BodyMedia, Inc. v. Adib Mubarrok
Claim Number: FA1003001311717
Complainant is BodyMedia, Inc. (“Complainant”), represented by Donna
Weinstein, of GTC Law Group LLP & Affiliates,
The domain name at issue is <gowear-fit.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 16, 2010, the
Forum served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 5, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to firstname.lastname@example.org. Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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” through submission of a Written Notice, as defined in Rule 1. 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 <gowear-fit.com> domain name is confusingly similar to Complainant’s GO WEAR mark.
2. Respondent does not have any rights or legitimate interests in the <gowear-fit.com> domain name.
3. Respondent registered and used the <gowear-fit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BodyMedia, Inc., has registered its GO WEAR mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 3,544,386 issued
Respondent, Adib Mubarrok,
registered the disputed domain 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.
Complainant has rights in its GO WEAR mark due to its
registration with the USPTO (Reg. No. 3,544,386 issued
Complainant asserts that Respondent’s disputed domain name
is confusingly similar to Complainant’s GO WEAR mark. Respondent’s <gowear-fit.com> domain name
incorporates the dominant feature of Complainant’s mark, removes the space
between words of the Complainant’s mark, adds a hyphen, adds a descriptive term,
and adds the generic top-level domain “.com.”
The Panel finds that these are minor alterations to Complainant’s
registered mark and, as such, finds Respondent’s domain name is confusingly
similar to Complainant’s mark pursuant to Policy 4(a)(i). See Whitney
Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also American Int’l Group, Inc. v. Domain
FA 1106369 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant asserts that Respondent has no rights or
legitimate interests in the <gowear-fit.com>
domain name. Once Complainant has made a prima
facie case, the burden to establish that he has rights or legitimate
interests in the disputed
domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has established a prima
facie case, shifting the burden to the Respondent. Due to Respondent’s
failure to respond to the proceedings, the Panel will analyze the record in
light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault,
FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that,
once a complainant has made out a prima
facie case in support of its allegations, the burden shifts to respondent
to show that it does have rights or legitimate interests pursuant to paragraph
4 (a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom
The WHOIS information for the <gowear-fit.com> domain name lists “Adib Mubarrok” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Complainant asserts no license or other authorization has been given to Respondent to use the GO WEAR mark. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a website that resells the products Complainant offers under its mark. The Panel finds that Respondent’s use of the <gowear-fit.com> domain name 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
domain name resolves to a website in direct competition with Complainant,
leading the Internet user to Respondent’s website offering Complainant’s goods for
resale. The Panel finds Respondent’s registration and use of the disputed
domain names to divert Internet users to a website in competition with the
Complainant constitutes a disruption of Complainant’s business and qualifies as
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb.
Complainant asserts that Internet users, searching for
Complainant’s products, will be confused by the disputed domain name when it
resolves to a web site that includes Complainant’s mark, pictures and descriptions
of the goods related to Complainant’s mark, and offers similar online sales of
Complainant’s goods. Complainant further
asserts that Internet users may become confused as to Complainant’s sponsorship
or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this
confusion by attracting Internet users seeking Complainant’s products to
Respondent’s website. Therefore, the
Panel finds Respondent’s use of the <gowear-fit.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v.
The Panel finds 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 <gowear-fit.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 20, 2010
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