rights of the Respondent to require cancellation or transfer of a domain name in circumstances where the disputed domain name is made up of generic words which a person might use without necessarily seeking to create an impression of an association with the Complainant, and where there is also a lack of evidence which might indicate that the Respondent has no right or legitimate interest in respect of the disputed domain name.
The Panel finds that the Complainant has failed to provide sufficient evidence to show that the Respondent has no rights or legitimate interest in the domain name <mensfitnessespanol.com>. The Panel therefore concludes that the Complainant has failed to show, as required by Paragraph 4(a) of the Policy, that the Respondent has no rights or legitimate interests in respect of the domain name <mensfitnessespanol.com>. Accordingly, the Complaint is denied.
Frank R. Schoneveld
Dated: 10 March 2001