vitalityonline.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is Rusconi Editore S.p.A., Viale Sarca 235, 20126 Milano, Italy.

The Respondent is Bestinfo., Att: David Webb, 2183 W. Buckingham Rd, #324, Richardson, Tx 75081, U.S.A.

The Domain Name is <vitalityonline.com>.

The Registrar is Tucows.com, Inc.

The Complaint was received by WIPO by email on May 16, 2001 and in hard copy form on May 18, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <vitalityonline.com> ("the Domain Name") was registered through Tucows.com, Inc and that Bestinfo ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On May 23, 2001 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was June 11, 2001. On June 11, 2001 a Response was received by WIPO by email and on June 13, 2001 in hardcopy form.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is July 9, 2001.

The Complainant is an Italian-based magazine publisher. One of its magazines is named "Vitality".

The Complainant is the registered proprietor of four trade mark registrations for the word VITALITY, all of which are over ten years old. Two are Italian registrations, one is an international registration covering France, Germany, Austria and Switzerland and the fourth is another international trade mark registration covering Germany, Bosnia Herzegovina, Bulgaria, the Russian Federation, Hungary, Romania and Yugoslavia.

The Respondent is a trading name of David Webb, a 57 year old retired mechanical engineer living in Texas. He registered the Domain Name in May 2000. As at the date of the commencement of this administrative procedure, the Domain Name was not connected to any online facility.

On November 23, 2000 a lawyer representing the Complainant wrote to the Respondent drawing the Respondent’s attention to the Complainant’s trade marks, observing that the registration and utilisation of the Domain Name could amount to infringement of the Complainant’s Italian intellectual property rights and seeking a "friendly" resolution of the matter. No response was received, so a chaser was sent on January 22, 2001. No response having been received, the Complainant commenced this Complaint.

The Complainant contends that the Complaint should succeed on the following grounds:-

- The Domain Name is identical to the Complainant’s registered trade mark VITALITY. The Complainant points to the worldwide fame of the Complainant’s Vitality magazine.

- The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points out that the Respondent has not used the Domain Name for any offering of goods or services; the Respondent is not known as "Vitality".

- The Domain Name has been registered in bad faith and used in bad faith. The Complainant relies upon the Respondent’s failure to reply to the Complainant’s correspondence. The Complainant also points to a Whois search demonstrating that the Respondent possesses 17 domain name registrations. According to the Complainant some are not being utilised at all, whilst others are under construction. The Complainant infers that the Respondent registered these Domain Names primarily for the purpose of selling them to the proprietors of corresponding trade marks. In addition, the Panel assumes, although this is not expressly stated in the Complaint, that the Complainant is for this purpose relying upon the fame of the Complainant’s Vitality magazine having spread as far as the Respondent in Texas.

The Respondent argues that the Complaint should fail. It relies upon the following:-

- Vitality is a common English word. None of the Respondent’s registrations cover English speaking countries.

- In the United States there are a large number of people who have rights one way or another in the name Vitality.

- The Complainant has no website or URL address.

- There are two other websites,<vitality.com> and <vitalitymagazine.com>, about which the Complainant appears to have done nothing.

- As the Complainant must know, the Respondent is not causing any confusion to the Complainant’s business.

- The Complainant has not proven notoriety of the name VITALITY.

- The Complainant is simply seeking a website on the internet and has taken a liking to the Domain Name. The Complainant is seeking to relieve the Respondent of the Domain Name by exaggerating its case.

- The Respondent had never heard of Vitality magazine before the Complaint.

- The Respondent is proposing to use the name <vitalityonline.com> as a website offering nutritional products for sale, but solely within the continent of the United States.

- The Complainant does not do business in English speaking countries, so there will be no overlap between the respective businesses of the parties.

- The Respondent, seeking to establish good faith, produces a copy of a letter from Card Service International purporting to show that he is contracted to use their internet credit card processing software and to lease the same for $67 per month on a 36 month lease.

- The Respondent did not acquire the Domain Name in bad faith and is not using it in bad faith. The name has never been offered for sale and is not for sale.

- The delays in developing the website stem partly from the fact that the Respondent does not have sufficient money available to engage independent designers, which has meant that the Respondent has had to learn for himself the various operating systems, which has taken time and partly because the Respondent’s mother was ill in hospital from December 2000 until March 2001, when she died. The Respondent was her legal guardian and spent the time caring for his mother until her death.

- The failure of the Respondent to answer the Complainant’s lawyers’ letters was simply that he had his mind on other things. He was engaged full time in looking after his mother. He says that if he had been sent emails he could have responded immediately.

The substantive part of the Response concludes as follows:-

"The Respondent would ask that the Panel review the facts in this matter and find that the Complainant has no right to the name <vitalityonline.com>. Complainant has failed to prove that the name is similar confusing especially since all it’s business is done in non English speaking countries and it’s revenue is basically derived from advertising as do most magazines. Complainant has proven by Annex "C" that he has not trademarked the name "Vitality" in any English speaking country. Complainant has not proven that Respondent acquired the name or is using the name in bad faith or has tried to sell the name. Complainant has not offered any viable reasons why Respondent does have the right to use the name. The respondent business is solely to be directed to the United States market via an English only website and certainly will not offer a foreign language website version. Respondent would also ask the Panel find the Complainant guilty of "Reverse Domain Hijacking" especially since the Complainant has no website and has filed a complaint primarily using facts that are not logical. Complainant having failed to bring any action against <vitality.com> or <vitalitymagazine.com> further supports "Reverse Domain Hijacking" as conclusion in this Complaint."

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely: -

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."

The Complainant has satisfied the Panel that it is the proprietor of trade mark registrations for the word VITALITY. The Domain Name comprises (a) the Complainant’s registered trade mark, which is also the name of the Complainant’s magazine, (b) the generic term "online" and (c) the generic domain suffix. The Panel finds that the Domain Name is a particularly apt name for an online version of the Complainant’s magazine and the Panel readily accepts that if someone were seeking to access an online version of the Complainant’s magazine, they might well search by reference to the Domain Name.

On that basis, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

The Domain Name is not a name by which the Respondent is known. Nor is it a name under or by reference to which the Respondent has been offering goods or services. The Respondent claims to have plans to offer goods online through a website connected to the Domain Name, but has produced no demonstrable evidence of those plans beyond a neutral letter from Card Service International, "neutral" in the sense that it makes no reference to any name under which the Respondent proposes to trade.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to have been proved, will demonstrate a Respondent’s rights or legitimate interests in respect of the Domain Name. The Panel finds none of those circumstances to have been proved and has nothing before it to show how else the Respondent might be said to have rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Policy is directed to dealing with cybersquatters. For an allegation of bad faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the Domain Name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainant’s rights in respect of the trade mark in question.

Paragraph 4(b) of the Policy comprises a non-exhaustive list of circumstances, which shall demonstrate bad faith registration and use of a domain name. One thing that all those circumstances have in common is that the Respondent had the Complainant or its trade mark in mind at the relevant time.

The Respondent denies that he was aware of the existence of the Complainant or its magazine at the time the Complaint was lodged. The Panel knows of no reason why he might have been. As the Respondent points out, the Complainant’s trade mark registrations are restricted to non-English speaking countries in Europe and while the Complainant broadly asserts a worldwide notoriety for the trade mark, no evidence of world wide notoriety is provided. Specifically, the Complainant has produced no evidence that its Vitality magazine is distributed or known in the United States.

The Panel accepts the Respondent’s evidence that he was not aware of the Complainant or Vitality magazine when he registered the Domain Name and accordingly finds that the Complainant has failed to prove that the Domain Name was registered in bad faith and is being used in bad faith.

Since the Complainant has mentioned other Domain Name registrations in the name of the Respondent, the Panel should mention that only one was recognised by the Panel, a domain name, which is the name of a sports team. Certainly there was nothing about the list from which the Panel could conclude that registration of the Domain Name was part and parcel of a cybersquatting exercise.

The Panel has found that the Complaint fails, but given the Complainant’s trade mark rights, the similarity of the Domain Name to the Complainant’s trade mark and the failure (albeit for good reason) of the Respondent to respond to the Complainant’s letters, the Panel does not believe that this complaint constitutes an abuse of the Policy.

The Panel rejects the allegation of reverse domain name hijacking.

The Complaint is dismissed.

Tony Willoughby
Sole Panelist

Dated: July 5, 2001