24 Hour Fitness USA, Inc. v.
Claim Number: FA1003001315664
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by CitizenHawk,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24houfitness.com>, registered with Fabulous.com Pty Ltd.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2010.
On March 28, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <24houfitness.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 April 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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 by e-mail. Also on April 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received on April 23, 2010, and deemed deficient under Supplemental Rule 5(a) as it was not properly served on the other party.
On April 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Confusing Similarity (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4 (a)(i))
Complainant informs that it was founded in 1983 and that it has grown
to become one of the largest privately-owned
Complainant states that it owns the 24 HOUR FITNESS Mark, for which it has obtained federal trademark registrations.
Complainant also states that it has spent millions of dollars in advertisement and promotion of the 24 HOUR FITNESS Mark on the Internet through its website located at <24hourfitness.com>. Complainant argues that, based on its federal trademark registrations and extensive use, it owns the exclusive right to use the 24 HOUR FITNESS Mark for health club services and services related to the health industry.
Complainant argues that the Disputed Domain Name is confusingly similar to Complainant's Mark because it differs by only a single character from Complainant's Mark, or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark.
Complainant asserts that the Disputed Domain Name is a classic example of "typosquatting" and that the practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the name must be confusingly similar by design.
Right to or Legitimate Interests (ICANN Rule 3 (b)(ix)(2); ICANN Policy ¶ 4 (a)(ii))
Complainant asserts that Respondent has not been commonly known by the Disputed Domain Name. Complainant states that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant's Mark in a domain name.
Complainant contends that Respondent is using the Disputed Domain Name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Complainant argues that it is presumable that Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
Registered and Used in Bad Faith (ICANN Rule 3 (b)(ix)(3); ICANN Policy ¶ 4 (a)(iii))
Complainant asserts that the earliest date on which Respondent registered the Disputed Domain Name was February 4, 2008, which is significantly after Complainant's registration of 24HOURFITNESS.COM on March 15, 1999 and after Complainant's first use in commerce as specified in their relevant registration with the USPTO.
Complainant contends that Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant did not, however, submit any evidence of such attempts.
Complainant argues that Respondent's typosquatting behavior is, in and of itself, evidence of bad faith.
Complainant states that Respondent is a recalcitrant, serial cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Complainant contends that Respondent holds registrations on other domain names that appear to be straightforward examples of typosquatting.
Complainant further contends that Respondent's use of apparently falsified and/or incomplete WHOIS contact information demonstrates a desire to avoid being held accountable, which serves as further evidence of bad faith intent.
Complainant asserts that Respondent has caused the website reachable by (some or all of) the Disputed Domain Name to display content and/or keywords directly related to Complainant's business and that this serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.
Respondent has submitted a deficient response.
In his brief response, Respondent affirms that “24 Hou Fitness” should
not be confused with <24hourfitness.com>. Respondent argues that “Hou”
is a commonly used abbreviation for “
Respondent briefly informs that “HouFit” and “HouFitness” have been featured on <KillerStartups.com>, <I-newswire.com>, <Bodybuilding.com>, <Prlog.org>, and many other reputable sites and news organizations. Respondent has not submitted any evidence of such allegation.
Respondent concludes that even though the spelling of the disputed domain name is close to the spelling of Complainant's domain name, “24 Hou Fitness” would be short for “24 Houston Fitness,” a site that, according to Respondent, “is open 24 hours a day 7 days a week.”
The Panel finds that Complainant is the
record owner of the following registrations in the
24 HOUR FITNESS for health club services, clothing, namely, sweat suits, baggy pants,
shorts, sweatshirts, T-shirts, tank tops, leotards, sport bras, boxer shorts, leggings, socks, hats, gym bags and backpacks (U.S. Reg. No. 2,130,895);
24HOURFITNESS.COM for providing health and fitness related information over a global information network (U.S. Reg. No. 2,395,153);
24 HOUR FITNESS SPORT for health club services (U.S. Reg. No. 2,499,844);
24 HOUR FITNESS ACTIVE for health club services (U.S. Reg. No. 2,684,457) and;
24 HOUR FITNESS EXPRESS for providing health club services, namely, providing
fitness and exercise facilities (U.S. Reg. No. 2,926,364).
Complainant’s principal website is located at <24hourfitness.com>.
The Panel finds that the Respondent registered the Disputed Domain Name on February 4, 2008, which is significantly after Complainant's registration of 24HOURFITNESS.COM on March 15, 1999.
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.
Preliminary Issue: Deficient Response
Respondent’s Response was not served on the other party. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel chooses to accept and consider this Response, as it does not harm Complainant. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s 24 HOUR FITNESS trademark.
The disputed domain name <24houfitness.com> differs from Complainant’s registered 24 HOUR FITNESS mark only in the removal of the letter “r”, which is not enough to characterize it as distinct from Complainant’s trademark. See Columbia Pictures Indus., Inc. v. Caribbean Online Int’l Ltd., D2008-0090 (WIPO Mar. 10, 2008) (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that removing letters from a domain name, such as the removal of “r” in this case, is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant.
Furthermore, the Panel concludes that Respondent’s registration of the disputed domain name <24houfitness.com> constitutes typosquatting, which not only renders the disputed domain name confusingly similar to Complainant’s 24 HOUR FITNESS mark, but is also evidence of bad faith, which will be further addressed. It is clear that the disputed domain names <24hourfitness.com> is a common mistyping of Complainant’s 24 HOUR FITNESS mark and <24hourfitness.com> domain name.
Respondent alleges that “Hou” would be a
common abbreviation for “
The Panel finds that the Complainant has established the first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, Respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC,
D2005-0263 (WIPO Apr. 28, 2005); see also
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Respondent alleges that “24 Hou Fitness” is affiliated with <HouFit.com>, the leading Houston Fitness networking website. However, Respondent did not submit any evidence of such allegations.
At the moment this dispute was filed and the moment this decision was rendered, the website under the disputed domain name resolved to a page that displayed pay-per-click links to Complainant’s competitors. This is not a bona fide use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the Respondent’s use of complainant’s mark to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
Respondent’s allegations that “HouFit” and “HouFitness” have been featured on <KillerStartups.com>, <I-newswire.com>, <Bodybuilding.com>, <Prlog.org>, and many other reputable sites and news organizations are not proved. Simple screenshots of the websites could evidence Respondent’s allegations, but this was not submitted. Moreover, the Panel, at its sole discretion, has accessed the mentioned websites and did not find any mention to Respondent or to the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
The Panel finds that Respondent did not demonstrate rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established the second element of the Policy.
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. See Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
The trademark registrations of record confirm Complainant’s allegations that it had long been using its 24 HOUR FITNESS mark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that the trademark 24 HOUR FITNESS constitutes a well-known trademark. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark.
Respondent registered the disputed domain names, which reflects typing mistakes of Complainant’s known trademark. It has been held by several NAF Panels that typosquatting itself is evidence of bad faith.
At the time the Complaint was filed and at the time of this Decision, the disputed domain name resolved to a page that offered visitors pay-per-click links to sites of other companies, including Complainant’s competitors. See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, D2004-0537 (WIPO Sept. 20, 2004) (“the Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO UDRP decisions also support this conclusion.”); see also Edmunds.com, Inc. v. Ult. Search, Inc., D2001-1319 (WIPO Feb. 1, 2002) (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds that the Complainant has made out bad faith registration and use of the domain name by the Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24houfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: May 10, 2010
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