national arbitration forum

 

DECISION

 

BOSU Fitness, LLC v. Kolombo Networks

Claim Number: FA0906001266587

 

PARTIES

 

Complainant is BOSU Fitness, LLC (“Complainant”), represented by Omid A. Mantashi, California, USA.  Respondent is Kolombo Networks (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <bosubootcamp.com> and <bosubody.com>, registered with Tucows Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.

 

On June 5, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <bosubootcamp.com> and <bosubody.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 June 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 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@bosubootcamp.com and postmaster@bosubody.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bosubootcamp.com> and <bosubody.com> domain names are confusingly similar to Complainant’s BOSU mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bosubootcamp.com> and <bosubody.com> domain names.

 

3.      Respondent registered and used the <bosubootcamp.com> and <bosubody.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, BOSU Fitness, LLC, has provided physical fitness instructional services and sold exercise devices and fitness regimens under the BOSU mark since 2000.  Complainant has also garnered industry-wide recognition and media attention since that time.  Complainant holds several registrations of its BOSU mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,518,696 issued December 11, 2001).

 

Respondent registered the <bosubootcamp.com> and <bosubody.com> domain names on October 6, 2006.  The <bosubootcamp.com> domain name does not resolve to any website while the <bosubody.com> domain name resolves to a website that features a blog about steroids and contains Complainant’s copyrighted videos.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

The Panel is satisfied with Complainant’s showing of its rights in the BOSU mark under Policy ¶ 4(a)(i) through its registrations of the BOSU mark with the USPTO.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also 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.").

 

Both of the <bosubootcamp.com> and <bosubody.com> domain names contain Complainant’s entire BOSU mark and add the generic top-level domain (“gTLD”) “.com.”  In addition, the <bosubootcamp.com> domain name adds the descriptive term “bootcamp,” which describes Complainant’s physical fitness business, while the <bosubody.com> domain name adds the generic term “body.”  The Panel finds that none of the aforementioned alterations to Complainant’s mark sufficiently distinguish either of the disputed domains from Complainant’s mark.  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term);  Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

Therefore, the Panel finds that each of the <bosubootcamp.com> and <bosubody.com> domain names is confusingly similar to Complainant’s BOSU mark under Policy ¶ 4(a)(i).  The Panel finds that Policy ¶ 4(a)(i) has been satisfied.    

 

Rights or Legitimate Interests

 

Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names.  The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

The <bosubootcamp.com> domain name does not resolve to any website.  The Panel finds that Respondent’s failure to make an active use of the <bosubootcamp.com> domain name in connection with any content is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Respondent’s <bosubody.com> domain name resolves to a website that features a blog about steroids and contains Complainant’s copyrighted videos.  The Panel finds that Respondent’s use of this disputed domain name is an attempt by Respondent to pass itself off as Complainant.  Therefore, the Panel finds that Respondent’s use of the <bosubody.com> domain name to hold itself out as the source of Complainant’s copyrighted videos is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Nokia Corp.  v. Eagle,  FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii))

 

Furthermore, Respondent is listed in the WHOIS information as “Kolombo Networks,” which does not indicate that Respondent is commonly known by either of the <bosubootcamp.com> or <bosubody.com> domain names.  Respondent has not offered any evidence to indicate otherwise.  The Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s registration of the <bosubootcamp.com> and <bosubody.com> domain names is sufficient evidence of a pattern pursuant to bad faith registration and use under Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).

 

Respondent’s confusingly similar <bosubody.com> domain name resolves to a website that features a blog about steroids and contains Complainant’s copyrighted fitness videos.  The Panel presumes that Respondent profits from this use.  The Panel finds that Respondent’s attempt to pass itself off as Complainant creates a likelihood of confusion as to Complainant’s affiliation with the <bosubody.com> domain name.  Therefore, the Panel finds that Respondent’s attempt to profit from this creation of a likelihood of confusion constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site) 

 

Moreover, the Panel further finds that Respondent’s failure to make an active use of the <bosubootcamp.com> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy);  Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). 

 

Respondent’s current WHOIS information for both of the disputed domain names is listed as “Kolombo Networks.”  Complainant has provided sufficient evidence to show that prior to Respondent’s notice of the current proceeding, Respondent’s WHOIS information for both of the disputed domain names was listed as “Jay Corbett.”  The Panel finds that this switch in WHOIS information constitutes “cyberflying” and is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25, 2004) (respondent’s efforts to disguise its true identity is an example of bad faith conduct); see also Marian Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002) (finding bad faith registration and use where “Respondent has tried to conceal the name of the true owner of the disputed domain name.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bosubootcamp.com> and <bosubody.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Bruce E. Meyerson, Panelist

Dated:  July 22, 2009

 

 

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