Fitness International, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2205001994741
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lafitnesss.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2022; the Forum received payment on May 3, 2022.
On May 4, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lafitnesss.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@lafitnesss.com. Also on May 9, 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 June 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 operates as a health club. Complainant has rights in the LA FITNESS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,464, registered November 23, 1993). Respondent’s <lafitnesss.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the letter “s” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lafitnesss.com> domain name. Respondent is not commonly known by the disputed domain name, nor has the Complainant authorized or licensed Respondent to use its LA FITNESS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the disputed domain name to mislead and divert users for commercial gain.
Respondent registered and uses the <lafitnesss.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain and creates confusion as to the source and affiliation of its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates as a health club. Complainant has rights in the LA FITNESS mark through its registration with the USPTO (e.g., Reg. No. 1,806,464, registered November 23, 1993). Respondent’s <lafitnesss.com> domain name is confusingly similar to Complainant’s mark as it adds the letter “s” along with the “.com” generic top-level domain (“gTLD”).
Respondent registered the <lafitnesss.com> domain name on January 7, 2019.
Respondent lacks rights and legitimate interests in the <lafitnesss.com> domain name. Respondent uses the disputed domain name to mislead and divert users for commercial gain.
Respondent registered and uses the <lafitnesss.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain and creates confusion as to the source and affiliation of its website.
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 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 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 has rights in the LA FITNESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <lafitnesss.com> domain name is confusingly similar to the LA FITNESS mark as it adds the letter “s” along with the “.com” generic top-level domain (“gTLD”).
Respondent is not commonly known by the <lafitnesss.com> domain name, nor has Complainant authorized Respondent to use its LA FITNESS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information identifies Respondent as “Carolina Rodrigues”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its LA FITNESS mark. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent does not use the <lafitnesss.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent’s domain name utilizes Complainant’s registered marks and the landing page hosted at the domain provides links to “LaFitness Gym Locations”, “24 Hour Fitness Gym Membership”, and “Gym Fitness” and these links overlap with Complainant’s services and competitors. Respondent’s use of the domain appears to be for the express purpose of misleading consumers into the believing the domain is sponsored by Complainant or one of its competitors. Respondent’s use of the domain appears to be for Respondent’s own financial gain. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert internet users for commercial gain does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent registered and uses the <lafitnesss.com> domain name in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to disrupt complainant’s business is evidence of bad faith registration and use. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”).
Respondent registered and uses the <lafitnesss.com> domain name in bad faith under Policy ¶ 4(b)(iv) by creating confusion as to affiliation with Complainant for commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lafitnesss.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 21, 2022
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