WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Resource Marketing
Case No. DBIZ2002-00156
1. The Parties
The Complainant is Rodale, Inc., a Pennsylvania corporation with its principal place of business located at 33 East Minor Street, Emmaus, PA 18098-0099, United States of America.
The Respondent is Resource Marketing, a corporation with an address at 111 N. Benbow Rd., Greensboro, NC 27402, United States of America.
2. Domain Name and Registrar
The domain name at issue is <womenshealth.biz> (the "Domain Name"), which is registered with Parava Networks, Inc., based in Houston, Texas, United States of America.
3. Procedural History
On April 27, 2002, the Complainant electronically submitted a STOP Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"); the hard copies followed two days later. The Complaint was submitted in accordance with the Start-up Trademark Opposition Policy ("STOP") and the attendant STOP Rules ("the Rules"), adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, and with the Centerís Supplemental Rules for STOP (the "Supplemental Rules"). The Center sent an Acknowledgement of Receipt, dated May 3, 2002. On May 2, 2002, the Complainant electronically submitted an Amended Complaint, with the hard copies arriving on May 6, 2002.
The Center reviewed the Amended Complaint to verify that it satisfied the formal requirements of STOP, the Rules, and the Supplemental Rules. On May 16, 2002, the compliance checklist was satisfied, and the Center notified Respondent of the commencement of this proceeding in accordance with the Rules.
On June 5, 2002, Respondent submitted its timely Response to the Complaint by e-mail and fax. The Center sent an Acknowledgement of Receipt of the Response on June 6, 2002, and received the hard copy of the Response on June 11, 2002.
On June 13, 2002, after clearing for any potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.
4. Factual Background
Complainantís mark, "Womenís Health," is registered in the United States Patent and Trademark Office ("PTO") (U.S. Registration No. 1,693,746) for newsletters dealing with health topics of interest to women. Although Complainant did not affirmatively disclose this in its Complaint, a careful review of the Annexes shows that the mark is registered only on the supplemental register, which is reserved for descriptive marks for which secondary meaning has not been shown. Complainant also claims trademark rights for its mark in such countries as France, Greece, Mexico, South Africa, and Spain, but Complainant has not provided supporting documentation to determine whether these registrations, like the U.S. registration, are of limited evidentiary value.
Complainant registered the domain name <womenshealth.info> on July 30, 2001; Complainant does not own <womenshealth.com>, <womenshealth.org>, or <womenshealth.net>.
Complainant has been in the business of publishing books and magazines for decades and has published a newsletter called "Womenís Health" periodically since 1991. The Panel was not furnished with circulation details, nor was it provided with any details of the collateral uses of the mark allegedly planned by Rodale, Inc.
Complainant states that it intends to promote its newsletter through its website, <womenshealth.info>, as well as offer other information and advice on many issues.
Respondent, an internet-based company specializing in marketing products and services online, registered the Domain Name on March 27, 2002. Respondent claims that it never intends to sell its various .BIZ registrations, but instead intends to create a web portal for the purchase of female health-related products. Although Respondentís <domainsinvest.net> site confirms that Resource Marketing does not wish to sell its .BIZ registrations, the rest of the site seems exclusively devoted to selling and speculating on domain names. Respondent notes that Complainant cannot provide evidence that the site has been listed for sale in its three months of existence and that the portal they intend to design will advertise health products and will not compete with the products offered by Rodale, Inc.
Respondent concedes full awareness of Complainantís trademark and plans to offer a disclaimer on <womenshealth.biz> to inform the reader that the site is not affiliated with Rodale, Inc.
5. Partiesí Allegations
Complainant contends that Respondent has registered a domain name that 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 the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith because either Respondent intends to compete with Complainant and/or intends to sell the domain. 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 Complainantís trademark rights.
Respondent admits that the domain name at issue is identical or similar to marks in which Complainant has rights, but denies that this identicality or similarity causes any confusion, in part because other domains that use Complainantís trademark are not affiliated with the Complainant and in part because Respondent intends to use the domain in a non-competing fashion. Respondent contends that it has legitimate interests in the domain name at issue, because it is making a bona fide offering of services of the type of which the domain name at issue is descriptive.
6. Discussion and Findings
Paragraph 4(a) of the STOP provides that, to justify the transfer of a domain name, a Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights;
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered or is being used in bad faith.
Respondent, who is appearing pro se, does not contest that Complainant owns trademark rights in "Womenís Health" or that <womenshealth.biz> is identical to Complainantís mark. The Panel, though, is not bound by that concession. To the contrary, the STOP requires the Panel to satisfy itself that the facts support a finding for Complainant on each of the three factors listed above. STOP Paragraph 4(a). The Panelís duty to careful scour the record is all the stronger when a Respondent has either defaulted or is appearing pro se, without legal counsel. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000).
A careful review of the record finds Respondentís concession to be misplaced. Respondentís error is understandable, though, because Complainant, in the Complaint, has attempted to mislead both Respondent and the Panel through material omission of fact (as this same Complainant did in Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002) (Complainant failed to disclose that trademark was registered on supplemental register)) and through affirmative misstatement of law.
As noted above, Complainant relies heavily on its trademark registration for "Womenís Health." Complainant, however, did not disclose in the text of the Complaint the material fact that the registration is on the supplemental register, which is reserved for descriptive marks for which secondary meaning has not been shown. Thus, unlike Complainantís well-known "Menís Health" mark, for which secondary meaning has apparently been proven to the PTO (see, e.g, U.S. Reg. No. 2,012,088; Rodale, Inc. v. Healthology, Inc., WIPO Case No. DTV2000-0005 (February 22, 2001) (finding rights in the mark "Menís Health," but declining transfer because Respondent had a legitimate interest in the domain name <menshealth.tv>)), Complainantís "Womenís Health" mark enjoys no presumption of validity.
Even worse, Complainant has affirmatively attempted to mislead the Panel. In the Complaint, Complainant argues that "Respondent was on constructive notice of Complainantís trademark rights in and registration for WOMENíS HEALTH by virtue of Section 22 of The Lanham Act, 15 U.S.C. ß1072." Complaint Paragraph 11. That section of the statute, though, applies only to marks registered on the principal register; it does not provide the benefit of constructive notice to the descriptive marks on the supplemental register.
This misconduct alone Ė Complainantís material omission and its affirmative misstatement Ė provides sufficient basis for the Panel to rule for Respondent. Here, a review of the three STOP factors supports that conclusion.
First, for the reasons discussed above, the Panel finds that Complainant has failed to establish trademark rights in the mark "Womenís Health." The mark is at least descriptive, and Complainantís failure to obtain a registration on the principal register strongly suggests that Complainant lacks secondary meaning in that mark. Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002); see also Pet Warehouse v. Pets.Com, WIPO Case No. D2000-0105 (April 13, 2000); Americaís Community Bankers Corp. v. Wing, WIPO Case No. D2000-1780 (March 5, 2001).
Second, Complainant has not established that Respondent lacks any legitimate interest in the Domain Name. Even if Complainant had trademark rights in the descriptive term "Womenís Health," those rights could not trump third partiesí right to make fair use of descriptive terms. 15 U.S.C. ß 1115(b)(4); see also Rodale, Inc. v. Healthology, Inc., WIPO Case No. DTV2000-0005 (February 22, 2001). Respondent has provided the Panel with some documentary evidence, albeit skimpy, showing that it has taken affirmative steps to plan for and develop a site for the purposes of offering womenís health-related goods and services in the future under the Domain Name. Given the rapid time period in which a STOP Complaint must be filed, this modest showing is sufficient to satisfy Respondentís obligation to show "demonstrable preparations to use" the Domain Name "in connection with a bona fide offering of goods or services." STOP Paragraph 4(c)(ii); see also Physik Instrumente GmbH. & Co. v. Kerner, WIPO Case No. D2000-1001 (October 3, 2000); Safmarine v Network Management, WIPO Case No. D2000-0764 (October 23, 2000).
Third, and in light of the foregoing findings, there is no evidence of bad faith on the part of Respondent. Respondent has not offered to sell the domain name to Complainant (to the contrary, Respondent has offered assurances that it has no intention of selling the domain name), nor has it posted a web site designed to confuse internet users as to the source of its services.
As noted above, though, there is evidence of bad faith on the part of Complainant. For the same reasons as those discussed in Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002), the frivolous nature of the Complaint, combined with Complainantís material omission and affirmative misstatement, compel a finding of Reverse Domain Name Hijacking.
The Panel finds that the Complainant has failed to establish rights in the mark "Womenís Health," has failed to show that Respondent lacks a legitimate interest in the domain name <womenshealth.biz>, and has failed to show that Respondent registered or used the domain name in bad faith. Accordingly, the Panel denies the request to transfer the Domain Name to the Complainant.
Because the Panel has found that Respondent has made a showing of a legitimate interest in this Domain Name, the Panel holds pursuant to Rule 15(e) that subsequent STOP challenges shall not be permitted. This finding of a legitimate interest is solely for purposes of the STOP, based on the limited record available in STOP proceedings, and is without prejudice to any claims made in any subsequent proceedings under the RDRP or UDRP.
In light of the frivolous nature of the Complaint and Complainantís attempt to mislead the Panel, both by omitting material evidence from its Complaint and by affirmatively misstating the applicable law, the Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.
David H. Bernstein, Esq.
Dated: July 7, 2002
1. The Panel has learned through its independent research on the PTO website that Complainant also was the owner of a registration, now canceled, for "Women's Health Companion" (U.S. Registration No. 1,842,766). Although that registration was on the principal register, Complainant was forced to disclaim any exclusive right to use "Women's Health" apart from the mark as shown, which provides further proof for the finding that "Women's Health" is a purely descriptive mark and that Complainant has established no trademark rights in that mark. See generally Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002).