WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rodale, Inc. v. Cass Foster
Case No. DBIZ2002-00148
1. The Parties
The Complainant is Rodale, Inc., a corporation organized and existing under the laws of the State of Pennsylvania, having its principal place of business at 33 East Minor Street, Emmaus, Pennsylvania, United States of America.
The Respondent is Cass Foster, an individual with a mailing address at Foster Chiropractics, P.O. Box 7700, Tempe, Arizona, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <menshealth.biz>, which is registered with TierraNet, Inc. d/b/a Domain Discover, having its principal place of business at San Diego, California, United States of America ("TierraNet").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center (the "WIPO Center") on April 27, 2002, in electronic format and on April 29, 2002, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The WIPO Center transmitted an Acknowledgement of Receipt of Complaint on May 3, 2002.
The WIPO Center verified that the Complaint satisfied the formal Requirements of the STOP, the STOP Rules, and the WIPO Supplemental STOP 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 STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required fees were paid on time and in the required amount by Complainant.
No deficiencies having been recorded, on May 13, 2002, A Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, TierraNet, and ICANN), setting a deadline of June 2, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Registrars.com's records. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On May 13, 2002, the WIPO Center received by email a Response, and on May 14, 2002, the Center sent the parties an Acknowledgment of Receipt of STOP Response.
On May 27, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the WIPO Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant is the holder of several trademarks and service marks for MEN'S HEALTH and closely related marks. Complainant's first trademark for MEN'S HEALTH dates to 1987. Complaint, Annex 3.
Complainant uses the mark in conjunction with various products, including a periodic magazine, books, fitness equipment, audio and videotapes, signal whistles and therapeutic masks, luggage, clothing, and mail order book club services. Complainant operates a web site at <menshealth.com>, which receives 17,000 visits per day. Complainant argues that it is well known around the world for its marks and for its products. Respondent concedes as much: "I am in complete agreement with how much RODALE, INC. has done and continues to do in the pursuit of quality and lasting assistance in the world of men's health." "RODALE, INC. does in deed [sic] own numerous U.S. trademark and service mark applications and registrations, however, they do not own the protected trademark of 'menshealth.'" "We are not trying to hurt or damange [sic] RODALE, INC. We admire them for what they do."
Respondent is not licensed to use Complainant's trademarks, nor is there any other relationship between the parties that would entitle Respondent to use the mark.
Respondent registered the domain name at issue on March 27, 2002. Complaint, Annex 31. Respondent states that his "[v]ision and goal is to reduce preventable risks and to help men and boys live [sic] longer, healthier lives."
Respondent contends that many other entities and organizations operate under the trade name or service mark MEN'S HEALTH. Therefore, MEN'S HEALTH should be available for general use. Respondent is willing to put a disclaimer on the web site to which <menshealth.biz> resolves, indicating that Respondent is in no way connected to Claimant.
5. Partiesí Contentions
Complainant contends that the domain name at issue is identical to Complainant's MEN'S HEALTH mark. Complainant contends that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered the domain name at issue in bad faith.
Respondent contends that the MEN'S HEALTH mark is not identical to <menshealth.biz> and that the mark is generic and that Respondent has as much right to use the name as Complainant.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "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."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Domain Name is Identical to Complainantís Mark
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered in Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights. The absence of a space between words or of a hyphen does not affect the determination of identicality. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029 (omitted space not a factor in determining identicality); Chi-Chi's, Inc. v. Restauran Commentary (Restaurant Commentary), WIPO Case No. D2000-0321 (omission of hyphen in domain name not factor in determining identicality).
Complainant's Rights in the Mark
Complainant has rights in the mark MEN'S HEALTH as demonstrated by its registered trademarks and service marks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Under the STOP Procedures, the "Notice of a .biz Intellectual Property Claim" form is sent to every potential registrant where there is a pre-filed IP Claim. The form contains the following notice to potential registrants:
"According to our records you have applied for the above listed .BIZ domain name. The purpose of this E-mail is to formally notify you that the domain name for which you applied matches one or more Intellectual Property (IP) Claims that were received by the .BIZ Registry. In other words, one or more intellectual property owners believe that they have intellectual property rights in the domain name for which you have applied. You should be aware that if you choose to continue the application process, your domain name registration may be challenged under several Internet Corporation for Assigned Names and Numbers (ICANN)-approved dispute resolution mechanisms, including the Start-up Trademark Opposition Policy (STOP) http://www.neulevel.BIZ/countdown/stop.html and the Uniform Dispute Resolution Policy (UDRP) http://www.icann.org/udrp/udrp.htm."
Thus, Respondent was put on notice prior to registration that a potential STOP claim existed from an intellectual property owner. Moreover, this Respondent made it clear that he was very aware of Complainant and Complainant's products. The "Notice of a .biz Intellectual Property Claim" put Respondent on constructive notice of Complainant's intellectual property rights (see, e.g. Gene Logic Inc. v. Cho Kyu Bock, NAF Case No. FA0112000103042), as did Complainant's familiarity with Complainant and its products. Respondent cannot have rights or legitimate interests in respect of a domain name when he is on such constructive notice and where the mark is effectively acknowledged by Respondent to be well known or famous. See, e.g., United Artists Corporation v. United Artists Corp., FA Case No. 94648.
Bad Faith Registration or Bad Faith Use
Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Registration of a domain name after receiving constructive knowledge of an intellectual property claim and after having actual knowledge of Complainant's use of the mark in an area of commerce virtually identical for that for which Respondent intended to register the mark constitutes bad faith registration.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the STOP Policy, the Panel requires that the registration of the domain name <menshealth.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: June 4, 2002