Busy Body, Inc. v. Fitness Outlet, Inc.

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

A. Complainant

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).

B. Respondent

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 [1].

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) [2]. 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 [3],

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. [4]

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. [5]

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 [6]. 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.

7. Decision

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

Sole Panelist

Date: April 22, 2000

Footnotes:

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.