Coulter Ventures, LLC d/b/a Rogue Fitness v. Judy moore / Roguefitness
Claim Number: FA2203001986907
Complainant is Coulter Ventures, LLC d/b/a Rogue Fitness (“Complainant”), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Judy moore / Roguefitness (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roguefitnesshr.com>, which is registered with Porkbun LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022; the Forum received payment on March 4, 2022.
On March 4, 2022, Porkbun LLC confirmed by e-mail to the Forum that the <roguefitnesshr.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC 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 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2022, 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@roguefitnesshr.com. Also on March 14, 2022, 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 April 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading producer and marketer of strength and fitness products and related services.
Complainant holds a registration for the ROGUE FITNESS trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,055,351, registered November 15, 2011.
Respondent registered the domain name <roguefitnesshr.com> on or about January 24, 2021.
The domain name is confusingly similar to Complainant’s ROGUE FITNESS mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the ROGUE FITNESS mark in any way.
Respondent fails to make a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
Instead, Respondent resolves the domain name to Complainant’s official webpage.
Respondent also employs the domain name to pass itself off as Complainant through e-mail messaging, apparently in furtherance of a scheme to defraud Complainant’s customers or would-be employees via a practice commonly called “phishing.”
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the ROGUE FITNESS mark when it registered the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the ROGUE FITNESS trademark and service mark sufficient to establish its standing, under the terms of Policy ¶ 4(a)(i), to pursue its claim against Respondent by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately demonstrated its right to proceed with a claim under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <roguefitnesshr.com> domain name is confusingly similar to Complainant’s ROGUE FITNESS trademark and service mark. The domain name incorporates the mark in its entirety, with only elimination of the space between its terms and the addition of the pair of letters “hr,” common shorthand for “human resources,” a facet of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s deletion of the space between the terms of Complainant’s mark in creating the domain name, that manipulation of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
… [S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <roguefitnesshr.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <roguefitnesshr.com> domain name, and that Complainant has not authorized Respondent to use the ROGUE FITNESS mark in any way. Moreover, although the pertinent WHOIS information identifies the registrant of the domain name as “Judy moore / Roguefitness,” having in mind that the domain name was registered only as recently as January 24, 2021, there is nothing in the record before us suggesting that Respondent has become commonly known by the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark).
We next observe that Complainant asserts, without objection from Respondent that Respondent resolves the challenged domain name to Complainant’s official webpage. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum September 8, 2010):
The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii)….
Moreover, Complainant alleges, again without objection from Respondent, that Respondent also employs the <roguefitnesshr.com> domain name to pass itself off as Complainant through e-mail messaging, apparently in furtherance of a scheme to defraud Complainant’s customers or would-be employees via a practice commonly called “phishing.” It should go without saying that using a domain name to perpetrate a fraud upon unsuspecting Internet users cannot qualify as either a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii). See, for example, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018):
Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ (a)(ii).
We are persuaded by the evidence that, as is alleged in detail in the Complaint, Respondent employs the <roguefitnesshr.com> domain name to pass itself off as Complainant through e-mail messaging, apparently in furtherance of a scheme to defraud Complainant’s customers or would-be employees via a practice commonly called “phishing.” This behavior, which unmistakably disrupts Complainant’s business, casts Respondent as an illicit business competitor of Complainant while establishing that Respondent both registered and now uses the domain name in bad faith within the understanding of Policy ¶ 4(b)(iii). See, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum April 4, 2016) (finding that a respondent’s use of disputed domain names, which were confusingly similar to the mark of a UDRP complainant, to send fraudulent e-mail messages supported a finding of disruption of that complainant’s business, and, therefore, bad faith registration and use of the domain names under Policy ¶ 4(b)(iii)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <roguefitnesshr.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2022
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