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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cynthia Conde v. Kristina Fjeld Olenec

Case No. D2006-1608

 

1. The Parties

The Complainant is Cynthia Conde, Woodside, New York, United States of America.

The Respondent is Kristina Fjeld Olenec, New Hampshire, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bridalbootcamp.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2006. On December 20, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 26, 2006, BulkRegister.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 12, 2007. The Center verified that the Complaint together with the amendment to 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 January 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2007. The Response was filed with the Center on February 8, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on February 19, 2007. 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 owner of the federally registered BRIDAL BOOTCAMP THE WEDDING FITNESS SPECIALIST and BRIDAL BOOTCAMP marks (collectively the BRIDAL BOOTCAMP marks). These marks were registered with the United States Patent and Trademark Office (USPTO) on April 13, 2004, and July 25, 2006, respectively. The Complainant first began using the BRIDAL BOOTCAMP marks in connection with a fitness program for brides in February 2001. Subsequently, the Complainant in 2004 published a fitness book for brides entitled “Bridal Bootcamp, Look Fabulous on your Big Day”. The Complainant also launched a fitness competition for brides sponsored by Gold’s Gym International, under the name “Bridal Bootcamp Fitness Challenge”. Since 2004, the Complainant has operated a website in connection with her fitness business at “www.bridalbootcamponline.com”.

The disputed domain name <bridalbootcamp.com> was registered by the Respondent on January 7, 2000. Prior to receiving notice of this dispute, the Respondent had made no active use of the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant maintains that she has made extensive use of the BRIDAL BOOTCAMP marks since first used in connection with a fitness program for brides in early 2001, as a result of which the BRIDAL BOOTCAMP marks enjoy substantial good will and have become famous. The Complainant contends that her fitness program has received extensive promotion on national television and radio in the United States since 2001, reaching millions of viewers daily.

In addition, the Complainant alleges that she has used the BRIDAL BOOTCAMP marks in the advertising and promotion of various fitness and nutrition programs, a fitness book, and in connection with the sales of t-shirts, hats and make up kits in her facilities and online. The Complainant contends that she has extensively licensed the BRIDAL BOOTCAMP marks for use, and that a “reality” television program to be called “Bridal Bootcamp” will air in 2007. Accordingly, the Complainant asserts that she has created a niche in the bridal fitness market.

The Complainant contends that the disputed domain name is identical or confusingly similar to the BRIDAL BOOTCAMP marks. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has made no use of the domain name since obtaining the domain name registration more than seven (7) years ago. The Complainant further contends that any attempted use of the disputed domain name by the Respondent would encroach upon the Complainant’s rights in the BRIDAL BOOTCAMP marks and would create a likelihood of confusion between the Complainant’s marks and any website associated with the disputed domain name, or any goods or services offered thereon. Further, the Complainant argues that the Respondent has attempted to conceal her identity, and failed to respond to the Complainant’s notice letter and to address the complaints raised therein both under the Policy and with respect to the Complainant’s asserted trademark rights. For these reasons, the Complainant urges that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent concedes that the disputed domain name is identical to the Complainant’s federally registered BRIDAL BOOTCAMP mark, but notes that she registered the disputed domain name on January 7, 2000, more than a year prior to the Complainant’s first claimed use of the mark in commerce, and more than six (6) years prior to the USPTO’s registration of the BRIDAL BOOTCAMP mark.

According to the Respondent a website on “www.bridalbootcamp.com” will be launched in November 2007, which will not compete with the goods and services offered by the Complainant and will not violate the Complainant’s rights in the BRIDAL BOOTCAMP marks. Since the goods and services that the Respondent intends to offer on her website will differ from those goods and services for which the Complainant registered the BRIDAL BOOTCAMP marks, the Respondent avers that her anticipated use of the disputed domain name will not result in any likelihood of confusion.

The Respondent denies any bad faith. According to the Respondent, the domain name has never been offered for sale, and she has turned down offers to sell the domain name. The Respondent denies any attempt to conceal her identity, stating that her name was changed by virtue of her marriage and that she relocated in furtherance of her and her husband’s careers. The Respondent also contends that she updated her contact information with the domain name registrar.

 

6. Preliminary Issues

A. Complainant’s Supplemental Filing

Subsequent to the filing of the Response, the Complainant forwarded to the Center an uninvited supplemental submission. No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental submissions by either party to the administrative proceeding without leave from the Panel. Rather, paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties.

The Complainant’s supplemental submission essentially is a rebuttal to the Response, consisting primarily of argument reiterating positions set forth in the Complaint. It does not provide material information that was not already in the Complaint or that could not have been included in the Complaint. Given the foregoing, and with a view to procedural efficiency and the Panel’s obligation to treat each party with equality, the Complainant’s supplemental submission will not be considered.

 

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Respondent acknowledges that the disputed domain name is identical to the Complainant’s registered BRIDAL BOOTCAMP mark. The Respondent argues that she registered the disputed domain prior to the Complainant’s establishment of any right in the mark, but it is not necessary under paragraph 4(a)(i) for a complainant to demonstrate that its rights in a mark arose prior to a respondent’s registration of a confusingly similar domain name. See, e.g., Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.¹ Accordingly, the Panel finds that the Complainant has satisfied her burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the Complainant’s BRIDAL BOOTCAMP marks or to register domain names reflecting those marks. The Respondent has made no claim to have been commonly known by the disputed domain name, and has made no noncommercial or fair use of the domain name. Further, the record does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services prior to the commencement of this administrative proceeding.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent meets none of the safe harbors in paragraph 4(c) of the Policy. The Respondent has not been commonly known by the disputed domain name. She does not claim to have made any noncommercial or fair use of the domain name. And the Respondent has presented no evidence of her use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services prior to notice of this dispute. The Respondent simply claims that she intends to make some future use of the disputed domain name in a manner that would not create a likelihood of confusion, without providing any further information regarding this prospective use.

Thus, the Respondent’s claim of legitimacy appears to be based solely on her registration of the disputed domain name prior to the Complainant’s establishment of rights in the BRIDAL BOOTCAMP marks. As a general rule, when a domain name is registered before any trademark rights are established, the registration of the domain name is not in bad faith since the registrant could not have contemplated the complainant’s non-existent right. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845.

It is ultimately the Complainant’s burden to demonstrate under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, as each of the three elements of the Policy must be established by the Complainant, for the reasons discussed below regarding the issue of bad faith under paragraph 4(a)(iii), it is not necessary for the Panel to make a finding here on whether the Complainant has made this showing.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, paragraph 4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

It is undisputed in the record that the Respondent registered the disputed domain name more than a year before the Complainant’s first use in commerce of the BRIDAL BOOTCAMP marks, and more than four (4) years prior to the earliest registration of any of the Complainant’s marks. As noted above, when a domain name is registered before any trademark rights are established, the registration of the domain name normally cannot be considered to be in bad faith, since the registrant could not have contemplated the complainant’s non-existent right. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845. In certain situations, bad faith registration can be found, for example, when at the time of the domain name registration the Respondent was clearly aware of the Complainant, or the Respondent’s aim was to take advantage of the confusion between the domain name and any potential complainant rights. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 <execujet.com> and Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 <kangwonland.com>.

In this instance, the Complainant has failed to adduce circumstances sufficient to permit this Panel to conclude that the Respondent was aware of the Complainant or of the Complainant’s potential rights in the BRIDAL BOOTCAMP marks at the time of the domain name registration. The Respondent’s adoption of a domain name identical to the Complainant’s BRIDAL BOOTCAMP mark, coupled with the Respondent’s apparently passive holding of the disputed domain name for more than seven (7) years and expression of intent to use the domain name only after receiving notice of this dispute, are of concern to this Panel. But the fact remains that the Complainant had not established rights in the BRIDAL BOOTCAMP marks at the time of the registration of the domain name, and, based on the record in this case, the Complainant could not have established even common law rights in the marks until appreciably more than a year after the registration of the disputed domain name.

The Policy provides a remedy only in cases where a complainant proves that the domain name has been registered and is being used in bad faith. The Panel is constrained to act within the limited scope of the Policy, and to reach a decision based on the statements and documents submitted. In the final analysis, and after careful consideration of the totality of the circumstances in the record, the Panel is unable to determine that at the time of the domain name registration the Respondent was clearly aware of the Complainant, or that the Respondent’s aim of registration was to take advantage of the confusion between the domain name and any potential complainant rights. Accordingly, the Panel must conclude that the Complainant has not met her burden under paragraph 4(a)(iii) in this case.

 

8. Decision

For all the foregoing reasons, the Complaint is denied.

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William R. Towns
Sole Panelist

Dated: March 5, 2007

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¹ While paragraph 4(a)(i) embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered, this factor is nonetheless relevant for purposes of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See, e.g., Nгofumomais, Clнnica de Homeopatia Antitabбgica, Lda. v. Re-Surgir - Consultores em Desenvolvimento Individual e Organizacional, Lda., WIPO Case No. D2004-0399.