Fitness Anywhere LLC v. Ivan Ivanov
Claim Number: FA2103001937269
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Alain Villeneuve, Illinois, USA. Respondent is Ivan Ivanov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trxrussia.com>, registered with Eranet International Limited.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Ms. Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2021; the Forum received payment on March 19, 2021.
On March 26, 2021, Eranet International Limited confirmed by e-mail to the Forum that the <trxrussia.com> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International 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 March 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@trxrussia.com. Also on March 29, 2021, 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.
A timely Response was received and determined to be complete on April 18, 2021.
On April 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ms. Nathalie Dreyfus 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is Fitness Anywhere LLC, and holds the following trademarks registrations with various trademark authorities throughout the world on the TRX and SUSPENSION TRAINING signs :
- Russian Trademark for TRX – Registration no. 1067700;
- International Trademark for TRX – Registration no. 1061967;
- International Trademark for SUSPENSION TRAINING – Registration no. 930402;
- International Trademark for TRX – Registration no. 939207;
- International Trademark for TRX – Registration no. 1067700;
- International Trademark for TRX – Registration no. 1256717;
- International Trademark for TRX – Registration no. 1204587;
- Complainant first demonstrates that the disputed domain name is confusingly similar to Complainant’s TRX mark
Complainant has provided trademark registrations for the TRX and SUSPENSION TRAINING signs, and substantiated the use of the TRX trademark in the US.
Complainant notes that Respondent purchased the domain name <trxrussia.com>. Complainant specifies that the generic top-level domain “.com” is not relevant when assessing the risk of confusion between the disputed domain name and Complainant’s mark.
Complainant further argues that the disputed domain name is highly similar to Complainant’s TRX mark as it reproduces Complainant’s TRX mark in its entirety.
Finally, Complainant considers that the addition of the term RUSSIA in the disputed domain name does not prevent a risk of confusion given that the term is geographically descriptive when used in connection to Complainant’s TRX mark.
Complainant underlines that the risk confusion is aggravated by the fact that the disputed domain name points to a page selling unauthorized and counterfeit products of Complainant.
- Complainant then argues that Respondent has no rights or legitimate interests in using the disputed domain name
Complainant first asserts that Respondent is not commonly known under the disputed domain name, and supports its claim by the absence of any information regarding Respondent in the WHOIS information. Complainant also specifies that Respondent is not affiliated or related to Complainant and was not granted any license or authorization to use Complainant’s TRX mark. Complainant adds that it also never sponsored or endorsed Respondent in any manner.
Besides that, Complainant explains that it has contacted Respondent concerning these unauthorized activities under the disputed domain name and that its resellers in Russia has initiated proceedings there against the disputed domain name.
Finally, and as mentioned above, Complainant also considers that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or making a fair use or non-commercial use of the disputed domain name. Indeed, Complainant that Respondent is using the disputed domain name to sell counterfeits, using Complainant’s photographs without authorization, and trying to divert internet traffic.
- Complainant finally states that the disputed domain name has been registered and is being used in bad faith
Complainant first underlines that Respondent could access the publicly available trademark rights of Complainant and that Respondent knew about Complainant’s products given that the disputed domain name points to a website reproducing Complainant’s TRX and SUSPENSION TRAINING marks and selling counterfeits of Complainant’s products. As a result, Complainant considers that the disputed domain name was registered in bad faith.
Then, Complainant demonstrates that Respondent tried to create confusion between the disputed domain name and Complainant’s marks to divert internet users for its own commercial gain. Complainant again relies on the fact that the disputed domain name redirects to a website that uses Complainant’s TRX and SUSPENSION TRAINING marks and sells counterfeits of Complainant’s products. According to Complainant this established bad faith use of the disputed domain name. Complainant also adds that by doing this, Respondent is disrupting the business of Complainant and the business of its authorized resellers and distributors.
B. Respondent
First, Respondent considers that the disputed domain name does not violate Complainant’s rights because it is not identical to those marks and has a broad meaning.
Respondent further asserts that Complainant has no legal or registered rights in the sign TRXRUSSIA and has nothing to do with Russia.
Then, Respondent considers that the rules to choose a domain name violate competition law.
Besides, Respondent states that trx russia store operates in Russia where there have been no claims against it either from the registrar, from the court, or from the state inspection bodies.
Respondent also denies to be selling Complainant’s products, but a variety of simulators for functional training from various companies, of which he shows three examples.
Complainant holds trademark rights in the TRX sign. Respondent’s domain name is confusingly similar to the latter mark. Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name 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.
Complainant has provided valid trademark registrations of its TRX trademark with various jurisdictions throughout the world, including with the USPTO. According to long-standing case law, a valid registration with the USPTO is sufficient to demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). For recent case law, See Micro Electronics, Inc. v. Domain Admin / Whois Privacy Corp., FA2103001937138 (Forum April 21, 2021) (“Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i).”). The Panel thus considers that Complainant owns valid trademark rights in the TRX trademark.
Complainant alleges that the disputed domain name is confusingly similar to its TRX mark as it incorporates its TRX trademark in its entirety with the mere addition of the “.com” generic top-level domain, which is irrelevant when assessing the similarity between its mark and the disputed domain name. Traditionally, the addition of a top level domain is generally insufficient to neutralize a risk of confusion between a Complainant’s mark and a domain name within the meaning of Policy ¶ 4(a)(i). For recent case law, See 7-Eleven, Inc. v. Ai Mun Chan, FA2010001915573 (Forum November 4, 2020) (“The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s 7-ELEVEN mark. Complainant argues Respondent’s <7-eleven.app> domain name is identical or confusingly similar to Complainant’s 7-ELEVEN mark as it contains the 7-ELEVEN mark in its entirety and merely adds the “.app” TLD. The addition of a TLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).”).
Finally, Complainant considers that the addition of the term RUSSIA does not prevent a risk of confusion given that the term is geographically descriptive when used in connection to Complainant’s TRX mark. According to a well-established case law, the addition of generic or geographic terms to the disputed domain name is not sufficient to neutralize the risk of confusion under Policy ¶ 4(a)(i). For recent case law, See Brooks Sports, Inc. v. Ralph Ebersbach, FA2103001938242 (Forum April 26, 2021) (“The disputed domain name incorporates Complainant’s mark in its entirety, merely adding the geographic term “Romania” along with the “.ro” ccTLD. Such changes do not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i).”).
As a result, the Panel finds the disputed domain name to be confusingly similar to Complainant’s mark. Complainant has satisfied Policy ¶ 4(a)(i) and Respondent has failed to challenge these contentions.
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), the burden then shifts to Respondent to show it has rights or legitimate interests. See UBS Group AG v. Aleksandar Lasica / UBS Ultimate Business Services Ltd, FA2103001939618 (Forum April 28, 2021) (”Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).”).
Complainant asserts that Respondent is not commonly known under the disputed domain name, is not affiliated or related to Complainant, and was not granted any license or authorization to use Complainant’s TRX mark. Complainant also specifies that it never sponsored or endorsed Respondent. Previous panel decisions have established that Complainant generally makes a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, under Policy ¶ 4(a)(ii), when it shows that Respondent is not commonly known under the disputed domain name and is not authorized in any way to use the disputed domain name. In this regard, the WHOIS information indeed can serve as evidence that Respondent is not commonly known by the disputed domain name. 4IMPRINT, INC. v. Christopher Frederick, FA2103001939885 (Forum April 29, 2021) (Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. (…) Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).). In this case, the Panel notes that the WHOIS listing does not contain any information regarding Complainant’s identity. Therefore, the Panel agrees with Complainant’s assertions and finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that did not challenge these assertions.
Complainant also considers that Respondent is not using the disputed domain name for any a bona fide offering of goods and services, nor making a fair use or non-commercial use of the disputed domain name. Indeed, Complainant argues that Respondent is using the disputed domain name to sell counterfeits and divert internet traffic. Such activities are generally considered by previous Panels as evidence that Respondent is not using the disputed domain name for any a bona fide offering of goods and services, nor making a fair use or non-commercial use of the disputed domain name. For recent case law, See JUUL Labs, Inc. v. Harry L. Werner, FA2001001880938 (Forum March 10, 2020) (“Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant’s business by diverting internet users to a scam website where it sells unauthorized products. Use of a domain name to disrupt complainant’s business in order to sell unauthorized products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii)”.). The Panel finds that Respondent does not clarify on the website that it is not affiliated with Complainant. The Panel notices that Respondent uses Complainant’s photographs to make the website look official. Additionally, Respondent sells suspected counterfeits. The fact that Respondent is also selling products from other companies does not neutralize the risk of confusion. Respondent thus fails to demonstrate that it is using the disputed domain name in connection with a bona fide offering of goods and services. The Panel thus agrees with Complainant and concludes that Respondent is not using the disputed domain name for any a bona fide offering of goods and services, nor making a fair use or non-commercial use of the disputed domain name.
The Panel finds that Complainant has satisfied per Policy ¶ 4(a)(ii) and that Respondent failed to challenge these assertions.
Complainant first underlines that Respondent is aware of its rights as it could access its publicly available trademark rights and is selling counterfeits of Complainant’s products. Complainant thus considers that the disputed domain name was registered and is being used in bad faith. The fact that a Respondent is using the domain name to sell counterfeit has been considered by previous Panels as evidence that the Respondent has registered and is using the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). For recent case law, See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Tristan Parent, FA2103001937860 (Forum April 21, 2021) (“Complainant argues that Respondent registered and uses the <skecalzado.online> domain name in bad faith because Respondent uses the domain name to offer counterfeit products for sale. The Panel agrees and finds bad faith pursuant to Policy ¶ 4(b)(iv).”).; see also The Step2 Company, LLC v. Will McGarrahan, FA2103001937596 (Forum April 20, 2020) (“Complainant argues that Respondent registered and uses the <step2shopping.com> domain name in bad faith to divert Internet users to its own website where it purports to offer Complainant’s goods for sale. Using a disputed domain name to offer counterfeit or unauthorized products for sale displays bad faith disruption and attraction for commercial gain pursuant to Policy ¶¶ 4(b)(iii) and (iv) (…) Accordingly, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).”).
The Panel thus finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trxrussia.com> domain name be TRANSFERRED from Respondent to Complainant.
Ms. Nathalie Dreyfus, Panelist
Dated: May 7, 2021
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