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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert Kennedy v. WWWeb-Masters, Inc.

Case No. D2002-0017

 

1. The Parties

The Complainant in this proceeding is Robert Kennedy, an individual, whose principal place of business is at MuscleMag International, 6465 Airport Road, Mississauga, Ontario, Canada.

The Respondent is WWWeb-Masters, Inc., a Michigan corporation doing business at 1223 South Gratiot, Clinton Township, Michigan, United States of America.

 

2. The Domain Names and Registrar

This dispute concerns the domain names identified below:

<musclemag.com>, <musclemag.org>, <musclemag.net> and <musclemagonline.com> (referred to herein as the "Domain Names").

The registrar with whom the Domain Names are registered is :

Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, Virginia 20170
United States of America

The Respondent registered the domain name <musclemag.com> on July 26, 1996; <musclemagonline.com> on June 22, 1998; and <musclemag.org> and <musclemag.net> on July 13, 1999.

The Respondent also registered the domain names <musclemagonline.net> and <musclemagauction.com> in 1999, but failed to renew those registrations in 2001.

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on January 9, 2002, and in hardcopy on January 15, 2002. Payment in the required amount to the Center has been made by the Complainant.

On January 17, 2002, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Names were currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.

On February 25, 2002, a response was received from the Respondent.

On March 26, 2002, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott.

On April 22, 2002, a decision was submitted to the Center.

 

4. Factual Background

The Complainant publishes a magazine about health, fitness and bodybuilding under the title MUSCLEMAG INTERNATIONAL ("MUSCLEMAG magazine") and has done so since 1974.

On March 24, 1997, the Canadian Trade-Mark Office granted the Complainant trademark registration No. TMA 473,457 for MUSCLEMAG INTERNATIONAL (AND DESIGN), for "magazine featuring articles relating to health, fitness, strength and exercise; operation of retail stores specializing in the sale of products associated with health, fitness, strength and exercise, namely bodybuilding and exercise apparel, free weights, stationary bicycles, joggers, bars, benches, athletic supplements." The mark was first used in this form from March 1988, and the application was filed on April 25, 1995.

On November 16, 2001, the Canadian Trade-Mark Office approved for registration the Complainant's trademark application for MUSCLEMAG, for "magazine featuring articles relating to health, fitness, strength and exercise; operation of retail stores specializing in the sale of products associated with health, fitness, strength and exercise, namely bodybuilding and exercise apparel, free weights, stationary bicycles, joggers, bars, benches, athletic supplements" (the "New MUSCLEMAG Registration"). The mark was first used in Canada from September 1974. The Complainant is now waiting for the registration certificate from the Canadian Trademark Office.

On October 8, 1996, the United States Patent and Trademark Office granted the Complainant Trademark Registration No. 2,006,139 for MUSCLEMAG INTERNATIONAL (AND DESIGN) in International Class 16 for "magazine featuring articles relating to health, fitness, strength and exercise"; and in International Class 35 for "franchising services, namely offering technical assistance in the establishment and/or operation of retail stores specializing in the sale of products associated with health, fitness, strength and exercise, namely bodybuilding and exercise apparel, free weights, stationary bicycles, joggers, bars, benches and athletic supplements."

The Respondent is WWWeb-Masters, Inc. with its principal owner and the Internet entrepreneur, Mr. Timothy Green.

 

5. Parties’ Contentions

A. Complainant

The Complainant claims that during its nearly thirty years in circulation, its MUSCLEMAG magazine has become one of the world’s most well-known magazines in the field of health, fitness, and bodybuilding. The Complainant also claims that MUSCLEMAG marks are well known, inherently distinctive, famous, and serve as an identifier of the Complainant's goods and services to consumers, based on among other things the Complainant's many years of continuous, widespread use and extensive advertising and promotion under its MUSCLEMAG marks. The Complainant further claims MUSCLEMAG magazine has a circulation of approximately 350,000 copies per month, mostly in the United States and Canada.

In or about 1992, the Complainant argues it began licensing health and fitness retail stores in the United States and Canada for professional and amateur bodybuilders under the MUSCLEMAG INTERNATIONAL® mark. In or about 1995, the Complainant also began to franchise health and fitness stores under the MUSCLEMAG INTERNATIONAL® mark. There are currently approximately 26 licensed, franchised or corporate owned retail stores in the United States and Canada operating under the MUSCLEMAG INTERNATIONAL® mark ("MUSCLEMAG stores"), selling clothing, nutritional supplements and other fitness related products, some of which carry the MUSCLEMAG INTERNATIONAL trademark. The Complainant, under his MUSCLEMAG marks, participates in numerous trade shows and health, fitness and bodybuilding events every year. He argues he has spent a significant amount of money, time and resources on the advertising and marketing of the MUSCLEMAG magazine and the MUSCLEMAG stores.

The Complainant states that the Respondent is not a licensee of the Complainant, nor is it authorized by the Complainant to use any of his trademarks, including the MUSCLEMAG marks.

On June 24, 1996, Executive Distributing and Scott S. Miller, a licensee of the Complainant who runs a MUSCLEMAG store in Pontiac, Michigan, entered into an agreement for the "promotion and marketing of goods" on the Respondent’s "mallstreet.com" website.

On June 26, 1996, the Respondent registered the domain name <musclemag.com> and listed itself as the registrant. Mr. Miller did not learn that the Respondent, and not he, was the registrant for <musclemag.com> until Mr. Miller terminated his relationship with Executive Distributing, L.C.

Upon the Respondent’s registration of the <musclemag.com> domain name, Imaging Business Systems issued an invoice dated September 26, 1996, addressed to "Musclemag Company" at the address of Mr. Miller. The Respondent’s principal, Mr. Green, is named as the salesperson on the invoice, which charges Mr. Miller for, among other things, webpage design services. The last item on the invoice contains the description "USE OF MUSCLEMAG.COM URL ($3,600 Value)"

Executive Distributing, L.C. designed a website which was linked to the domain name <musclemag.com>, which in turn sold goods that were also sold in Mr. Miller’s MUSCLEMAG store. Though the website linked to <musclemag.com> and experienced heavy viewership, because Mr. Miller was selling the goods on the website at retail prices, few purchases were made. The Complainant claims that Mr. Miller's MUSCLEMAG store was never advertised on the website linked to "mallstreet.com". Mr. Miller terminated the June 24, 1996, agreement between himself and Executive Distributing, L.C., because the revenue generated by the website did not cover its cost.

When Mr. Miller signed the June 24, 1996, agreement, he is said to have understood it to mean that the <musclemag.com> domain name would be registered under his name for two years. However, after he terminated the June 24, 1996, agreement, Mr. Miller learned that Respondent owned the <musclemag.com> domain name. The Respondent’s principal, Mr. Green, informed Mr. Miller that it was retaining ownership of the <musclemag.com> domain name because of its heavy monthly traffic.

Thereafter, the Respondent also registered the domain names <musclemagonline.com> on June 22, 1998, <musclemag.org> and <musclemag.net> on July 13, 1999, as well as the domain names <musclemagonline.net> on July 18, 1999, and <musclemagauction.com> on August 26, 1999. On March 25, 1999, the Respondent registered the domain name <musclemagazine.com>. Each of the domain names is in use and leads to the website which is linked to the <musclemagazine.com> domain name.

It is asserted that the Respondent’s website, which is reached by using the Domain Names, copies and emulates the Complainants MUSCLEMAG magazine. The Respondent’s website provides photographs, articles and advertising about health, fitness and bodybuilding. The Respondent’s website features articles and discussion groups about health, fitness and bodybuilding. The Respondent’s website is in a magazine format with the same type of content found in the Complainants MUSCLEMAG magazine, and the website is directed to the same segment of health, fitness and bodybuilding aficionados that the Complainant has been appealing to since 1974.

The Respondent’s website also has a retail component permitting users to purchase a wide variety of health, fitness and bodybuilding related products. The Respondent’s "online warehouse" offers for sale many of the same health, fitness and bodybuilding products that are sold in the Complainant 's MUSCLEMAG stores and are advertised in the Complainant's MUSCLEMAG magazine.

Upon learning of the Respondent’s on-line magazine linked to the <musclemag.com> domain Name, on February 1, 1999, a representative of the Complainant sent the Respondent’s principal, Mr. Green, a cease and desist letter concerning Respondent’s use of the <musclemag.com> domain Name.

Soon after receiving this letter, the Respondent’s principal telephoned the Complainant and demanded that the Complainant pay the Respondent $60,000 to maintain the Complainant's official website in exchange for the Respondent relinquishing the said domain name

On April 26, 1999, the Respondent filed a trademark application with the United States Patent and Trademark Office seeking registration of "MUSCLEMAG" in International Class 42 for "computer services, namely providing an online magazine featuring news, events, and activities relating to health and fitness via a world wide computer network."

On September 23, 1999, the United States Patent and Trademark Office initially refused registration of Respondent’s application because it was confusingly similar to the Complainant's registration for MUSCLEMAG INTERNATIONAL:.

On March 21, 2000, the Complainant's counsel sent the Respondent’s principal another cease and desist letter. The letter, inter alia, asserted that the Respondent’s registration of the Domain Names violates the Complainant's trademark rights and other rights, and demanded that the Respondent immediately cease all use of the Domain Names and either cancel them or assign them to the Complainant

B. Respondent

The Respondent claims that in 1995, it began developing and operating an Internet community known a Mallstreet.com. On this website and on the associated network of websites numerous products and services were marketed. The Respondent says that it acquired numerous domain names containing generic words relating to the numerous products and services that were being marketed. This evidence is given under oath.

In June of 1996, the Respondent claims that it was approached by a Scott Miller who hired the Respondent to promote Mr. Miller’s sale of "nutritional supplements and workout equipment, clothing and related supplies." The parties executed a marketing agreement. It is said that as a part of the Respondent’s promotional efforts, the Respondent acquired additional domain names containing generic words, which would assist in the Respondent’s promotion of Mr. Miller’s products. Among these domain names was the word <musclemag.com>.

The Respondent alleges that at that time, the word was not included in any registered trademark and there was no common law trademark in the word or in any phrase containing the word. The Respondent states that it utilized the <musclemag.com> domain name for the promotion of Mr. Miller’s products and that this utilization and availability of the domain name registered by the Respondent was communicated to Mr. Miller. It is stressed that the communication included a line item on an invoice that stated that the Respondent was providing Mr. Miller with the "use of musclemag.com url." The Respondent claims that at that time there was no objection or dispute with respect to the Respondent’s registration and retention of the domain name <musclemag.com>. That is, until Mr. Miller signed an affidavit more than five years later at the request of the Complainant attesting to his "intent" with respect to the Respondent’s registration of the domain name in the name of Respondent.

The Respondent points out that it registered the domain name <musclemag.com> before the Complainant acquired a governmental trademark registration for a distinctive logo design that contains the word "musclemag" and the word "international"

The Respondent admits that it may have registered other domain names in question after the Complainant acquired governmental trademark registrations for a distinctive design that contains the words "musclemag" and "international".

 

6. Discussion and Findings

Para. 4(a) of the Policy requires that the complainant must prove each of the following:

● The Domain Names are identical or confusingly similar to the trademark or service mark; and

● The Respondent has no right or legitimate interest in respect of the Domain Names; and

● The Domain Names have been registered and are being used in bad faith.

Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.

Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.

 

Domain Names Identical or Confusingly Similar

In order to deal with the various grounds it is necessary to set out, in broad terms, the chronology of events. It is as follows:

● June 1996, Respondent and Scott Miller execute marketing agreement;

● Respondent registers the domain name <musclemag.com> on July 26, 1996;

● On October 8, 1996, the United States Patent and Trademark Office grants Complainant Trademark Registration No. 2,006,139 for MUSCLEMAG INTERNATIONAL (AND DESIGN) in International Class 16;

● Respondent registers the domain name <musclemagonline.com> on June 22, 1998;

● On February 1, 1999, representative of Complainant sends Respondent’s principal, Mr. Green, cease and desist letter concerning Respondent’s use of the <musclemag.com> domain Name; and

● Respondent registers the domain names <musclemag.org> and <musclemag.net> on July 13, 1999.

In terms of assessing whether the Complainant has protectable rights in the trademark/name MUSCLEMAG one first has to consider what the word means. It is clear from the evidence put forward by the Respondent that the term "Muscle Mag" is widely used and descriptive of a class of magazine concerned with bodybuilding and health. No doubt this is the reason why the Complainant has sought and obtained protection for its trademark in the form MUSCLEMAG INTERNATIONAL (and "design"), at least initially.

Accordingly, on the evidence, I am prepared to find that the Complainant has rights in the trade/service mark as registered and used but that these rights cover the specific embodiment of the trade/service mark/name and trifling variations of it.

Significantly, insofar as the US is concerned, the first trademark registration (which did not cover Internet services) was registered in October 1996.

While the matter is not without difficulty, I am prepared to accept that the domain names comprising the word "Musclemag" simpliciter are identical or confusingly similar to the domain names <musclemag.com>, <musclemag.org> and <musclemag.net>. However, given the highly descriptive nature of the trade/service mark/name and the manner in which it has been registered, the situation in relation to <musclemagonline.com> is less clear. For reasons apparent below it is not necessary for me to form a view on this matter and I do not so.

Accordingly, this ground is made out in relation to the domain names comprising the word "Musclemag".

 

No Right Or Legitimate Interest

The reason I have provided the above chronology is that the facts of this case are unusual and they make resolution of the complaint somewhat more difficult. While it is always difficult to make an assessment of any factual dispute on written evidence alone, I am prepared to infer that the Respondent assisted Mr. Miller to set up his Internet marketing activities and that the initial domain name <musclemag.com> was registered pursuant to that agreement. Mr. Miller’s evidence that he understood the domain name would be registered in his name has to be given weight. However, he does not allege the existence of any concluded agreement to that effect.

On this basis it is not possible to safely infer that the domain name <musclemag.com> was registered with an improper motive. Indeed, it seems that the Complainant allowed Mr. Miller to deal with the domain name in this way or failed to take appropriate action to advise Mr. Miller or the Respondent otherwise.

When Mr. Miller terminated the marketing agreement the Respondent may well have either discovered or had confirmed to it the fact that health and muscle-type activities were appropriate activities for promotion on the Internet. Upon termination of the agreement arguably the Respondent was able to continue to market such activities. Indeed, the evidence suggests that it was doing so in a commercial operation. (These comments apply to the <musclemag.com> domain name and arguably in relation to the <musclemagonline.com> domain name registered on June 22, 1998.)

Having said this, it is not necessary to decide whether the Respondent had a right or legitimate interest in the <musclemag.com> and <musclemagonline.com> domain names. That is, as discussed below, the matter is best resolved by reference to the third ground "bad faith".

The situation is different in relation to the <musclemag.org> and <musclemag.net> domain names. These were registered in July 1999, a number of months after the Complainant wrote to the Respondent’s principal, Mr. Green, alleging ownership rights in the MUSCLEMAG trademark/name and requiring the Respondent to hand over the <musclemag.com> domain name.

I am not prepared to infer that the Respondent was acting legitimately after the date February 1, 1999.

Accordingly, I find that the ground is made out by the Complainant in relation to the <musclemag.org> and <musclemag.net> domain names but I leave it open in relation to the <musclemag.com> and <musclemagonline.com> domain names.

Registered and Used in Bad Faith.

For the reasons outlined above I find that the Complainant fails to show that the <musclemag.com> and <musclemagonline.com> domain names were registered in bad faith. However, I find however that the <musclemag.org> and <musclemag.net> domain names were registered in bad faith.

In terms of the allegation of use in bad faith, it appears from the evidence filed by the Respondent that it operates an Internet portal or website directed, at least in part, to weight lifting, body building and health. It also appears from the evidence that it was involved in marketing and promoting such activities back to the period when it was associated with Mr. Miller. It appears to have continued to remain involved in these activities since.

Allegations are made by the Complainant that the Respondent has deliberately passed itself off as associated with the Complainant. It alleges that the content of the Respondent’s website is such as to lead to a likelihood of confusion and deception. However, it is clear that both parties are involved in a similar line of business and some similarity of content is thus likely if not inevitable.

In the final analysis, I am not prepared to find that the Respondent has used the <musclemag.com> and <musclemagonline.com> domain names in bad faith Given the history of the matter, I feel there is sufficient basis for this conclusion.

However, as to having registered the <musclemag.org> and <musclemag.net> domain names after complaint from the Complainant and having, it seems, offered these domain names to the Complainant for sale, I am not prepared to draw the same inference with these two later domain names. Given the Respondent’s existing domain name registrations, including the perfectly adequate <musclemag.com> domain name, I am not prepared to find that there has been no use of the latter two domain names in bad faith. Accordingly I find that for these two domain names both the registration and use was/is in bad faith

Accordingly, the Complainant succeeds, in part, on this ground.

 

7. Decision

Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:

1) that the domain names <musclemag.com>, <musclemag.org> and <musclemag.net> are confusingly similar to the Complainant’s MUSCLEMAG trade/service mark and name;

2) that the Respondent has no rights or legitimate interest in respect of the domain names <musclemag.org> and <musclemag.net>; and

3) that the domain names <musclemag.com> and <musclemagonline.com> were not registered or used in bad faith but the domain names <musclemag.org> and <musclemag.net> were both registered and used in bad faith.

Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the domain names <musclemag.org> and <musclemag.net> be transferred to the Complainant. The complaint is denied in relation to the domain names <musclemag.com> and <musclemagonline.com>.

 


 

Clive L. Elliott
Sole Panelist

Dated: May 31, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0017.html

 

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