WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Healthology, Inc.
Case No. DTV 2000-0005
1. The Parties
1.1 The Complainant is Rodale, Inc., a corporation organized and existing under the laws of the State of Pennsylvania, United States of America, having its principal place of business at 33 East Minor Street, United States of America.
1.2 The Respondent is Healthology, Inc., a corporation with an address at 1333 Broadway, Suite 5000, New York, New York, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <menshealth.tv>, which domain name is registered with dotTV Corporation, based in Los Angeles, California ("dotTV"). dotTV has voluntarily adopted the Uniform Domain Name Dispute Resolution Policy (the "Policy" or the "UDRP") and has selected the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") as its dispute resolution services provider.
3. Procedural History
3.1 A Complaint was submitted electronically to the WIPO Center on November 8, 2000, and the signed original together with four copies forwarded by express courier was received on November 10, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 15, 2000.
3.2 On November 14, 2000, dotTV confirmed by e-mail that the domain name at issue is registered with dotTV, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a three-member Panel were paid on time and in the required amount by the Complainant.
3.4 No formal deficiencies having been recorded, on November 23, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, dotTV and ICANN), setting a deadline of December 12, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.5 A Response was received electronically on December 12, 2000 and in hardcopy on December 14, 2000. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on December 13, 2000.
3.6 On January 15, 2001, the WIPO Center Sent a Notification of Panel Appointment, appointing David Bernstein, Esq. and David Maher, Esq., both of who had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On the same date the WIPO Center forwarded a Presiding Panelist Selection List to the parties, requesting that such list be returned no later than January 19, 2001, with the candidates ranked in order of preference.
3.7 On January 29, 2001, having received a Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center notified the parties that M. Scott Donahey had been appointed as Presiding Panelist and that Panelist Selection was now complete.
4. Factual Background
4.1 Complainant first registered the MEN'S HEALTH mark on the Trademark Supplemental Register of the United States Patent and Trademark Office ("USPTO") in connection with a periodical magazine on June 12, 1987, and on the Trademark Principal Register on October 29, 1996. The mark has subsequently been registered with the USPTO on December 16, 1997 (in connection with luggage, suit bags and garment bags for travel), December 30, 1997 (in connection with a mask which may be used for treatment of face, eye and head discomfort), on May 11, 1999 (in connection with an online magazine containing articles and columns on fitness, diet, exercise and lifestyle) on April 20, 1999 (in connection with pre-recorded audio and video tapes in the field of health and fitness), and on April 18, 2000 (in connection with an informational web site on health and fitness.
4.2 Complainant has published a periodical magazine called "Men's Health" continuously since 1986. Circulation of the magazine averages in excess of 1,625,000 in the United States and over 3,000,000 worldwide. "Men's Health" magazine has won several awards for excellence and for circulation. Advertising revenues in 1999 were approximately US$70 million.
4.3 Complainant promotes its magazine by way of television advertising and produces a continuing series of television and radio programs under the service mark MEN'S HEALTH. Complainant has plans to include a television adaptation of the "Men's Health Game Show" which currently appears in the magazine and online. Complainant believes that television or "TV" will become increasingly associated with Complainant's MEN'S HEALTH mark.
4.4 Complainant has registered the Men's Health mark as a domain name in conjunction with several country codes, but did not register it in conjunction with the Tuvalu country code ".tv." Complainant operates a web site at www.menshealth.com.
4.5 Complainant has plans to offer a television adaptation of some of the features in its magazine as well as plans to produce a continuing series of television programs. Thus, Complainant contends that Respondent's use of the ".tv" ccTLD will create particular confusion.
4.6 Respondent, an online health media company, is a leading provider of original interactive, "physician-generated online medical and healthcare information, focused on the use of video streaming media ('webcasts')." Respondent owns and operates a network of informational web sites known as the "Healthology Network." Launched in the Fall off 1998, the Healthology Network contains in-depth coverage on a multitude of health and medical topics, ranging from certain "high-interest" topics, such as weight management, cancer, arthritis, AIDS, etc., to topics of current interest such as alternative medicine, hair loss, and erectile dysfunction.
4.7 The Healthology Network is comprised of an umbrella site at www.healthology.com and a number of topic specific sites, such as www.weightfocus.com, www.headache.net, etc.
4.8 Respondent registered the domain name at issue on May 23, 2000. Respondent created a web site to which the domain name resolved on June 13, 2000. The web site features webcast programming and in-depth, physician-authored articles on common health concerns regularly faced by men.
4.9 Respondent has registered over 80 other domain names for use in connection with sites that are part of the Healthology Network, including <netsurgery.com>, <weightfocus.com>, <headache.net>, and <juniormed.com>. Respondent has registered several names in the ".tv" ccTLD, including <teenhealth.tv>. Each of these "content showcase sites" has a banner link to the <healthology.com> homepage.
4.10 There are no banner advertisements, nor any other third party advertisements on the Healthology Network web sites. Respondent is a business-to-business company that provides its online health content and streaming media programming to online distribution partners such as FoxNews.com, CBSHealthWatch, HealthGate.com, hospitals, physician groups, and others.
4.11 Respondent derives its revenue primarily from sponsorship fees, and fees related to co-branding, re-branding and licensing arrangements with distribution partners.
4.12 Respondent used the domain name at issue to resolve to a web site in the Healthology Network for more than five months before receiving any notice of a dispute.
4.13 Respondent stated that Respondent selected "menshealth" for its descriptive qualities, rather than for any association with Complainant's marks. Respondent stated that it selected the country code ".tv" for its descriptive qualities, in that Respondent utilizes streaming audio and video webcast programming that is similar to television broadcasts and that "tv" is recognized as an acronym for "television."
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical and/or confusingly similar to the trademark and service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, in that respondent could have registered "healthformen" "healthymen" or similar descriptive terms, and that Respondent has registered and is using the domain name at issue in bad faith, because Respondent's web site is similar to complainant's web site and Complainant and Respondent are direct competitors in the goods and services, information and advice offered at their respective sites. Complainant believes that confusion must exist among Internet users and also believes that Respondent must have selected the domain name at issue with full knowledge of Complainant's trademark rights.
5.2 Respondent apparently admits that the domain name at issue is identical or similar to marks in which Complainant has rights (see, e.g., Response, ¶¶ 21 and 22), but denies that this identicality or similarity causes any confusion, in part because the name plus the ccTLD is descriptive of the content found on the web site to which the domain name evolves (Response, ¶ 23) and in part because there is no evidence of confusion (Response, ¶¶ 44-46). Respondent further contends that it has legitimate interests in respect of the domain name at issue, since it is making a bona fide offering of services of the type of which the domain name at issue is descriptive, that the mark was chosen because of its inherently descriptive nature, and that its use in conjunction with the ccTLD ".tv" makes if descriptive of the services offered by Respondent. Finally, Respondent contends it did not register nor is it using the mark in bad faith, because of the above assertions, and because it has not been used to tarnish Complainant's marks, Respondent does not offer the same or similar services as complainant, since Complainant's goods and services are primarily involved with "life style" and "entertainment," and Respondent's are streaming media of medical procedures.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) 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; and,
(2) that the Respondent has no legitimate interests in respect of the domain name; and,
(3) the domain name has been registered and used in bad faith.
We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. There is no dispute that Complainant has rights in the MEN'S HEALTH mark. Interestingly, both parties urge that the Panel, in performing its analysis of confusing similarity, take into consideration the country code suffix ".tv." Complainant argues that since it has plans to introduce some of its magazine features in a television format and to produce a series of television presentations, the likelihood of confusion is increased. Respondent argues that since it presents the information on its web sites through the use of streaming video and streaming audio, it selected the country code ".tv" to be suggestive of its media presentation.
The Panel believes that in performing its analysis of whether confusing similarity exists, it should not consider the suggestiveness of the country code suffix. ".tv" is the ccTLD for Tuvalu. While, at least in the English language it is strongly suggestive of television, the Panel believes that it would not be proper to consider this suggestiveness in performing its analysis. The possibilities for suggestiveness of country codes, at least as far as the English language is concerned, are numerous. Andorra's ".ad" might be found to suggest advertising firms, Antigua and Barbuda's ".ag," agricultural concerns, Colombia's ".co" and Belize's ".bz," business enterprises, Cap Verde's ".cv," resume services, Indonesia's ".id," authentication services, Iraq's ".iq," think tanks, Moldova's ".md," a registry for physicians, Puerto Rico's ".pr," public relations firms, etc. The possibilities for suggestiveness may well be greater for other languages with which the Panel is unfamiliar. The Panel believes that to consider the suggestive nature of the ccTLD in a given language is not the role of the Panel under the UDRP, and it declines the parties' invitation to do so. The Panel is to compare the trademark to the alphanumeric string preceding the ccTLD suffix. Credit Management Solutions, Inc. v. Collex Resource Management, ICANN Case No. D2000-0029.
The Panel finds that the prefix "menshealth" in <menshealth.com> is identical or confusingly similar to Complainant's mark. Stella d'Oro Biscuit Co., Inc. v. The Patron Group. Inc., ICANN Case No. D2000-0012.
The Complainant's mark is a registered, well-known mark. The Panel concludes that Respondent must have known of Complainant's mark at the time at which Respondent registered the domain name at issue. Nowhere in the Response does Respondent disclaim such knowledge.
But the Panel does not believe that such knowledge on the part of Respondent automatically means that Respondent can have no rights or legitimate interests in respect of the domain name at issue. In this case the domain name is a descriptive term as well as being a famous mark. Respondent is using the domain name to provide the type of services that the domain name describes. 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.
Respondent registered the name in conjunction with its medical information web site network, which provides information on various medical conditions and treatments in a streaming video and streaming audio presentation. The web site was in use for more than five months before Complainant notified Respondent of a dispute. Respondent's business is clinical and informational in nature, while Complainant's magazine is more "life style" oriented. In summary, the Panel believes that Respondent has demonstrated rights and legitimate interests in respect of the domain name at issue. Because the Panel has made this finding, it has no need to determine whether the domain name at issue was registered or is being used in bad faith.
The Panel does not, because the UDRP does not require it, engage in an analysis as to whether there is an actionable claim for trademark infringement. A court of law or a mutually agreed arbitration tribunal is the appropriate venue for such an analysis. The questions that this Panel must address are carefully circumscribed by the Policy. Policy, ¶ 5.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the mark in which the Complainant has rights, but that the Respondent has rights to or legitimate interests in respect of the domain name at issue. Accordingly, the relief requested in the Complaint is denied.
M. Scott Donahey
David H. Bernstein
David W. Maher
Dated: February 22, 2001