musclenfitness.com

WIPO Arbitration and Mediation Center

The Complainant is Weider Publications, Inc., of 21100 Erwin Street, Woodland Hills, California, United States of America, represented by Mark A. Goldstein of Blakely, Sokoloff, Taylor & Zafman, LLP of Los Angeles, USA.

The Respondent is Don Ho Cha of KumChunKo Shihungdong Han Yang Apartment 1-1213, Seoul, Korea.

The disputed domain name is "musclenfitness.com " and the Registrar is Tucows, Inc. of Toronto, Ontario, Canada.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on January 18, 2001, and in hard copy on January 22, 2001. The Center acknowledged receipt on January 23, 2001, and next day sought registration details from the Registrar. On January 29, 2001, the Registrar noted that it had received a copy of the Complaint from the Complainant, as required by the Supplemental Rule 4(b), and confirmed that the disputed domain name is registered with the Registrar; the Respondent is the registrant; the record was created on June 27, 2000, and that the Policy is applicable to the disputed domain name.

On January 30, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements of the Rules, including payment of the prescribed fee and that day formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly January 30, 2001. The last day specified in the notice for a response was February 18, 2001. The Response was filed by email on February 18, 2001, and in hardcopy on February 27, 2001. The Center acknowledged receipt on February 19, 2001.

On February 28, 2001, the Center drew to the attention of the Complainant paragraph (VIII) of the Complaint under the heading "Mutual Jurisdiction" which contained a submission to the courts of the Central District of California, instead of to the courts of either Korea or Canada, as required by Rule 3(b)(xiii). The Center invited the Complainant to amend the Complaint appropriately and the Complainant did so by email that day, submitting to the jurisdiction of the courts of Toronto, Ontario, Canada.

On March 2, 2001, the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Center nominated March 16, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

On March 13, 2001, the Complainant sought to amend the Complaint further. The panel decided to permit the further amendment and that, having regard to the view taken by the panel on the evidence as a whole, fairness to the Respondent did not require that the Respondent be afforded the opportunity to respond to the amendment.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the amended Complaint complies with the formal requirements of the Rules; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.

The Complainant, based in the United States, has published since 1982 a monthly printed magazine concerning health and fitness, under the trademark MUSCLE & FITNESS, which it registered in the USA. on May 31, 1983 (Registration No. 1240271) in International Class 16 in respect of magazines. Since April 1997 the Complainant has used the MUSCLE & FITNESS mark in relation to the provision of on-line magazines and information in the field of health and fitness. On June 23, 1999 it registered that mark in the USA. in International Class 42 in respect of computer services of the kind just described, including "providing information in the field of health and fitness via a global communication information network site" (Registration No. 75231064).

By virtue of the late amendment to the Complaint dated March 13, 2001, it appears the Complainant’s licensee, Mariz Gestao E Investimentos Limitada, of Madeira, Portugal, is the owner of the registered trademark MUSCLE & FITNESS in Korea in relation to magazines, posters, books, calendars and catalogs. A translation of the official register reveals that the application was filed in February 1998 and the mark was registered on January 18, 1999.

The Respondent and his younger brother are postgraduate University students in Korea. The Respondent registered the disputed domain name on June 27, 2000.

The domain name "musclenfitness.com" is the same as or is confusingly similar to the MUSCLE & FITNESS mark registered to and used by Complainant on magazines and on-line magazines. Respondent formed the "musclenfitness.com" domain name merely by combining the two words included in the registered mark of Complainant with the single letter "n" in place of the ampersand ("&") included in the registered versions of the mark. It is well known that persons speaking English often shorten the word "and" and pronounce it as the letter "n." As such, persons encountering the "musclenfitness.com" domain name will wrongly believe that information contained on any "musclenfitness.com" website emanates from, is endorsed by, or is licensed by Complainant.

The Respondent has no rights or legitimate interests in the Disputed Domain Name. More specifically:

i. Respondent is not commonly known by the Disputed Domain Name, and has acquired no trademark or service mark rights in the Disputed Domain Name.

ii. Respondent has not used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Although Respondent registered the Disputed Domain Name on June 27, 2000, he has not made any use of the Disputed Domain Name. Attempts to access a website at the Disputed Domain Name proved unsuccessful on January 11, 2001, and at other earlier dates.

iii. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

By registration of the Disputed Domain Name, the only reasonable motivation attributable to Respondent is an intent to profit from and trade on the name and good will of Complainant’s longstanding and well-known registered trademark, registered service mark, and magazine.

By registering the Disputed Domain Name, Respondent can only have acted to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of any website the Respondent may create at the Disputed Domain Name.

Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the MUSCLE & FITNESS mark in a corresponding domain name.

As Respondent has registered and failed to use the Disputed Domain Name, it has registered and used the Disputed Domain Name in bad faith. McNeil Consumer Brands v. Mirweb Solutions, WIPO Case No. D2000-0612 (August 3, 2000); Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (Registration of a domain name followed by non-use of the domain name has been referred to as passive use that amounts to registration and use in bad faith).

I was born strong, healthy, and muscular by nature - in good shape and fitness. So was my younger brother, Nam Ho Cha. That's why Dong Hun Yu, one of my old friends, long ago called us by the nicknames "muscle" and "fitness". Not only he but also everyone we know has called us by those names even at home, church and elsewhere. So when we decided to have a family homepage website in an attempt to apply the knowledge gained in our studies, we decided to make use of our nicknames – "muscle" and "fitness" as a domain name so that it would be easily recognizable to our friends.

We first ascertained that the domain name "musclenfitness.co.kr" was unavailable for registration in Korea but that "musclenfitness.com" was available. So my brother and I decided to register "musclenfitness.com" as a domain name.

We had never heard of the trademark MUSCLE & FITNESS nor of the Complainant until this dispute arose.

Also before this dispute arose, my brother and I made preparations for a website using the domain name, for the non-commercial, family purpose of presenting useful information including tips about my family, golf, therapy and Korea ginseng. My sister is a therapist and her husband (my brother-in-law) a golf player. Every member of our family is very interested in health.

[The Respondent made numerous further submissions, which revealed a good knowledge of the cases on domain name disputes, but it is unnecessary to summarize those submissions here].

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered and is being used in bad faith.

Rights

The words "muscle" and "fitness" are ordinary descriptive words of common English usage. In combination with an ampersand, they are capable, through use, of denoting the goods or services of one trader, to the exclusion of others, just as the word "apple", in the field of computers, has come to denote a single trader. But marks of this kind lack the distinctiveness of invented words, like KODAK, SONY or MICROSOFT because it is necessary to identify the field of use (such as computers in relation to the word APPLE) before it can be appreciated that they are being used as trademarks and not as common descriptive words. The Complainant has produced copies of its registrations of the trademark MUSCLE & FITNESS and has established that it has rights in that mark in the United States. But, for the reasons just given, it is an inherently weak mark, the more so because it is used in connection with publications which concern health and fitness.

The registration by the Complainant’s licensee in Korea does not augment the Complainant’s rights and the Complainant does not so assert.

Identity or confusing similarity

"Essential" or "virtual" identity is sufficient for the purposes of the Policy: see e.g. The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, WIPO Case (D2000-0113) and Nokia Corporation v. Nokiagirls.com WIPO Case (D2000-0102).

USA cases have adopted the same approach, see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s" and the domain name "sportys.com" – specifically, an apostrophe in the trademark and the addition of ".com" in the domain name – are "inconsequential", such that the domain name is "indistinguishable" from and "certainly ‘confusingly similar’ to the protected mark").

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc., WIPO Case (D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) WIPO Case (D2000-0109).

Here, the disputed domain name incorporates the two most significant words of the Complainant’s mark and links them with the letter ‘n’ whereas the trademark uses an ampersand for this purpose. Visually and aurally the two are virtually indistinguishable.

The panel finds the disputed domain name to be virtually identical and to be confusingly similar to the Complainant’s trademark. The Complainant has established this element.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.

There is no evidence the Respondent was aware of the Complainant or the trademark MUSCLE & FITNESS when he registered the disputed domain name. The Respondent asserts that he had no such knowledge prior to this dispute. Having regard to the descriptive nature of the words comprising the Complainant’s mark; to the fact that the Respondent is in Korea and the Complainant is in the United States; to the absence of any evidence that the Complainant’s printed magazine is published or circulates or is known in Korea and to the lack of evidence that the Complainant’s online activities have led to the recognition of its mark in Korea, the Panel accepts the Respondent’s assertion.

The question arises whether the registration of the trademark in Korea by the Complainant’s licensee makes it likely the Respondent was aware of that mark, even though the Complainant is not the owner. There is no evidence of use of the mark in Korea by the Complainant’s licensee and accordingly no reason to reject the Respondent’s assertion that he was unaware of the mark prior to this dispute.

The Respondent asserts that he and his younger brother have long been known by the nicknames "muscle" and "fitness". The Respondent submitted a "sworn declaration" of Mr. Dong Hun Yu stating that he was the originator of those nicknames and that the Respondent and his brother have been commonly and widely known by those names. Mr. Dong also stated that he knew the brothers registered their nickname as a domain name to make a family website.

The Panel sought confirmation that the declaration was in fact sworn on oath, since the typewritten version accompanying the Response did not appear to have been sworn or witnessed. The Respondent stated in reply that the document was in fact sworn on oath according to the Korean Civil Proceedings Act, Clause 292, Article 2 and Clause 329. He submitted a handwritten certificate from Mr. Dong appearing to verify that the declaration (set out again in the certificate) was sworn on oath in accordance with that law. Copies of Mr. Dong’s identity papers were attached.

On the material before the panel the Respondent has shown that he and his brother are and have been for some time commonly known by the names "muscle" and "fitness".

The Respondent also submitted evidence that prior to this dispute (namely on January 1, 2001), he and his brother prepared a document entitled "Website Project". That document contains the words "Muscle" and "Fitness", followed in parentheses by the names "Donho and Namho" and the names of their father, mother, sister and brother-in-law, as well as the brothers’ names in full. The document comprises a summary description of the contents and structure of a proposed website. There is a "Project Progress Schedule" showing the various planned stages from "Project Plan", starting on January 1, 2001, through to "Test and Completion" ending on January 30, 2001. The Respondent stated that the intended opening of the website on February 1, 2001, was delayed by the bringing of this complaint.

On the material before the panel, there is no reason to doubt the Respondent’s assertion and the panel accepts that, before the Respondent received notice of this dispute, he engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services, namely information about his family and about heath and fitness in general.

The panel finds the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name under Rule 4(a)(ii) and that the Respondent has demonstrated that he does have rights or legitimate interests in and to that name, under Rule 4(c)(i).

Bad faith

Since it is unnecessary to deal with this issue, it may be noted simply that the Respondent’s lack of knowledge of the trademark prior to this dispute is fatal to this aspect of the Complainant’s case. In any event, prior knowledge of a weak mark does not, without more, establish bad faith: Goldline International Inc., v. Gold Line WIPO Case(D2000-1151).

The complainant has not shown either bad faith registration or bad faith use.

Pursuant to paragraph and 15 of the Rules, the panel concludes that the dispute is not within the scope of paragraph 4(a) of the Policy and dismisses the Complaint.

Alan L Limbury
Sole Panelist

Dated: March 14, 2001