American Council of Exercise v. Kacor, Inc.
Claim Number: FA0902001248511
Complainant is American
Council on Exercise (“Complainant”), represented by Mark I. Reichenthal, of Branfman Law Group, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com> domain names are confusingly similar to Complainant’s ACE mark.
2. Respondent does not have any rights or legitimate interests in the <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com> domain names.
3. Respondent registered and used the <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Council of Exercise, holds several
registrations of the ACE mark with the United States Patent and Trademark
Office (“USPTO”) (i.e. Reg. No. 1,898,868 issued
Respondent registered the <acefit.com>, <acefitness.net>, <eacefitness.com>,
and <acefitnessinc.com> domain names on
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 ACE mark under Policy ¶ 4(a)(i) through registration of the mark with the
USPTO. See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum
The <acefit.com> and <acefitness.net> domain names include
Complainant’s ACE mark in its entirety, adding a descriptive word “fit” or
“fitness,” which has an obvious relationship to Complainant’s organization, and
a generic top-level domain (“gTLD”). The
addition of a gTLD is irrelevant to an analysis under Policy ¶ 4(a)(i). The Panel finds that the addition of a
descriptive word that has a obvious relationship to Complainant adds to, rather
than detracts from, the confusingly similarity under Policy ¶ 4(a)(i) that results from using Complainant entire mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb.
Forum
The <eacefitness.com> and <acefitnessinc.com> domain names include the same
factors analyzed in the previous paragraph, but also add either the generic
term “inc,” short for “incorporation” or “e,” a common online abbreviation for
“electronic.” The additions of generic
terms or letters do not sufficiently distinguish the disputed domain names from
Complainant’s ACE mark, and the Panel therefore finds that they are
confusingly similar pursuant to Policy ¶ 4(a)(i). See
Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
names. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain names pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com>
domain names pursuant to Policy ¶ 4(a)(ii).
Since no response was submitted
in this case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain names.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the ACE
mark, and the WHOIS information identifies Respondent as “Kacor, Inc.” Thus, the Panel finds that Respondent has not
established rights or legitimate interests in the disputed domain names under
Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum
Respondent is using the disputed domain names to redirect
Internet users to its commercial website resolving from its <gymcor.com>
domain name. The Panel finds that using
domain names that are confusingly similar to Complainant’s mark to redirect
Internet users to Respondent’s commercial website 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 Summit
Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the disputed domain names to resolve to
its own commercial website resolving from the <gymcor.com> domain
name. The Panel finds that Respondent is
using the disputed domain names, which are confusingly similar to Complainant’s
mark, to disrupt Complainant’s competing exercise business. The Panel therefore finds that Respondent
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii). See DatingDirect.com
Ltd. v. Aston, FA 593977 (Nat. Arb. Forum
By redirecting Internet users to its own website, Respondent
is attempting to commercially gain from using domain names that are confusingly
similar to the mark of another. Internet
users attempting to research Complainant’s organization by entering any of the
disputed domain names may become confused as to Complainant’s affiliation or
endorsement of Respondent’s resolving website.
Respondent is attempting to profit from this confusion and therefore
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied 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 <acefit.com>, <acefitness.net>, <eacefitness.com>, and <acefitnessinc.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 7, 2007
National
Arbitration Forum