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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rosemary Conley Diet and Fitness Clubs Limited v. Nikolina Bartels-King

Case No. D2006-1401

 

1. The Parties

The Complainant is Rosemary Conley Diet and Fitness Clubs Limited, United Kingdom of Great Britain and Northern Ireland, represented by Harvey Ingram LLP, of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Nikolina Bartels-King, London, of United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <rosemaryconley.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006. On November 6, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 7, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2006.

The Center appointed James A. Barker as the sole panelist in this matter on December 21, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the trading company of Rosemary Conley, a health and diet expert (for convenience, both are referred to collectively in this decision as “the Complainant”).

The Complainant operates diet and fitness clubs, and publishes the “Rosemary Conley Diet and Fitness Magazine”. The Complainant is also the author of a number of books relating to diets and weight loss. The Complainant maintains a website at “www.rosemary-conley.co.uk”.

The Respondent is an individual apparently resident in London, England. At the date of this decision the disputed domain name did not revert to an active website.

 

5. Parties’ Contentions

A. Complainant

The Complaint includes the following contentions.

Identical or confusingly similar

The Complainant gives evidence that it has registered rights in marks including the text ROSEMARY CONLEY. A number of those marks were registered before the registration of the disputed domain name. The Complaint attaches evidence of those rights as registered with the UK Patent Office.

The Complainant provides evidence of its registered trademark rights under a heading relating to identical or confusing similarity.

Rights or legitimate interests

The Complainant states that the Respondent has made no attempt to use the disputed domain name, since it was first registered in 1999. The Complainant states that it is unaware of any bona fide goods or services being offered by the Respondent, and claims that the Respondent would be liable to the Complainant for breach of its trademarks and/or for passing off. Because no active use has been made of the disputed domain name, the Complainant contends that the Respondent has not made a genuine use of it.

The Complainant states that it is not aware that the Respondent has ever been known by the disputed domain name.

Bad Faith

The Complainant claims that the Respondent’s bad faith is evidenced by the Respondent’s lack of active use of the disputed domain name. The Complainant suggests that the disputed domain name was registered for the Respondent to benefit from the goodwill in the Complainant’s name “Rosemary Conley”.

B. Respondent

The Respondent did not submit a Response, and has otherwise made no communication in connection with this case. The Complainant states that all of its letters to the Respondent have been returned, marked “addressee gone away”.

 

6. Discussion and Findings

For the Complainant to succeed and have the disputed domain name transferred to it, paragraph 4(a) of the Policy provides that the Complainant must prove that:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove all of these elements. These elements are discussed in turn as follows.

A. Identical or Confusingly Similar

The Complainant has established that it has registered rights in marks comprising the name “Rosemary Conley”.

The disputed domain name is virtually identical to the textual elements of the Complainant’s ROSEMARY CONLEY marks. It is well-established under the Policy, that the extension “.com” is to be disregarded in determining identicality or confusing similarity. Disregarding that extension, the disputed domain name is clearly identical to the textual elements of the Complainant’s mark.

The Panel finds that paragraph 4(a)(i) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant essentially contends that the Respondent has no rights or legitimate interests in the disputed domain name, firstly, because the Respondent has not used it and, secondly, because the Respondent is not known by that name.

Although the Complainant could have developed stronger arguments, the Panel is satisfied on the evidence that Complainant has at least established a prima facie case sufficient to shift the burden to the Respondent to establish that she does have rights or legitimate interests in the disputed domain name. (See e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455)

The Respondent has provided no evidence in response. Neither is there any evidence in this case that is inconsistent with the Complaint.

In relation to the Complainant’s first contention, a lack of active use (in the sense that the disputed domain name does not revert to an active website) is not necessarily evidence of a lack of rights in the disputed domain name. But without any evidence of active use, and with no response, there is nothing before the Panel to indicate that the Respondent has such rights or legitimate interests.

In relation to the Complainant’s second contention, the Respondent is registered as “Nikolina Bartels-King”. There is no other evidence before the Panel that the Respondent is known by the disputed domain name, such that she might naturally have a right or legitimate in the disputed domain name.

For these reasons, the Panel finds that paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

The Complainant supports its allegation of bad faith by essentially reiterating its claim that the Respondent has made no active use of the disputed domain name.

However, a lack of active use does not in itself demonstrate bad faith. Previous panels have found that a lack of active use “does not, however, resolve the question…[T]he relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” (See, in particular, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the Telstra case”) ( The panel further went on to note that:

“the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts…[P]aragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” [emphasis added]

The point is essentially that there must usually be (as there was in the Telstra case) facts or circumstances additional to a passive registration that demonstrate bad faith. On this approach, acting in bad faith requires an assessment of all the circumstances of the case, including other circumstances of action and/or inaction of the Respondent. In this case, there are such other circumstances, which are discussed below.

The Complainant also contends that the domain name was registered by the Respondent to benefit from the Complainant’s goodwill in its mark. (This contention is related to paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) provides that there is evidence of bad faith where the Respondent has attempted to attract Internet users by creating a likelihood of confusion with a complainant’s mark.) The Panel does not accept this second contention of the Complainant’s, since it is apparently in conflict with the evidence that the Respondent has made no active use of the disputed domain name.

There are otherwise no circumstances of the kind set out in paragraph 4(b) of the Policy, which sets out other circumstances which, if the Panel finds proved, are taken to be evidence of a respondent’s bad faith.

However (as noted above in the quote from the Telstra case) paragraph 4(b) is not an exhaustive list of circumstances in which bad faith can be found. In this case, there are other circumstances which are sufficient to make a finding of bad faith for the purpose of the Policy.

Previous panels have found that a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademark rights, and nevertheless registered a domain name incorporating that mark, in circumstances where the respondent itself had no rights or legitimate interests. (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.) The Complainant has provided substantial evidence of the Complainant’s business activities, including the Complainant’s publications and on-line activities. From the Complainant’s evidence, it is apparent that the Complainant largely targets its business at a UK audience. The Complainant is a company registered in the UK and has its marks registered in that jurisdiction.

The Respondent’s reasons for the registration of the disputed domain name are obscured by the lack of a response. However, the Respondent is resident in the UK, where the Complainant predominantly and extensively conducts its activities. This fact is suggestive that the Respondent knew or ought to have known of the Complainant and its marks. It is therefore difficult in the circumstances to conceive of a plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate. These circumstances, together with there being no evidence that the Respondent herself has a right or legitimate interest (as discussed above), indicate that the disputed domain name was registered and is being used in bad faith.

The Panel finds that paragraph 4(a)(iii) of the Policy is established.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <rosemaryconley.com> be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: January 18, 2007