Life Time Fitness, Inc. v. Great Names for sale at TheNameStore.com! c/o Domain Administrator
Claim Number: FA0802001145885
Complainant is Life Time Fitness, Inc. (“Complainant”), represented by Jodi
A. DeSchane, of Faegre & Benson, LLP of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifetimefitness.info>, registered with eNom.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on
A timely Additional Submission was submitted by the Complainant and received on March 18, 2008 in accordance with the Forum’s Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges the following:
1- Respondent’s <lifetimefitness.info> domain name is identical and confusingly similar to Complainant’s registered trademark.
2- Respondent has no rights or legitimate interest in the <lifetimefitness.info> domain name.
3- Respondent registered the domain name in bad faith, in order to redirect Internet users to a search portal with links to third parties unrelated to Complainant.
1- Respondent has not presented any arguments to refute Complainant’s allegations that Respondent’s domain name is identical or confusingly similar to Complainant’s registered trademark.
2- With regard to Policies ¶¶4(a)(ii) and 4(a)(iii), Respondent claims:
· That “lifetime fitness” is a common generic term;
· That Respondent is using the domain name as an advertising portal for a bona fide offering of goods or services;
· That advertising links found on the <lifetimefitness.info> website are provided by third parties;
Complainant is not well known throughout the
Complainant is not present in the state of
· That Respondent had never heard of Complainant before these proceedings;
· That Respondent is not acting in bad faith as the domain name is composed of generic terms;
· That Complainant’s assertion of 63,703,450 annual health club visitors is unrealistic.
C. Additional Submissions
Complainant timely filed an Additional Submission and submits the following:
· That the registration for the mark LIFETIME FITNESS with the U.S. Trademark and Patent Office establishes its rights in the mark pursuant to Policy ¶ 4(a)(i);
· That the registration of the trademark is prima facie evidence of Complainant’s exclusive rights in the mark, nationwide;
· That contrary to Respondent’s assertions, a trademark owner is not obliged to register every domain name that could potentially infringe on its trademark;
· That directing Internet users to an advertising portal with sponsored links to third party web portals is not a bona fide offering of goods and services;
· That at the time of the registration of the domain name, Respondent should at least have had constructive knowledge of the existence of Complainant’s registered trademark. Further, if as asserted by Respondent, it had no such knowledge of the mark, a trademark search would have revealed Complainant’s rights in the mark;
· That Respondent provides no evidence that the domain name is not confusingly similar to Complainant’s mark. That Respondent provides no evidence to the fact that it has rights or legitimate interest in the mark. That Respondent provides no evidence to show that the domain name has not been registered in bad faith.
Complainant, Life Time Fitness Inc., is a
corporation which has been operating fitness and recreation centers since 1992
and which markets services and goods in the health and fitness fields.
According to Complainant’s website there are today 71 Life Time Fitness Centers
in 16 American states, the company has over 14,000 employees and revenues of
511.9 million dollars. The company’s headquarters are located in
Complainant’s LIFE TIME FITNESS mark has been registered with the United States Patent and Trademark Office since March 1998 for use in connection with physical fitness instruction and health club services. Complainant has continuously used its trademark in relation to its business and has operated a website at <lifetimefitness.com> since 1996, prior to Respondent’s registration of the disputed domain name.
Respondent, Web Inceptions Inc., is a
Respondent registered the disputed domain name in November 2005. The disputed domain name <lifetimefitness.info> offers information on fitness and health issues and posts commercial links to numerous websites including those of health clubs and fitness centers. Furthermore, a click-through link on the website states that the domain name may be for sale.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
For the purposes of this dispute, Complainant must establish under Policy ¶ 4(a)(i) that it has rights in the LIFE TIME FITNESS mark.
Complainant has provided evidence that its mark is registered with the United States Patent and Trademark Office (Registration No. 2,140,172 issued March 3, 1998). Complainant’s trademark registration predates Respondent’s domain name registration and sufficiently establishes its rights in the mark. Under the Policy, a registration with the USPTO is sufficient to establish a complainant’s rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds that this trademark registration adequately demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i)”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (Where federal registrations of a mark were sufficient to establish rights in the trademark).
Considering that Respondent has not contested that the domain name is identical to Complainant’s mark, the Panel finds that the LIFE TIME FITNESS trademark registration is sufficient to prove Complainant’s rights in the mark, despite Respondent’s contention that “lifetime fitness” is a common generic term.
Complainant asserts that the <lifetimefitness.info> domain name entirely appropriates its LIFE TIME FITNESS registered trademark. The Panel finds that the disputed domain name includes Complainant’s LIFE TIME FITNESS registered mark in its entirety. The mere addition of the “.info” generic top-level domain does not distinguish the domain name from Complainant’s mark. See PepsiCo, Inc v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding that the domain name was identical to the complainant’s trademark because it incorporated the entirety of the complainant's mark and merely added the top-level domain “.info”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“It is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
Since Respondent failed to provide an argument to refute Complainant’s assertion with regards to Policy ¶ 4(a)(i), the Panel finds that Complainant has established that the disputed domain name and its registered trademark are similar in sound, appearance, and connotation.
Accordingly, the Panel concludes that Policy ¶ 4(a)(i) has been satisfied
In regards to Policy ¶ 4(a)(ii), Complainant has to provide prima facie evidence that Respondent has no rights or legitimate interests in the <lifetimefitness.info> domain name. If Complainant does so, the burden shifts to Respondent who must come forward with evidence rebutting this assertion.
According to Policy ¶¶ 4(c)(i), (ii) and (iii), Complainant must provide prima facie evidence that:
(i) The Respondent is not using nor has prepared to use the domain name in connection with a bona fide offering of goods or services
(ii) The Respondent has not been commonly known by the domain name
(iii) The Respondent is not making a legitimate non-commercial or fair use of the domain name and intends to misleadingly divert consumers or tarnish the trademark or service mark at issue.
Once Complainant has asserted that Respondent has no rights or legitimate interest in the domain name, it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
First, Complainant has established that Respondent is not commonly known by the disputed domain name and has not been licensed by Complainant to use its mark, as the domain name registration gives no indication to that effect. In fact, the WHOIS information provided by Complainant shows that the domain name was registered under the name “Great Names for sale at TheNameStore.com!” See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (“there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name”).
Respondent has provided no evidence suggesting it has rights in the mark, whereas Complainant has provided evidence that it operates 69 health and fitness centers in 15 states (and now, according to the updated website, 71 centers in 16 States including Arizona, Colorado, Florida, Georgia, Kansas, Illinois, Indiana, Maryland, Michigan, Minnesota, Nebraska, North Carolina, Ohio, Texas, Utah and Virginia) under the mark LIFE TIME FITNESS. According to 2005 statistics posted on Complainant’s website it has approximately 175,000 visitors daily (or 63 million annually). With regards to Respondent’s assertion that it did not know of Complainant, a simple Internet search would have clearly notified it of the existence of Complainant’s business and previously existing domain name. Considering the validity of its federally registered trademark, Complainant need not be present in every American state to establish the reputation of its mark. In addition to proving the validity of its registered trademark, Complainant has established its rights and legitimate interest in the mark through extensive use and goodwill. On the other hand, Respondent is a company which is in the business of registering and selling domain names. It shows no legitimate interest in the LIFE TIME FITNESS mark and has not been licensed to use it by the registered owner of the mark.
Accordingly, Panel finds that Respondent lacks rights and legitimate interests in the <lifetimefitness.info> domain name pursuant to Policy ¶ 4(c)(ii).
With regards to Policy ¶¶ 4(c)(i) and 4(c)(iii), Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is it making any legitimate noncommercial or fair use of the domain name.
Complainant first submits that the disputed domain name was registered in order to misdirect consumers to Respondent’s search portal site which offers links to health and fitness related websites in direct competition with the services and goods offered by Complainant. Respondent itself admits to using the website as an advertising portal for Internet users.
Respondent claims that the registration of the domain name is not aimed at taking advantage of Complainant’s reputation or trademark. Respondent simply argues that it has a legitimate interest in the domain name as the domain name is comprised of generic and descriptive terms. Respondent therefore contends to be entitled to exploit the ability of the word in order to use the domain name as a web portal destined to advertise text and links provided by third parties. Respondent brings no evidence to prove its assertion that it is conducting a legitimate business of registering generic terms to which no one can claim exclusive rights. Respondent’s allegation that the LIFE TIME FITNESS mark is generic and descriptive, is not sufficient to establish legitimate rights in a federally registered mark which is clearly being used at a widespread level by its registered owner.
Complainant further asserts that Respondent receives commercial gain through click-through fees. Respondent has not rebutted this contention, it can therefore be inferred that Respondent does receive click-through fees every time someone clicks on a link to third party services.
Thus, it has been well established in various
UDRP decisions that redirecting Internet users to sites featuring links to
third-party websites does not constitute a bona
fide offering of goods under Policy ¶ 4(c)(i), nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as the
registrant of such a domain name receives financial compensation when users click
on the links by way of click-through fees. See Wells
Fargo & co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum
Finally, not only does Respondent offer to sell the disputed domain name to Internet users, it offered to sell it to Complainant in an email dated July 10, 2007. Previous decisions have held that the absence of rights or legitimate interests can be inferred from a respondent’s willingness to sell a domain name to a complainant. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum April 25, 2007) (“The Panel finds that Respondent’s willingness to sell the disputed domain name registration suggests that it has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii)”). Respondent’s clear intention to sell the domain name does not suggest any such rights or legitimate interests.
Accordingly, the Panel finds that Respondent has failed to establish any rights or legitimate interests in the <lifetimefitness.info> domain name under Policy ¶ 4(a)(ii).
In order to establish the registration and use of a domain name in bad faith, Complainant has to establish any of the circumstances, in particular but without limitation, listed at paragraph 4(b) of the Policy.
Complainant alleges that Respondent used the domain name to divert Internet users to websites and advertisements unrelated to Complainant, some of which compete directly with Complainant’s business. Respondent does not deny that it is using the disputed domain name to operate a search portal website which offers links to health club and fitness resources that compete with Complainant. Thus the Panel finds that Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark. In doing so, Respondent is using the domain name in a way that may disrupt Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (“The Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii), because Respondent has used the <têtu.com> domain name to operate a commercial search engine with links to Complainant’s competitors. The Respondent registered and is using the <têtu.com> domain names primarily to disrupt Complainant’s business in violation of Policy”).
Attracting Internet users to a website which
contains commercial links to the websites of Complainant’s competitors has been
found to be a bad faith registration under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Mgmt. Servs., FA 877982 (Nat.
As Respondent does not rebut Complainant’s assertion
that it is using click-through fees, the Panel may infer that Respondent is
seeking commercial gain by attracting Internet users to its website through
confusion with Complainant’s mark. Such creation of confusion between marks in
order to obtain commercial gain has been found to be bad faith registration
pursuant to Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
With regards to Respondent’s argument that it had no knowledge of Complainant’s registered mark, the Panel finds that by virtue of the federal registration of the LIFE TIME FITNESS trademark, Respondent was on constructive notice of Complainant’s rights in the mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000). It was Respondent’s responsibility to verify that it was entitled to register such a domain name.
Finally, Respondent is in the business of
registering and selling domain names and is openly offering the disputed domain
name for sale as it clearly appears through a link posted on the disputed domain
name, in the WHOIS information relating to Respondent, and through the email
that was sent to Complainant on
Accordingly, the Panel finds that Respondent registered and used the <lifetimefitness.info> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifetimefitness.info> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: March 31, 2008
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