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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Kelly Britt
Case No. DBIZ2002-00152
1. The Parties
The Complainant is Rodale, Inc, a corporation organized and existing under the laws of the State of Pennsylvania, with a principal place of business at 33 East Minor Street, Emmaus, Pennsylvania 18098-0099, United States of America. The Complainant is represented in this proceeding by Kevin G. Smith and Cynthia Clarke Weber, Sughrue Mion, PLLC, 2100 Pennsylvania Avenue, N.W., Washington, DC 20037-3213, United States of America.
The Respondent in this proceeding is Kelly Britt, an individual whose address is 11770 Haynes Bridge Road #205-271, Alpharetta, Georgia 30004, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <bicycling.biz>.
The registrar for the disputed domain name is Alldomains.com, Inc., 2261 Morello Ave, Suite C, Pleasant Hill, California 94523, United States of America.
3. Procedural History
This dispute is to be resolved in accordance with the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules), and the WIPO Arbitration and Mediation Center’s Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the WIPO Supplemental STOP Rules).
The Complaint was filed on April 27, 2002, by e-mail, and on April 29, 2002, in hard copy. On May 14, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
Respondent sent a STOP Response to the Center on May 30, 2002, by e-mail, and on June 4, 2002, by hard copy. On June 5, 2002, Complainant submitted to the Center a Supplemental Submission (Amendment to the Complaint) by e-mail, and on June 7, 2002, the same was received by the Center in hard copy. In response, Respondent sent an Objection to Complainant's Supplemental Submission to the Center on June 5, 2002. After reading the Complaint and the Response, the Panel has decided there is no need to solicit further filings from either party and that none of the parties’ supplemental filings will be considered in this Decision (STOP Rule 12).
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 14, 2002, and the Center proceeded to appoint the Panel on June 14, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the WIPO Supplemental STOP Rules in administering this Case.
4. Factual Background
For decades, Complainant has been in the business of publishing books and magazines. Included in its publications is the magazine, "Bicycling," first published in 1968 and sold both by subscription and by sale at newsstands and other retail outlets.
Complainant owns two registered United States trademarks in "Bicycling" (collectively referred to hereinafter as the "Complainant Trademark"). In addition, Complainant has registered and uses the domain names <bicycling.com> and <bicycling.info> to publish the aforementioned magazine online (since 1999) and offer information and advice on many subjects (e.g., biking, equipment, supplies, and travel).
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002. Respondent owns and operates <OnlineAuto.com>, a portal web site for buying and selling new and used cars.
5. The Parties’ Contentions (Summarized)
- For many decades, Complainant has been in the business of publishing books and magazines, one of which is "Bicycling" magazine.
- Complainant owns two registered United States trademarks for "Bicycling" (Annexes 3 and 4 to the Complaint).
- Complainant uses the Complainant Trademark not only for print publications, but also, through Complainant's registered domain names (<bicycling.com> and <bicycling.info>), for online publication and the distribution of various helpful information.
- Respondent’s domain name is identical or confusingly similar to the Complainant Trademark and to Complainant's registered domain names, and Complainant and Respondent are direct competitors in the goods and services, information and advice offered at their respective sites. As a result, Complainant would be mistaken as the source of the disputed domain name by internet users. The Complainant Trademark and Complainant's domain names were registered before Respondent registered the disputed domain name.
- Respondent is not part of or affiliated with Complainant and there is no legitimate reason for Respondent to register or use the Complainant Trademark in its domain name.
- The Respondent registered the <bicycling.biz> domain name in bad faith. Respondent chose the domain name <bicycling.biz> with full knowledge of Complainant’s rights therein. Respondent was on constructive notice of the Complainant Trademark, and had actual notice and knowledge of Complainant's magazine "Bicycling".
- Respondent's use of the disputed domain name would infringe the Complainant Trademark. Such use would cause Complainant serious and irreparable damage, which will continue unless the disputed domain name is transferred to Complainant.
- Respondent plans to use his skills and experience gained from his automotive web site as a basic model for the development of a web site found at the disputed domain name. There is no evidence that this use will compete with Complainant's use of the Complainant Trademark or Complainant's registered domain names.
- There is no evidence that there will be confusion to internet users caused by Respondent's use of the disputed domain name.
- "Bicycling" is a common term to which Complainant does not have exclusive rights. Web sites found at similar domain names not owned by Complainant, such as <bicycling.org>, <bicycling.de> and <bicyclinglife.com>, provide information about bicycles and bicycling without causing Complainant material injury or damage.
- Respondent was not aware of the Complainant Trademark.
- Respondent contends that Complainant shows a pattern of trying to claim domain names based on over-reaching trademark assertions, while ignoring the self-evident, legitimate rights that otherwise exist. Respondent cites as evidence the case of Rodale, Inc. v. Healthology, Inc., WIPO Case No. DTV2000-0005 (February 22, 2001).
- Respondent believes Complainant has filed the Complaint in bad faith and a ruling of reverse domain hijacking should be made against the Complainant.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <bicycling.biz> transferred to it, the Complainant must prove the following (STOP, para 4(a)(i-iii):
- the domain name is identical to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith
The Panel finds that Complainant owns two registrations of the trademark "Bicycling" in the United States (U.S. Registration Nos. 1,079,823, dated December 20, 1977, for magazines and 2,195,322, dated October 13, 1998, for calendars).
Complainant's rights in those trademarks date from 1968 and thus arose significantly prior to Respondent's registration of the disputed domain name. The disputed domain name <bicycling.biz> is the same as the Complainant’s trademark except for the addition of the gTLD ".biz". The inclusion of a gTLD is without legal significance because a gTLD is required of registrants and ".biz" does not serve to identify a specific source of goods or services (see, AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).
In accordance with the STOP at para 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
No Rights or Legitimate Interests
Respondent has not shown to the Panel that Respondent received a license, permission or consent from Complainant to use the Complainant Trademark. Also, Respondent has not contended or attempted to show that he is commonly known by the domain name (STOP at 4(c)(iii)) or that Respondent is the owner of a trade or service mark identical to the disputed domain name (STOP at 4(c)(i)).
Respondent has failed to provide evidence to the Panel that Respondent has made use of the disputed domain name. Furthermore, the Panel finds that Respondent has not demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services (STOP, para 4(c)(ii)). Respondent's contention of his general desire to somehow duplicate the alleged success he has enjoyed with his other registered domain name, <onlineauto.com>, is insufficient to satisfy that standard.
In accordance with the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant presents no tangible evidence to the Panel that Respondent has engaged in the bad faith acquisition of the disputed domain name based on the criteria cited in STOP, para 4(b)(i-iv). While those criteria are not exhaustive of the conditions that give rise to bad faith, Complainant has provided the Panel with no other specific criteria and, instead, bases its argument on unsubstantiated "information and belief" that Respondent registered the disputed domain name in bad faith.
The Panel at this juncture must take note of the fact that the Complainant Trademark is a simple English word and not an arbitrary or coined term. Several previous panels have made this distinction in rulings on the right to use a previously established trademark (see, Primedia Special Interest Publications v. Treadway, WIPO Case No. D2000-0752 (August 21, 2000) and Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706 (September 28, 2000)).
In fact, Complainant should be particularly cognizant of this principle, since the panel deciding Rodale, Inc. v. Healthology, Inc., WIPO Case No. DTV2000-0005 (February 22, 2001), reasoned with respect to the domain name, <menshealth.tv>, as follows: "In this case the domain name is a descriptive term as well as being a famous mark. Simply because Complainant has registered the descriptive term as a trademark does not entitle Complainant to exclude all others from the use of the term in its descriptive sense."
Thus, since Respondent, like others, is not excluded from the use of the term "bicycling", the Panel cannot infer bad faith in Respondent's domain name registration merely because Complainant has obtained a trademark (possibly or even probably known to Respondent) in that descriptive term.
The Panel thus finds that Complainant has not met its burden to show that the disputed domain name was registered or is being used in bad faith.
Reverse Domain Name Hijacking
This leaves the issue raised by Respondent of reverse domain name hijacking. As Complainant has a registered trademark comprising the disputed domain name and prevailed on two of the three criteria necessary to gain a transfer of the disputed domain name, the Panel concludes, a fortiori, that there is insufficient evidence in the record to sustain a finding of bad faith on the part of Complainant.
The Panel has found that Complainant has failed to prove that Respondent has registered the disputed domain name, <bicycling.biz>, in bad faith as required per STOP at section 4(a)(iii). Therefore, pursuant to STOP section 4(i) and STOP Rule 15, the Panel orders that the disputed domain name, <bicycling.biz>, remain registered to the Respondent, Kelly Britt.
Dennis A. Foster
Dated: June 30, 2002