Anytime Fitness, Inc. v. Zivan Rankovic
Claim Number: FA0901001244405
Complainant is Anytime Fitness, Inc. (“Complainant”), represented by Molly
T. Eichten, of Larkin Hoffman Daly & Lindgren Ltd.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <anytime-fitness.org>, registered with 1 & 1 Internet AG.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2009.
On January 26, 2009, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <anytime-fitness.org> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 24, 2009 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 postmaster@anytime-fitness.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <anytime-fitness.org> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <anytime-fitness.org> domain name.
3. Respondent registered and used the <anytime-fitness.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates health and fitness clubs, and promotes its services under the ANYTIME FITNESS mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on February 10, 2004 (Reg. No. 2,814,114). Complainant has used the ANYTIME FITNESS mark continuously in commerce since at least as early as 2002.
Respondent registered the <anytime-fitness.org> domain name on March 30, 2008. The disputed domain name resolves to a website that features third-party advertisements for products and services in direct competition with Complainant’s business.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has established rights in
the ANYTIME FITNESS mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO
has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that
Respondent’s <anytime-fitness.org>
domain name is confusingly similar to its ANYTIME
FITNESS mark.
The disputed domain name differs from Complainant’s mark in two ways:
(1) a hyphen has replaced the space between the terms in the mark; and (2) the
generic top-level domain (“gTLD”) “.org” has been added to the end of the mark. The
Panel finds that under Policy ¶ 4(a)(i), separating
the terms in a mark with a hyphen rather than a space doesn’t render the domain
name different from the mark. See Gen. Elec. Co. v. Bakhit, D2000-0386
(WIPO June 22, 2000) (finding that placing a hyphen in domain name between
“General” and “Electric” is confusingly similar to the complainant’s mark); see also Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000)
(finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the
Respondent's domain names in issue is insufficient to render it different to
the trade mark COLUMBIA SPORTSWEAR COMPANY”). Furthermore, the
Panel finds that the addition of a gTLD does nothing to distinguish a domain
name from a mark because all domain names must include a top-level domain. See Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) ( “[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”). Therefore,
the Panel finds that the disputed domain name is not sufficiently distinguished
from, and is confusingly similar to, Complainant’s ANYTIME FITNESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 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, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant contends that Respondent is not commonly known
by the <anytime-fitness.org>
domain name, nor has it ever been the owner or licensee of the ANYTIME FITNESS
mark. Respondent has been identified as “Zivan Rankovic,” and no evidence, in the WHOIS
record for the disputed domain name or elsewhere, indicates that Respondent has
ever been commonly known by the disputed domain name. Because Respondent has
failed to show any evidence contrary to Complainant’s contentions and is not
known by any variant of the ANYTIME FITNESS mark, the Panel finds that Respondent
is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Am. W.
Airlines, Inc. v. Paik, FA 206396 (Nat.
Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see
also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
Respondent is using the <anytime-fitness.org> domain name to host a website that advertises products that compete with Complainant’s business. The Panel finds that this use by Respondent of the <anytime-fitness.org> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <anytime-fitness.org> domain name to
divert Internet customers from Complainant’s website to Respondent’s website,
through the confusion caused by the similarity of the ANYTIME FITNESS mark and
the <anytime-fitness.org>
domain name. Complainant also contends
that Respondent intended to disrupt Complainant’s business by this
diversion. The Panel finds that
Respondent did disrupt Complainant’s business, and therefore did register and
use the <anytime-fitness.org>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (“This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see
also
Complainant also contends that Respondent gains commercially
from this diversion, as Respondent is advertising products and services that
compete with Complainant’s business at the website that resolves from the <anytime-fitness.org> domain
name. The Panel finds that Respondent
intentionally uses the disputed domain name for commercial gain through a
likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), this use is also evidence of Respondent’s
registration and use in bad faith. See
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <anytime-fitness.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 12, 2009
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