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WIPO Arbitration and Mediation Center
The Little Gym International, Inc. v. Domainstuff.com
Case No. D2003-0466
1. The Parties
The Complainant is The Little Gym International, Inc., a Delaware Corporation with its principle place of business at Scottsdale, Arizona, United States of America, represented by Dorsey & Whitney LLP of United States of America.
The Respondent is DomainStuff.com of Del Mar, California, United States of America, represented by Michael P. Eddy of United States of America.
2. The Domain Name and Registrar
The disputed domain name <littlegym.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2003. On June 18, 2003, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 23, 2003, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2003. The Response was filed with the Center on July 23, 2003.
The Center appointed Gaynell Methvin as the Sole Panelist in this matter on July 29, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel requested and was granted an extension of the due date of the decision until August 21, 2003.
4. Factual Background
The following facts are undisputed:
4.1 Complainant has obtained U.S. Trademark Registration Nos. 1,837,113 (registered in 1994 for service mark for children’s fitness classes offered since 1980); 2,057,340 (registered in 1997 for franchising services for operations related to exercise instruction services offered since 1995); 2,069,466 (registered in 1997 for instruction in field of exercise and motor development since 1995); and 2,522,810 (registered in 2001, for musical sound recordings featuring physical exercise music offered since 1980 and for clothing, including T-shirts, shorts, Karate uniforms, etc. offered since 1976) for THE LITTLE GYM Mark. Complainant also owns and maintains international registrations for THE LITTLE GYM marks as follows: French Registration Nos.: 82687399 and 82687699; Japanese Registration No.: 3341899; and Venezuelan Registration Nos.: S-017954 and S-017955; Canadian Registration No.: TMA-432548 for goods and services similar to those related to the U.S. registrations. In addition to the foregoing trademark registrations, Complainant owns a Community Trademark Application and various other international trademark applications for THE LITTLE GYM Marks, for similar goods and services.
4.2 Complainant owns numerous domain name registrations comprised of the term LITTLEGYM, including, among others, <littlegym.info>; <littlegym.biz>; and <thelittlegym.com>.
4.3 Respondent registered the domain name, <littlegym.com>, with eNom, Inc. on September 7, 2000.
5. Parties’ Contentions
5.A.1 Respondent’s <littlegym.com> domain name is nearly identical and confusingly similar to trademarks in which the Complainant has rights (Policy 4(a)(i); Rules 3(b)(viii) and (b)(ix)(1)). Complainant’s position on this issue is based on its lengthy use of THE LITTLE GYM trademarks and service marks for exercise and motor development instruction services for children featuring gymnastics, swimming, karate and exercise classes for over 20 years in the United States. In 1992, Complainant began using its trademarks internationally. In addition to significant amounts of use throughout the U.S. and abroad, Complainant owns extensive trademark and service mark registrations and applications for THE LITTLE GYM, THE LITTLE GYM (Stylized) and THE LITTLE GYM (Design) (collectively, "THE LITTLE GYM Marks"). Complainant also provides musical sound recordings; prerecorded audio cassette, compact discs and phonographs featuring physical exercise music; clothing; and franchising systems under THE LITTLE GYM Marks. Collectively, these goods and services are referred to as "The Little Gym Goods and Services."
Complainant’s rights in THE LITTLE GYM Marks have been further amplified by extensive use, advertising and publicity since the infancy of their use in 1982. Complainant is a franchisor, which provides physical fitness, recreational gymnastic, motor skills development and other related programs for children throughout the United States, Canada, Belgium, United Kingdom of Great Britain and Northern Ireland, France, Japan, Kuwait, Luxembourg, Netherlands, Philippines, Puerto Rico, Singapore, Spain, Sweden and Thailand. As a result of the quality of Complainant’s products and services, the tremendous volume of sales of goods and services under THE LITTLE GYM Marks and the extensive promotion and advertisement of these marks, the THE LITTLE GYM Marks are famous, have acquired substantial goodwill belonging exclusively to Complainant, and are recognized as an indicia of origin with Complainant worldwide.
of the word
(May 19, 2003);
(May 23, 2003);
(June 20, 2001).
to the THE
5.A.3 Respondent has no rights or legitimate interests in respect of the disputed domain name. First, any use by the Respondent of the disputed domain name is not in connection with a bona fide offering of goods or services. Second, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent is actively seeking commercial gain by misleadingly diverting consumers to the "www.littlegym.com" website. Third, the Respondent is not commonly known by the <littlegym.com> domain name. Rather, the Respondent is known as DomainStuff.com. In support of each of these allegations, Complainant offers the following:
use of <littlegym.com>
is not in
with a bona
nor is it
use of the
Mae v. DomainStuff.com,
(NAF July 29, 2002)
use of "www.fannimae.com"
with a bona
it a legitimate
use of the
to a website
in an "error"
do not exist
is not bona
use is a
(February 22, 2001).
v. Dan Parisi
(October 12, 2000).
to the intent
of the Policy.
(WIPO February 22, 2001);
v. Dan Parisi
(WIPO October 12, 2000).
(ii) DomainStuff.com is attempting to misleadingly divert consumers for potential commercial gain while tarnishing Complainant’s marks. This tarnishment and misleading diversion of consumers is not a legitimate noncommercial or fair use of Complainant’s well known and famous marks nor is its use made in connection with a bona fide offering of goods or services. Policy paragraphs 4(c)(i) and 4(c)(iii).
is not aware
of any evidence
is not a
to use Complainant’s
for at least
in a domain
(NAF January 23, 2001);
(March 14, 2000).
you to a
So not only
it is deciding
as to who
to the lack
of a legitimate
in the domain
5.A.4 Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. In support of this position Complainant argues the following:
(i) Respondent is intentionally attempting to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the location or of a product or service at that location. Respondent’s attempt to intentionally attract Internet users to the existing "www.littlegym.com" website for commercial gain, by creating a likelihood of confusion with Complainant’s mark is bad faith. Federal National Mortgage Association, dba Fannie Mae v Domain Stuff.com, FA0206000114620 (NAF July 29, 2002). Respondent’s intentional attempts, for commercial gain, to attract Internet users to the current on-line location at "www.littlegym.com" is more egregious than the more common cybersquatter tactic of linking a disputed domain name to a pornographic or gambling site because the likelihood of confusion is much higher due to the Respondent’s attempt to offer "Little Gym Fitness Products." Therefore, by using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users via the <littlegym.com> domain name by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement of the domain name and by offering "Little Gym fitness products" on those pages. Enhancing the confusion is the fact that Respondent’s "About Us" page reveals no entity identifying information. To the contrary, clicking on the "About Us" link directs you to a page that states "Little Gym’s fitness and Gym products lets you get fit for less!"
to the Chanel
use of the
as to source,
is not permitted.
in the fitness
of its deliberate
(WIPO February 22, 2001).
(iii) Respondent had constructive notice of Complainant’s rights at the time it registered <littlegym.com> on September 9, 2000. As set forth above, Complainant owns various registrations for its THE LITTLE GYM Marks listed on the Principal Register of the USPTO and other countries throughout the world and has used the mark since 1982. Complainant’s THE LITTLE GYM Marks have been extensively used in connection with significant dollars extended in advertising. Based on the foregoing and the fact that Respondent’s registration of the infringing domain name was undoubtedly done because of the recognition associated with Complainant’s marks, it can be inferred that Respondent had knowledge of Complainant’s rights in the THE LITTLE GYM Marks. Federal National Mortgage Association, dba Fannie Mae v. Domain Stuff.com, FA0206000114620 (NAF July 29, 2002). Respondent’s subsequent registration of the disputed domain name, despite knowledge of Complainant’s pre-existing rights in the THE LITTLE GYM Marks, evidences bad faith registration pursuant to Policy paragraph 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001); see also Samsonite Corp. v. Colony Holding, FA 94313 (NAF).
to the Fannie
of the disclaimed
And it is
of bad faith
in the Policy.
as a bad
of a domain
(October 26, 2000)
(December 1, 2000)
(v) Finally, DomainStuff.com has previously been the Respondent in a Uniform Domain Name Dispute Resolution proceeding where the domain name was transferred for violating the Policy. Federal National Mortgage Association, dba Fannie Mae v. Domain Stuff.com, FA0206000114620 (NAF July 29, 2002). A pattern is developing by virtue of these UDRP decisions filed against Respondent for the bad faith registration of domain names in which it has no rights. This conduct is also evidence of bad faith.
5.B.1 Whether the domain name is identical of confusingly similar
Although Respondent does not deny that Complainant has registration for several trademarks, he disputes the applicability of these marks to the present action. In particular:
(i) Respondent argues that Complainant’s marks relate to a different class of goods or services than the Respondent’s class of services;
(ii) Respondent has a common law trademark in the name since September 2000 for on-line retail store offering fitness related products;
(iii) Claimant’s trademark registration disclaims use of "Gym," and Complainant has no claim to exclusive use of dictionary terms;
(iv) Complainant could have filed for trademark in 1980 and failure to do so shows Complainant’s bad faith and proves Complainant is attempting to reverse domain name hijack Respondent’s domain name.
The fact that Complainant has numerous domain name registrations that include the words "little gym" is irrelevant.
Respondent has not had time to gather evidence to dispute Claimant’s claim to have expended money on its business.
5.B.2 Whether Respondent has rights or legitimate interest in domain name
Respondent denies Complainant has rights to exclusive use of marks for all classes of goods and services since Complainant’s marks are for specific services and Complainant has disclaimed use of "Gym" in majority of marks.
Respondent does not deny that there are similarities between Complainant’s marks and Respondent’s domain name.
Respondent asserts that it uses its domain name in connection with bona fide offering of services and argues that Complainant’s contention that the site only results in "error" messages is the result of Complainant’s manipulation of site to cause such message. Respondent contends the site does work to offer goods and services shown at site. Respondent points to site itself as evidence on this point.
Respondent denies Complainant’s contention that Respondent is not known by <littlegym.com> domain name since Respondent has been operating its website at this domain since September 2000.
Respondent disclaims any connection between Respondent and WIPO case cited by Complainant that relates to domain name <fanniemae.com>.
5.B.3 Whether the domain name was registered and used in bad faith
Respondent argues that Complainant has failed to prove the facts necessary to support its position on bad faith as Complainant’s arguments have no basis in fact. Respondent denies it is intentionally diverting Internet users to its site. Respondent points out that it has specifically advised that its website is not for sale.
Respondent argues that Complainant does not own a monopoly on all uses of "little gym," that Complainant cannot own the right to use terms for fitness products as the mark is descriptive and generic as to fitness and gym related products and services.
Respondent states that Complainant’s registrations show Complainant deliberately attempts to avoid problems pointed out in last paragraph by the way it describes its services and goods.
There is no proof that Respondent had any prior knowledge of Complainant having any rights in the class of goods offered by Respondent and connected to Respondent’s domain name. Further, Respondent states that it does not offer either musical instruments or clothing at its site with the "littlegym" mark present.
Complainant is guilty of attempting to offer misleading evidence to the Panel to support its bad faith allegations and such offerings are proof of Complainant’s efforts to reverse hijack Respondent’s domain name.
6. Discussion and Findings
The Rules, at paragraph 15(a) require the Panel to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant bears the onus of proof and must establish:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith.
6.1 Identical or Confusingly similar to the Complainant’s Service and Trademark Rights
The Panel will first consider the Complainant’s common law rights in its marks, Paragraph 4(a)(i) of the Policy.
(March 23, 2000),
6 of the
"This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a ‘trademark or service mark’ in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant. Further, this Administrative Panel recognizes that the WIPO Final Report on the Internet Domain Name Process (The Management of Internet Names and Addresses: Intellectual Property issues, April 1999), from which the Uniform Policy is derived, does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. It is therefore open to conclude that the Uniform Policy is applicable to unregistered trademarks and service marks."
(March 11, 2000),
page 4 of
"The Respondents have also asserted that the Complainant’s Indian trademarks are no longer registered. Whether or not that is so, it is clear that the Complainants have a very substantial reputation in their newspaper titles arising from their daily use in hard copy and electronic publication. In India itself wrongfully adopting the titles so as to mislead the public as to the source of publications or information services would in all likelihood amount to the tort of passing off. As is already stated, it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trademarks."
to the above
(April 13, 2000),
by a government
This Panel accepts the reasoning of the above decision.
In connection with Complainant’s common law trademark rights, the Panel finds that Complainant’s U.S. trademark registration 2,522,810 establishes that Complainant has been using the mark THE LITTLE GYM in connection with the sale of musical sound recordings which feature physical exercise music since June 1980 and in connection with clothing, including Karate uniforms since September 1976. Accordingly, Complainant has had undisputed common law trademarks rights in the mark THE LITTLE GYM for such goods for over 20 years.
In addition to the above-referenced common law trademark rights, Complainant has also conclusively established that it owns U.S. and numerous foreign registered trade and service marks in the words THE LITTLE GYM (words only and in designs) in connection with the offering of physical fitness classes for children (registered in U.S. in 1994) and in connection with the offering of franchises for such services (registered in U.S. in 1997). Complainant’s registrations in numerous foreign countries date from 1994 to 2001. It is also uncontested that Complainant uses its marks in connection with the Little Gyms, which operate at 114 sites in the U.S. and 17 sites in 15 foreign countries.
Complainant offers no hard evidence to establish that its LITTLE GYM marks are famous, and only offers the unsworn statement of its CEO as to its annual expenditures on promotion by the company and its franchisees. Nevertheless, the Panel concludes from the totality of the evidence, including Complainant’s long term use of the LITTLE GYM marks, the quality of its websites, the number of franchises and facilities in operation, that the Complainant’s marks are well known and have acquired substantial goodwill that belongs exclusively to Complainant.
it is the
of the Panel
and is certainly
(May 19, 2003);
(May 23, 2003);
(June 20, 2001).
6.2 Rights or Legitimate Interests
Under Policy, paragraph 4(c), a Respondent’s right or legitimate interest in a domain name can be demonstrated if the Respondent shows that
(i) it uses or is preparing to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent to misleadingly divert consumers or to tarnish the trademark or service mark at issue for commercial gain.
None of these conditions apply here. First, following Complainant’s charge that no bona fide offering of goods or services was being made at Respondent’s website, Respondent was given a full and fair opportunity to show the contrary to be true. Respondent failed to offer any proof of any sales from its site. If indeed legitimate sales were being made it would have been well within Respondent’s power to present sales confirmation information in its files, but no such evidence was presented. Further, it should be noted that when the Panel tried to use Respondent’s website to complete a sale, the site never allowed a "check out." Instead, the site always produced the message: "There are no items in your cart" regardless of which category of products were selected for purchase and "added to the cart." In light of the foregoing, it is the conclusion of the Panel that Respondent is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services.
Next, it is undisputed that:
(i) Complainant has not licensed Respondent, nor authorized the use of its marks;
(ii) Respondent does not own any registered marks containing the term "Little Gym" or any similar derivation;
(iii) Respondent has never been known by or associated with the contested domain name; and
(iv) Respondent has no agreement with The Little Gym to stock or sell Little Gym’s products.
The Respondent’s claim to a common law mark in <littlegym.com> fails for lack of evidence to support the claim. Mere registration of the domain name in 2000 does not establish any trademark rights in the name.
Finally, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the only fair conclusion that can be drawn from Respondent’s conduct is that Respondent is attempting to use The Little Gym’s mark to attract Complainant’s potential The Little Gym customers to its website and, at a minimum, confuse such customers as to the true seller of goods being offered at the site.
The Panel agrees with Complainant that "such uses of The Little Gym’s trademarks are not a legitimate use of a domain name. Cybersquatting for the purposes of diverting confused users or coercing payment from rightful owners are the very types of activity the Policy aims to prevent."
In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain name at issue.
6.3 Registered and Used in Bad Faith
Under Policy, paragraphs 4(b)(i) and (iv), evidence of bad faith may consist of, among other things, circumstances indicating that a Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant; or circumstances indicating that a Respondent intentionally attempted for commercial gain to attract Internet users by using a domain name that creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or product or service.
In this case, Respondent has registered a trademark as a domain name without any connection to these marks. Such conduct in and of itself is evidence of bad faith registration and use.
Furthermore, Respondent has used the domain name to divert Internet traffic and this conduct indicates its bad faith intentions. Use of a domain name to direct Internet traffic to websites unaffiliated with the trademark holder constitutes bad faith. The Panel agrees with Complainant that "Respondent is exploiting The Little Gym’s name to confuse The Little Gym customers by using The Little Gym’s famous name in a domain name, and he has furthered the deception by using The Little Gym’s trademarks on his page in an effort either to sell The Little Gym’s competitors’ products, or to have consumers submit billing information electronically."
The Panel has reviewed the numerous cases cited by Complainant in support of its position that Respondent has registered the disputed domain name in bad faith. The Panel finds the cases to be highly relevant and persuasive. The facts here, in light of the relevant precedent, compel a finding of bad faith. Respondent has not presented any persuasive facts or arguments in opposition to Complainant’s position.
In light of the foregoing, the Panel finds that the Respondent has registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <littlegym.com>, be transferred to the Complainant.
Dated: August 21, 2003