Bally Total Fitness, Inc. v. aka Dallas Internet Services / aka Global Media Consulting; Mike Torres

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Bally Total

Fitness, Inc. v. Mike Torres, a/k/a/

Dallas Internet Service, a/k/a/ Global Media Consulting

Case No.

D2001-0546

1. The Parties

Complainant is Bally Total

Fitness, Inc., a Delaware corporation, with its principal place of business

in Chicago, Illinois, USA ("Bally").

Respondent is Mike Torres,

allegedly known also as Dallas Internet Services and as Global Media Consulting.

Mike Torres appears to have a mailing address in Miami, Florida, USA ("Torres").

Dallas Internet Service appears to have a mailing address in Dallas, Texas,

USA ("Dallas"). Global Media Consulting appears to have a mailing

address which is the same as Torres’s mailing address ("Global").

2. Domain Name and Registrar

The domain name in issue

is <ballysfitness.com>.

The registrar is TUCOWS.COM,

INC., located in Toronto, Canada ("Tucows").

3. Procedural History

The WIPO Arbitration and

Mediation Center (the Center) received Bally’s complaint via email on April

14, 2001, and in hard copy on April 17, 2001. The Center verified that the complaint

satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution

Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy

(the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the Supplemental Rules). Bally made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is April

24, 2001.

On April 18, 2001, the

Center transmitted via email to Tucows a request for registrar verification

in connection with this case. On April 18, 2001, Tucows transmitted via email

to the Center Tucows’s confirmation that (1) Dallas is the registrant of the

domain name in issue, (2) the Policy applies to the domain name, and (3) the

current status of the domain name is "currently on hold ... , to ensure

that no changes of Registrar or ownership occur for the duration of the dispute."

On April 24, 2001, the

Center transmitted Notification of Complaint and Commencement of the Administrative

Proceeding, together with a copy of the Complaint, to Dallas via email and post/courier

to Dallas’s email and mail addresses in Dallas. The couriered documents were

apparently refused by the addressee. In the Notification, the Center advised

that the response was due by May 13, 2001, pointed out the response should be

in accordance with specified rules, and described the consequences of a default

if the response was not sent by May 13, 2001, -- including inter alia that an

Administrative Panel would be appointed to review the facts and decide the case,

and the Panel may draw appropriate inferences in the event of default. It appears

from WIPO records that the emailed Notification was delivered and opened by

Dallas.

On May 15, 2001, the Center

transmitted via email to Dallas Notification of Respondent Default, advising

Dallas inter alia (1) it had failed to comply with the deadline for submissions

of a response, (2) the Center would proceed with the appointment of an Administrative

Panel, (3) the Panel would decide in its discretion whether to consider a response

if one were to be submitted later. It appears from WIPO records that this emailed

Notification was delivered and opened by Dallas.

On June 13, 2001, the Center

advised the parties via email of the appointment of David W. Plant as Presiding

Panelist and Michael Albert and Ross Carson as Panelists, and that the decision

was due June 27, 2001.

4. Factual Background;

Parties’ Contentions

a. The Trademark

The complaint is based

on the marks BALLY TOTAL FITNESS and <ballyfitness.com>.

Bally avers that it owns

registrations in the United States for the BALLY TOTAL FITNESS mark. Copies

of seven certificates of registration with the United States Patent and Trademark

Office appear at Annex F to the complaint. First use in commerce is asserted

in one registration to have been as early as August 1, 1990. Bally

asserts all seven registrations are valid, subsisting, and in full force and

effect.

Bally avers it has owned,

used and operated the service mark and Internet domain name <ballyfitness.com>

continually in interstate commerce since 1995.

Bally avers it is "the

largest and only nationwide commercial operator of fitness centers in the United

States." It states it has "approximately 4 million members and 335

locations in 27 states and Canada." Bally avers it has used both marks

continually in connection with its fitness centers and related goods and services.

b. The Complaint Re

Respondents’ Activities

Bally avers that all three

elements of Policy, Paragraph 4.(a) are met because:

1. the domain name in

issue is identical or confusingly similar to a mark in which Bally has rights,

2. respondent has no

rights or legitimate interests in the domain name; and

3. the domain name was

registered and is being used in bad faith by respondent.

Bally asserts the domain

name at issue is confusingly similar to Bally’s mark BALLY TOTAL FITNESS and

its mark <ballyfitness.com>. Bally states that the pronunciation of the

terms is nearly identical and the domain name is a likely misspelling of <ballyfitness.com>.

Bally cites four WIPO decisions to the effect that domain names containing common

misspelling of trademarks are confusingly similar to such marks. The cases cited

are WIPO Cases Nos. D2000-0323, D2000-0548,

D2000-0578, and D2000-0869,

respectively.

Bally asserts respondent

has no rights or legitimate interests in the domain name in issue, stating respondent

does not own a trademark registration "covering the mark [sic]," and

has had no common law use of the mark prior to Bally’s adoption and use of its

two marks.

Bally avers respondent

has registered and used the domain name in issue in bad faith in light of the

following chronology of events:

Torres registered the domain

name <ballysfitness.com> on February 29, 2000. Until March 23,

2001, Global directed traffic from the <ballysfitness.com> web site to

"a site that features the ‘First Card’ credit card." Bally is not

affiliated with First Card. (Footnote

1)

Torres, a/k/a Global Media

Consulting, own more than 50 domain names, "many of which are variations

of famous third-party trademarks and service marks," such as <maxwelhouse.com>,<jcpenys.com>,

and <fiedlanstream.com>. Printouts from WHOIS searches appear at Annex

A to the complaint.

On March 23, 2001, WHOIS

registration information was changed to show Dallas Internet Services as the

owner. Dallas has no registration "covering the mark" and had no common

law use before Bally’s adoption and use of its two marks. Dallas owns domain

names that are "variations of famous third-party trademarks and service

marks," such as <natonalgeograhic.com>, <nationlgeographic.com>,

and <nissandrive.com>. Printouts from WHOIS searches appear at Annex C

to the complaint.

In addition to the confusing

similarity of Bally’s two marks and the domain name in issue, registration of

numerous domain names that incorporate well-known trademarks, for which registrant

could not reasonably make legitimate use, "are evidence of both a lack

of legitimate interest and bad faith use and registration under the Policy."

Bally cites WIPO Case No. D2000-0032.

Respondent currently markets

on the <ballysfitness.com> site "vacation rental services, free credit

reports, credit cards, gambling, debt relief, electronics and hotels."

Bally has neither endorsed nor sponsored any of these products or services.

Respondent has "intentionally attempted to attract, for commercial gain,

Internet users to the web site "ballysfitness.com" by creating a likelihood

of confusion" with Bally’s marks as to source, sponsorship, affiliation,

or endorsement of the web site of a product or service featured on the web site.

Global and Dallas are not

legal entities. The provision of false contact information is further evidence

of respondent’s bad faith, citing WIPO Cases Nos. D2000-0003,

D2000-0138, and D2000-0817.

Bally requests that the

domain name in issue be transferred to Bally.

The complaint concludes

with the requisite certificate as to completeness and accuracy and is signed

by Bally’s counsel.

c. The Default

In light of respondent’s

failure to respond, the Panel has elected to decide this dispute based upon

the complaint. Rules, Paragraphs 5.(e) and 14.(a).

5. Discussion and Findings

Paragraph 4.(a) of the

Policy directs that Bally must prove, with respect to the domain name in issue,

each of the following:

(i) The domain name

in issue is identical or confusingly similar to a mark in which Bally has rights,

and

(ii) Respondent has

no rights or legitimate interests in respect of the domain name, and

(iii) The domain name

has been registered and is being used in bad faith.

Paragraph 4.(b) of the

Policy sets out four illustrative circumstances, any one of which for purposes

of Paragraph 4.(a)(iii) above, if proved by a complainant, shall be evidence

of a respondent’s registration and use of a domain name in bad faith.

Paragraph 4.(c) of the

Policy sets out three illustrative circumstances any one of which, if proved

by respondent, shall demonstrate respondent’s rights or legitimate interests

to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The true identity of respondent

must be taken as accurately averred by Bally. In Annex A to the complaint, Torres

is shown in some WHOIS printouts as the Administrative and Billing Contacts

for domain names registered by Global. Torres’s and Global’s mailing addresses

are identical. The domain servers are shown in Annexes A, B and C as the same

for Global and for Dallas. As shown in Annexes A and C, Technical Contacts are

the same for Global and Dallas. In light of this record, it is fair to infer

that Bally’s averments on this score are correct, namely that Torres, Global

and Dallas are indeed the same entity.

The Panel has assured itself

that the parties have been treated with equality and respondent has been given

a fair opportunity to present its case. Rules, Paragraph 10.(b). Accordingly,

in the Panel’s view, respondent has been afforded due process.

b. Identity or Confusing

Similarity

Bally has the burden of

proving this element and each of the other two elements of Paragraph 4.(a) of

the Policy. It is especially important in a default situation that a complainant

meet its burden of proof.

Bally contends that its

marks and respondent’s domain name are confusingly similar. Bally points to

the similarities between the domain name and the dominant portions of Bally’s

two marks and to authority to the effect that differences of the kind here do

not detract from a finding of confusing similarity. Bally points also to respondent’s

practice of registering variations on well-known marks, compelling the inference

that respondent intends to create confusion.

There is no question from

this record that Bally has rights in the two marks on which it relies. The disputed

domain name, <ballysfitness.com>, differs by only one letter, the common

suffix "s", from Bally’s mark <ballyfitness.com>. The dominant

portion of both the domain name and Bally’s mark (and of Bally’s other marks)

is the same strong, arbitrary, and distinctive mark "Bally". Some

of the goods and services provided on respondent’s web site (e.g. credit cards)

overlap with goods or services covered by Bally’s trademark registrations. In

short, the result is likely to be confusion as to source, origin, sponsorship,

or affiliation.

The Panel finds that the

domain name and the two Bally marks are confusingly similar. Accordingly, Bally

has carried its burden on this element of Paragraph 4.(a).

c. Rights or Legitimate

Interests

Bally has demonstrated

(1) Bally’s ownership of the two marks, (2) the validity of the two marks, (3)

continuous use of the marks since 1990 and 1995, respectively -- both years

before respondent registered the domain name, (4) the acclaim and good will

associated with the marks, and (5) the lack of any right or interest in the

mark or the domain name on the part of respondent.

Bally has averred without

contradiction that respondent’s use of the domain name in issue has been without

authorization of Bally. Also, many of the products and services offered by respondent

at the site in issue have nothing to do with Bally, and such offers have not

been authorized by Bally.

Here, also, Bally has carried

its burden of proof.

d. Registration and

Use in Bad Faith

In appropriate circumstances,

bad faith registration and use of a contested domain name can be inferred from

circumstantial evidence. Both registration in bad faith and use in bad faith

must be proved by Bally.

The Panel finds that Bally

has proven that repondent’s conduct evidences bad faith registration and use

under the Policy, Paragraph 4.(b)(iv).

It is beyond any dispute

that respondent has used the domain name intentionally to attract for commercial

gain Internet users to respondent’s web site by creating a likelihood of confusion

with Bally’s two marks. Respondent has registered and used the domain name to

create a site through which respondent offers goods and services unaffiliated

with Bally. This evidences respondent’s bad faith both in registration and in

use of the domain name in issue. In addition, respondent has registered many

other domain names which are variations on well-known marks -- a pattern manifesting

classical cybersquatting. Also, respondent is not well served by the apparent

attempt to hide the true identity of the owner of the domain name registration

in issue here.

6. Decision

In light of the findings

by the Panel, the Panel decides that Bally has met its burden of proof with

respect to each of the three elements of Policy, Paragraph 4.(a).

Accordingly, the Panel

requires that the registration of the domain name <ballysfitness.com>

be transferred to Bally.

David W.

Plant

Presiding Panelist

Michael

A. Albert

Panelist

Ross Carson

Panelist

Dated: June

28, 2001

Footnotes:

1. Bally’s Registrations

Nos. 2,360,487 and 2,373,149 are for "credit card services," with

first use asserted as December 7, 1999. The other five Bally registrations are

for health and fitness club services or nutritional supplements and the like.

(back to text)