24 Hour Fitness USA, Inc. v.
Garry Marino
Claim Number: FA0908001279683
PARTIES
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Britt
L. Anderson, of Manatt, Phelps & Phillips LLP,
California, USA. Respondent is Garry Marino
(“Respondent”), represented by Garry J. Marino,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hourfitnessgyms.com>, registered
with Name.com
Llc.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 13, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 14, 2009.
On August 14, 2009, Name.com Llc confirmed by e-mail to the
National Arbitration Forum that the <24hourfitnessgyms.com> domain name
is registered with Name.com Llc and that
the Respondent is the current registrant of the name. Name.com Llc
has verified that Respondent is bound by the Name.com
Llc 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 August 17, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 7, 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@24hourfitnessgyms.com
by e-mail.
A timely Response was received and determined to be complete on September 8, 2009.
On September 17, 2009 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it is one of the largest privately owned and
operated health and fitness chains in the world. Its facilities are
distinguished by the high quality of their services and equipment. Complainant
offers a wide selection of cardio and strength training machines and exercise
equipment, group exercise programs, personal training programs, basketball and
racquetball courts, lap pools, rock climbing, saunas, pro shops, child care,
knowledgeable staff and many other services. Complainant currently has more
than three million members in over 425 clubs in the United States and in five
countries in Asia, namely China, Hong Kong, Malaysia, Singapore and Taiwan.
Complainant also markets and sells a wide variety of health and fitness related
merchandise under its 24 HOUR FITNESS mark, including nutrition and exercise
books and magazines, digital fitness equipment, clothing, socks and head gear,
as well as accessories, gym bags, and backpacks.
Since at least as early as 1996, Complainant has continuously and
pervasively used its distinctive and famous 24 HOURS FITNESS mark in connection
with its wide range of health and fitness related products and services. Since
at least as early as 1983, through its predecessor-in-interest, Complainant has
continuously and pervasively used its distinctive and famous 24 HOUR mark, and
variants thereof, in connection with health and fitness related products and
services. Complainant is the owner of numerous trademark and service mark
applications and registrations worldwide incorporating the 24 HOUR and 24 HOURS
FITNESS marks, with over 100 trademark applications and registrations in at
least 28 countries.
The distinctiveness of the 24 HOUR FITNESS Marks is buttressed by their
widespread secondary meaning in the marketplace. Complainant has expended
substantial efforts and millions of dollars in promoting and advertising the 24
HOUR FITNESS Marks on national television and in the Internet, on signage at
major professional sporting events, and in newspapers and magazines.
Complainant has also partnered with international famous celebrities
and athletes like Magic Johnson, Andre Agassi, Shaquille O’Neal, Lance
Armstrong, Jackie Chan, Yao Ming and Derek Jeter in advertising campaigns and
co-branding partnerships. In 2003 Complainant became an official sponsor of the
U.S. Olympic Team, the first ever by a national fitness club operator.
Complainant was the exclusive Official Fitness Center Sponsor of the U.S.
Olympic Team for the 2008 Summer Olympic Games in
As a result of the widespread public recognition and renown of the 24
HOUR FITNESS Marks, the marks have become identified in the minds of consumers
exclusively with Complainant’s high quality products and services. Thus, the 24
HOUR FITNESS Marks have become an asset of substantial
value and a symbol of Complainant’s goodwill.
Respondent’s domain name <24hourfitnessgyms>
is confusingly similar to the Complainant’s 24 HOUR FITNESS Marks. Respondent’s
domain name incorporates the 24 HOUR FITNESS mark in its entirety along with
the generic words “gyms,” a common term in the health and fitness industry.
The addition of the term “gyms” does not distinguish the disputed
domain name from Complainant’s marks; indeed, the term identifies the exact
services offered by Complainant in connection with its 24 HOUR FITNESS Marks.
In finding Policy 4(a)(i) to be satisfied in 24
Hour Fitness USA, Inc. v. Hollywood Gym Inc., the Panelist in that case
noted that the addition of the term “center” to the 24 HOUR FITNESS mark did
not distinguish the <24hourfitnesscenter.com> domain name because the
name “center” is a “common term in the health and fitness industry and is
clearly in reference to the Complainant’s business. The Policy is also
satisfied in this case because the term “gyms” is also a common term in the
health and fitness industry and clearly refers to Complainant’s business.
Indeed, Complainant owns the almost identical domain name
<24hourfitnessgym.com>.
Complainant has prior and senior rights in the 24 HOUR FITNESS Marks.
Complainant has been using the 24 HOUR FITNESS mark since at least as early as
1996, and the 24 HOUR mark, through its predecessor-in-interest, since at least
as early in 1983. Complainant’s use of the 24 HOUR FITNESS Marks predates
Respondent’s registration of the domain name by at least 13 years, given that
Respondent only registered the disputed domain name on March 5, 2009. Such
priority indicates that Respondent lacks rights and legitimate interests in the
domain name.
Respondent is an individual located in Wesley Chapel,
According to Complainant there is no indication that Respondent used,
or was demonstrably preparing to use, “24 Hour Fitness Gym” prior to his
registration and use of disputed domain name. On March 26, 2009, shortly after
learning of Respondent’s registration and use of <24hourfitnessgyms.com>,
counsel for Complainant sent Respondent a letter by email and registered mail
requesting that Respondent immediately cease using the domain name and transfer
the domain name to Complainant based on Complainant’s prior ownership and use
of the 24 HOUR FITNESS Marks.
Respondent’s only use of the domain name at that time was in connection
with a parked page that featured links to various third party websites offering
health and fitness related products and services, including websites belonging
to competitors of the Complainant. After receiving this letter, Respondent
immediately changed the website at <24hourfitnessgyms.com>.
Now, in addition to sponsored advertising and links to website owned by
competitors of Complainant, the revised <24hourfitnessgyms.com>
homepage displays a short paragraph:
Welcome the 24 Hour Fitness Gyms. 24 Hour Fitness Gyms are very popular throughout the world. 24 hour access to 24 hour Fitness Facilities and 24 Hour Fitness Gyms are very popular because they allow the member to exercise on their own schedule. Many 24 Hour Fitness Companies and 24 Hour Fitness Clubs stay open 24 hours to accommodate their members. If you are a Fitness facility, or won fitness facilities that stay up open 24 hours, why not let internet searches know about you. 24HourFitnessGyms.com Is Available Please call 813-956-4182 For Purchase Information.
The “About Us” page at <24hourfitnessgyms.com>
boasts about how it only took an hour to create the website:
Welcome to 24 Hour Fitness Gyms. About Us: Well, what can I say. We are really good at what we do although this site is really plain. This truly was made in an hour. If you would like to discuss this site or take a look at hundreds of other sites we have done give us al call. 24HourFitnessGyms.com Is Available Please call 813-956-4182 For Purchase Information.
Finally, the “Contact Us” page at the <24hoursfitnessgyms.com> domain name simply reads:
Welcome to 24 Hour Fitness Gyms. Contact Us: 24HoursFitness Gyms.com Is Available Please call 813-956-4182 For Purchase Information.
Notably, all the hyperlinks embebbed into the content of the
Respondent’s website route back to the disputed domain name itself.
Respondent’s primary use of <24hourfitnessgyms.com>
has been to solicit traffic to its website and then on to the sites of third
parties, including competitors of the Complainant. After receiving
Complainant’s cease and desist letter, Respondent also began using the domain
name to solicit offers for advertising or for sale of the domain name,
particularly to “fitness facilities” (i.e., competitors of the Complainant).
Such use of a domain name is not a bona fide offering of goods or services or a
legitimate noncommercial or fair use of the domain name.
It is clear that Respondent, in choosing a domain name that simply adds
the term “gyms” to Complainant’s well-known 24 HOUR FITNESSâ mark, intents to exploit Internet user
confusion by diverting Internet users away from Complainant’s site for
Respondent’s own pecuniary benefit. Such use, which at its essence relies on
instigating and exacerbating user confusion, cannot and does not constitute bona fide commercial or fair use
pursuant to the Policy ¶ 4(c)(i).
Moreover, given Complainant’s well-established trade name and trademark
rights in the 24 HOUR FITNESSâ Marks in connection with health and fitness
goods and services, the only legitimate commercial use of the <24hourfitnessgyms.com> domain
name is in connection with Complainant. Because the disputed domain name
incorporates Complainant’s well-known 24 HOUR FITNESSSâ mark in its entirety together with a generic
term commonly used in the health and fitness field, Internet users accessing
the <24horfitnessgyms.com>
domain are likely to become confused and believe that Complainant should have
some affiliation with the resulting website. Any possible commercial use that
Respondent may have for the domain name, if any, will not be legitimate because
such use will inevitably create the confusion proscribed by the Policy.
Under the Policy, bad faith registration is presumed when the
registrant had or should have had actual or constructive notice of
Complainant’s marks. Because Complainant’s use and ownership of the 24 HOUR
FITNESSâ Marks predates Respondent’s registration of the disputed domain name
by over a decade and because of the widespread notoriety of the 24 HOUR FITNESSâ Marks, Respondent clearly knew or should
have known of the 24 HOUR FITNESSâ Marks at the time Respondent registered the
disputed domain name.
Notwithstanding Complainant’s numerous trademark registrations and
applications for the 24 HOUR FITNESSâ Marks in the
Respondent was also on constructive notice of Complainant’s marks by
virtue of Complainant’s numerous trademark registrations for the 24 HOUR
FITNESSâ Marks in the
Furthermore, there can be no doubt that Respondent had actual notice of
the 24 HOUR FITNESSâ Marks as of March 26, 2009, given that Respondent received
Complainant’s cease-and-desist letter advising Respondent of Complainant’s
prior ownership and use of the 24 HOUR FITNESSâ Marks on that date. In fact, immediately
upon receiving Complainant’s letter, Respondent completely revised his website
to feature extensive use of the “24 Hour Fitness” throughout his website along
with solicitations to advertise on and sell the domain name.
There can be no doubt that Respondent’s sole purpose in registering its
domain name was to intentionally attract, for commercial gain, Internet users
to Respondent’s website by creating a likelihood of confusion with
Complainant’s mark in violation of Policy ¶ 4(b)(iv). The disputed domain name is
so clearly confusingly similar to Complainant’s marks and is so obviously
connected with Complainant and its gyms that Respondent’s very registration of
the domain is in bad faith. By employing a confusingly similar mark, Respondent
captures users hoping to enter Complainant’s site and trades on the goodwill
surrounding Complainant’s famous 24 HOUR FITNESSâ Marks. This use clearly constitutes bad
faith use and registration under the Policy.
To date, Respondent has failed to develop or use the domain name is
connection with any bona fide
offering of goods or services or for any legitimate noncommercial or fair use.
Because Respondent’s domain name is confusingly similar to Complainant’s 24
HOUR FITNESSâ Marks, Internet users accessing the <24hoursfitnessgyms.com> domain are likely to become confused
as to Complainant’s affiliation with the resulting website. Respondent
profits from this confusion by collecting the click-through fees generated by
diverting Internet users to third-party websites, including websites owned by
competitors of Complainant.
Respondent’s improper use of the <24hourfitnessgyms.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Nor does it appear that Respondent has any intent of developing or
using the domain name for a legitimate purpose in the future, as evidenced by
Respondent’s use of the website to announce the availability to purchase the
domain name to any interested buyer. Indeed, the public offer of a disputed
domain for rent or sale has been described as “the most perfect evidence of bad
faith activity in prejudice of Internet community and of the owner of the
trademarks used as domain names.”
Respondent’s continued refusal to transfer the disputed domain despite
Complainant’s obvious trademark rights in the domain name is additional
evidence of its bad faith. Moreover, Respondent has refused to transfer the
domain name to Complainant unless Complainant pays an exorbitant fee well above
Respondent’s out-of-pocket costs. In response to Complainant’s letter,
Respondent sent Complainant’s counsel the following email:
I will forward this information to my attorney on Monday. However, without consulting him I would assume I am not violating anything by owning a domain name. No I will not transfer it to your client. Yes I will go all the way to trial on the matter. Yes, your client can purchase the domain name for $100,000 USD.
In a subsequent e-mail dated March 30, 2009, Respondent admitted to
paying only $8.99 for the domain name but, again, refused to transfer the
domain name unless Complainant paid $100,000:
I purchased a domain name for $8.99 … I explained the domain name is for sale for $100,000. Final offer ….
This demand for payment, particularly for an amount totaling over 10,000
times the out-of-pocket costs, is indisputable evidence of Respondent’s bad
faith. Respondent is not asking for reimbursement of his out-of-pocket costs;
instead, Respondent seeks to extort Complainant whom he describes as a “big
monolithic fitness empire.”
Not only has Respondent refused to transfer the <24hourfitnessgyms.com> domain unless an exorbitant amount of
money is paid, Respondent has also threatened to cause commercial harm to
Complainant during this dispute. For example, Respondent’s website states, “If
you are a Fitness facility, or own fitness facilities that stay open 24 hours,
why not let internet [sic] searchers know about you.” In other words,
Respondent is particularly soliciting competitors of Complainant to purchase or
advertise on a domain name that is confusingly similar to the Complainant’s 24
HOUR FITNESSâ Marks.
Respondent has also threatened Complainant with a “PR NIGHTMARE!” and
stated that, “I will make sure every step of the proceedings will be open to
the public, and with my knowledge of internet [sic] and SEO that should not be
a problem. These threats further demonstrate Respondent’s bad faith
registration and use of the <24hourfitnessgyms.com>
domain name.
In addition, Respondent has breached the representations and warranties
that he made in his Registration Agreement pursuant to Paragraph 2 of ICANN
Policy by attempting to extract a six-figure cash payment from Complainant,
while at the same time threatening damage to Complainant through advertising
offered to Complainant’s competitors, selling the domain name to Complainant’s
competitors, and/or targeting Complainant through vexatious Internet postings
in the event that Complainant exercises its legal rights.
In its Response to the Complaint Respondent stated the following:
I, Garry Marino (respondent) argue that the domain name: <24hourfitnessgyms.com> in no way
is confusingly similar based on the following facts:
1)
In no
way am I using the domain name (<24hourfitnessgyms.com>)
to represent myself or my company as a 24 Hour Fitness USA company.
2)
The
current website (<24hourfitnessgyms.com>)
has absolutely no aesthetic similarities to the Complainant’s website.
3)
The
current website (<24hourfitnessgyms.com>)
is not infringing on any of 24 Hour Fitness USA, Inc. certificates of
registration from the United States Trademark Registrations (Complainants
Exhibit2) as “24 Hour Fitness Gyms” is not listed in any of the complainants
Trademarks Service Mark in complainants Exhibits 2
4)
The
current website (<24hourfitnessgyms.com>)
is in no way disparaging or in any way using the domain name to present the
complainants website or company in a negative light.
5)
The
Complainants Company (24 Hour Fitness
I, Garry Marino, being the president of a small Florida Corporation
(Virtual Grace Inc.) own approximately 200 domain names. The nature of our
business is Website Design, Search Engine Optimization, Internet Advertising
and Webmaster services (see <virtualgrace.com>) we own other health and
fitness portals such as <orlandohealthclubs.com>, a health and fitness
directory that has a 24 hour fitness category.
Part of our business model is to purchase domain names that are
relevant to a particular industry, build a website on that domain name and
provide that product as part of our line of products and services. <24hourfitnessgyms.com> was
purchased to provide that same service, for any fitness company that runs
health clubs and fitness centers for 24 hors of which there are many, outside
of complainant.
Complainant like other fitness and health club companies is welcome to
inquire and request quotes for our services. The product (<24hourfitnessgyms.com>) is part of our inventory and is
available to ANY Health and Fitness company who provides 24 hour access to
their facilities.
Furthermore, the currently non-trademarked domain name
24hourfitnessgyms.com is being used as a source identifier, and not just a
“re-direct” to another website. There is information regarding 24 Hour Fitness
Clubs and Health Facilities and advertisers promoting their 24 hour fitness
facilities including complainant.
At no time have I, Garry Marino used <24hourfitnessgyms.com> in any way to confuse or mislead
potential visitors into thinking they were visiting complainant.
The complainant’s statement that I requested $100,000 for the domain
name originally is true. However it was clearly in jest and was an arrogant
response to an arrogant request that I transfer the domain name “immediately”
to complainant. I clearly indicated to the Complainant’s representative on
phone and in email that I was open to any offer given for the domain name
and/or website as this is what our company does to sustain itself.
I had no knowledge of any fitness club named 24 Hour Fitness USA, Inc.
and based my purchase of the domain name solely on the popularity of the
keyword phrase search “24 hour fitness gyms” which as of today is globally
searched about 1,000 times per month
(exact phrase) across the internet. Virtul Grace Inc. as a company is always
interested in industry specific domain names to build out product for a wide
range of potential clients.
FINDINGS
The Panel finds that:
1.
the
Domain Name <24hourfitnessgyms.com> is
confusingly similar to
Complainant’s marks,
2.
the
Respondent has not established any right or legitimate interest in the Domain
Name <24hourfitnessgyms.com>
and
3. the Respondent has registered and is using
the Domain Name <24hourfitnessgyms.com> in bad faith.
DISCUSSION
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.
Complainant asserts its rights in the 24 HOUR FITNESS mark through its
registrations of the mark with various governmental trademark authorities
worldwide, including the United States Patent and Trademark Office (“USPTO”)
(i.e. Reg. No. 2,130,895 issued January 20, 1998). The Panel therefore finds
that Complainant has sufficient rights in the 24 HOUR FITNESS mark under Policy
¶ 4(a)(i).
Complainant asserts that the <24hourfitnessgyms.com> domain name
is confusingly similar to Complainant’s 24 HOUR FITNESS mark despite: (1) the
removal of spaces in the mark; (2) the addition of the generic top-level domain
“.com,” and (3) the addition of the allegedly descriptive term “gyms,” which
Complainant contends describes its fitness operations. The Panel agrees with
Complainant in finding that these alterations do not remove the disputed domain
name from the realm of confusing similarity. As a result the Panel holds that
the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Bond
& Co. Jewelers, Inc. v.
While Respondent contends that the disputed domain name is comprised of
common, descriptive terms and as such cannot be found to be confusingly similar
to Complainant’s mark, the Panel is of the view that such a determination is
not necessary under Policy ¶ 4(a)(i) as this portion
of the Policy considers only whether Complainant has rights in the mark and
whether the disputed domain name is identical or confusingly similar to
Complainant’s mark. See Vance Int’l,
Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7,
2007) (finding that because the complainant had received a trademark
registration for its VANCE mark, the respondent’s argument that the term was
generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs.,
FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark law.”).
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona
fide offering of goods or services prior to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of
proof for the second criterion: The Respondent has failed to demonstrate any
legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the
position that while Complainant has the burden of proof on this issue, once the
Complainant has made a prima facie
showing, the burden of production shifts to the Respondent to show by providing
concrete evidence that it has rights to or legitimate interests in the domain
name at issue. See Document Techs., Inc.
v. Int’l Electronic Comm’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v.
Soussi, D2000-0252 WIPO July 5, 2000); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the Complainant has asserted that the Respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the Respondent”); see also
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.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent has no right or
legitimate interest is sufficient to shift the burden of proof to the
respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts that Respondent is not commonly known by the
disputed domain name, as Respondent is listed in the WHOIS information as
“Garry Marino.” Complainant further contends that Respondent is not affiliated
with Complainant, and has no authorization to use Complainant’s mark. The Panel finds that Respondent lacks rights
and legitimate interests under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech,
FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no
rights or legitimate interests in a disputed domain name where there was no
evidence in the record indicating that the respondent was commonly known by the
disputed domain name); see also Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by
the <thirteen.com> domain name based on all evidence in the record, and
the respondent did not counter this argument in its response).
Complainant asserts that the disputed domain name is used to resolve to
a website that displays links and advertisements for Complainant’s health and
fitness competitors. Complainant further contends that Respondent, once in
receipt of Complainant’s cease and desist letter, added additional language
stating that the domain name was for sale and promoting the utility of the
domain name for fitness businesses. Complainant asserts that at all times, Respondent has sought to obtain commercial gain
through the receipt of commercial fees and through a potential sale of the
disputed domain name. The Panel finds that Respondent has not made 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). See Skyhawke Techs., LLC v. Tidewinds
Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using
the <skycaddy.com> domain name to display a list of hyperlinks, some of
which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed
domain name does not constitute 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 also Educ. Broad. Corp. v. DomainWorks
Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain
name to maintain a commercial website with links to the products and services
of the complainant’s competitors did not represent 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)).
Complainant states that, in addition to the included language
indicating that the disputed domain name was for sale to the public, Respondent
offered to sell the disputed domain name to Complainant for $100,000. Since the Panel finds that Respondent made an
offer to sell the disputed domain name to Complainant for more than its
registration costs, the Panel is of the view Respondent lacks rights and
legitimate interests under Policy ¶ 4(a)(ii).
See George Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent
makes a “disproportionate” offer to sell its domain name registration to the
complainant for more than its out-of-pocket registration costs, there is
additional evidence that the respondent lacks rights and legitimate interests
in the disputed domain name); see also Drown Corp. v. Premier Wine &
Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel
interprets Respondent’s offer to sell the domain name registration for $100,000
as evidence that Respondent lacks rights and legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent offered to sell the disputed
domain name to the public on its resolving website, and that it offered to sell
the disputed domain name to Complainant for $100,000. The Panel agrees that
Respondent primarily intended a sale of the disputed domain name for more than
its registration costs at the time of its registration and beyond. As a result
the Panel finds that Respondent engaged in bad faith registration and use under
Policy ¶ 4(b)(i).
See Neiman Marcus Group, Inc. v. AchievementTec,
Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s
offer to sell the domain name for $2,000 sufficient evidence of bad faith
registration and use under Policy ¶ 4(b)(i)); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's general offer of the disputed domain name registration
for sale establishes that the domain name was registered in bad faith under
Policy ¶ 4(b)(i).”).
Complainant asserts that the disputed domain name resolves to a website
that displays advertising and links for Complainant’s competitors. The Panel also finds that Respondent engaged
in bad faith registration and use under Policy ¶ 4(b)(iii)
because Respondent primarily intended to disrupt Complainant’s business through
the use of the disputed domain name. See
David Hall Rare Coins v.
Complainant further argues that Respondent obtains commercial referral
fees for displaying these competitive advertisements. The Panel agrees that
Respondent intended to create a likelihood of confusion as to Complainant’s
affiliation with the disputed domain name and resolving website for commercial
gain. As a result the Panel finds that Respondent engaged in bad faith
registration and use under Policy ¶ 4(b)(iv). See
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 <24hourfitnessgyms.com> domain name
be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda Panelist
Dated: September 28, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum