Fitness Anywhere LLC v. Иван Иванов
Claim Number: FA2012001924543
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Alain Villeneuve, Illinois, USA. Respondent is Иван Иванов (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trxsport.com>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2020; the Forum received payment on December 10, 2020.
On December 16, 2020, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to the Forum that the <trxsport.com> domain name is registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the name. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trxsport.com. Also on December 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant markets and sells fitness and workout equipment and provides related training instruction. Complainant claims rights in the trademark TRX through its use since 2009 and its registrations with multiple trademark agencies throughout the world, e.g. the Russian Federal Service for Intellectual Property (“ROSPATENT”)[i], the United States Patent and Trademark Office, and the World Intellectual Property Office (“WIPO”), the earliest of which dates back to 2007. Respondent’s <trxsport.com> domain name, registered on June 23, 2017, is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the descriptive word “sport”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <trxsport.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TRX mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make any legitimate noncommercial or fair use thereof. Instead, it passes itself off as Complainant and sells counterfeit products on the disputed domain name’s resolving website.
Respondent registered and uses the <trxsport.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by selling counterfeit products on the disputed domain name’s resolving website. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TRX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The disputed domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel 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 Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations and evidence pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable and supported allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the TRX mark through its registration with multiple trademark agencies throughout the world. Under Policy ¶ 4(a)(i), registration with national or regional trademark agencies is generally sufficient in demonstrating rights in a mark. See Ontel Products Corporation v. chen jinjun, FA 1806512 (Forum Oct. 16, 2018) (Complainant had rights in the ARCTIC AIR mark given its registration of the mark with the World Intellectual Property Organization (“WIPO”)); see also BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides copies of its trademark certificates as evidence of registration and so the Panel finds that Complainant has rights in the TRX mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <trxsport.com> domain name is confusingly similar to Complainant’s TRX mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive word that describes a Complainant’s business, along with the “.com” gTLD is generally insufficient to differentiate a disputed domain name from the mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms ‘investor relations,’ and the ‘.com’ gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”) The <trxsport.com> domain name incorporates Complainant’s TRX mark and adds the descriptive word “sport”, which is related to Complainant’s business, as well as the “.com” gTLD to the end of the mark. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent is not commonly known by the <trxsport.com> domain name and it further asserts that Complainant has not authorized or licensed Respondent to use its TRX mark in the disputed domain name. Under Policy ¶ 4(c)(ii), resort to the relevant WHOIS information may be made when considering whether a respondent is or is not commonly known by a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS record for the <trxsport.com> domain name identifies Respondent as “Иван Иванов” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its TRX mark in the disputed domain name. Further, although Respondent’s website displays the name TRXSPORT and claims to sell exercise and fitness products, the fact that at least some of these products are counterfeit removes this website as reliable evidence of any rights Respondent may have to the disputed domain name. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another” should not be considered. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent is not using the <trxsport.com> domain name for any bona fide offering of goods or services, nor is it making any legitimate noncommercial or fair use thereof. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass oneself off as a complainant and sell counterfeit products is generally not considered a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of a domain name. See Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights or legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant…”) Complainant provides screenshots of the disputed domain name’s resolving website, which appears to show Complainant’s mark and an online marketplace with products similar to Complainant’s for sale. Some of these products bear Complainant’s TRX or another of its trademarks “SUSPENSION TRAINING” and Complainant claims that these products are counterfeits as confirmed by sample purchases and examinations that it has made. Respondent has not filed a Response or made any other submission in this case and so Complainant’s prima facie case goes unrebutted. As such, the Panel finds, by a preponderance of the available evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make any legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered the <trxsport.com> domain name with actual knowledge of Complainant’s rights in the TRX mark. Under Policy ¶ 4(a)(iii), actual knowledge of a complainant’s mark may be sufficient, and may be demonstrated by Respondent incorporating such mark into the disputed domain name as well as into the content of the resolving website. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). As noted above, the disputed domain name incorporates Complainant’s TRX mark in its entirety. Further, Complainant submits screenshots of the disputed domain name’s resolving website which shows Respondent’s use of the disputed domain name as an online marketplace for exercise and fitness products. To demonstrate the reputation of its own mark, Complainant also submits copies of articles from publications such as a Forbes, Rolling Stone, and ABC News to support its claim that the TRX mark is well-known. The Panel notes that only one of these articles pre-dates the registration of the disputed domain name and so the other articles will not be considered. Based upon the totality of the submitted evidence, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark and that this forms a solid foundation upon which to build a claim of bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent uses the <trxsport.com> domain name for bad faith disruption of Complainant’s business and for commercial gain based upon a likelihood of confusion with its TRX mark. Under Policy ¶¶ 4(b)(iii) and (iv), using a confusingly similar domain name to sell counterfeit versions of a Complainant’s products is generally considered bad faith disruption of a competitor’s business for the respondent’s commercial gain. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent seeks commercial gain from creating confusion as to the complainant’s connection with the website by selling counterfeit products thus demonstrating bad faith per Policy ¶ 4(b)(iv)). The Panel has reviewed the submitted screenshots of the disputed domain name’s resolving website and notes Complainant’s claim to have purchased and examined items from Respondent that it concludes are counterfeit versions of its own products. In view of this evidence, and with no input in this case from Respondent to explain its actions, the Panel finds that Respondent uses the disputed domain name for bad faith disruption of Complainant’s business and for commercial gain based upon confusion with Complainant’s mark under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trxsport.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 19, 2021
[i] The ROSPATENT registration was obtained in 2012 and Complainant employs an authorized distributor to sell legitimate, authentic TRX-branded products in Russia.
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