National Arbitration Forum

 

DECISION

 

Fitness Anywhere, Inc. v. Mode Athletics

Claim Number: FA1004001320667

 

PARTIES

Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid A. Mantashi, California, USA.  Respondent is Mode Athletics (“Respondent”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and  <modetrx.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Prof. Darryl C. Wilson, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.

 

On April 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>, <trxworkout.com> <trxworkouts.com>, and <modetrx.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 April 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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 postmaster@trxsuspensiontraining.com, postmaster@trxsuspensiontrainer.com, postmaster@buytrxsuspensiontrainer.com, postmaster@trxworkout.com, postmaster@trxworkouts.com, and postmaster@modetrx.com.  Also on April 27, 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 timely Response was received and determined to be complete on April 29, 2010.

 

On May 7, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson, Esq. as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant contends that Respondent’s domain names wholly incorporate marks that Complainant has registered or has established common law rights thereto thus making the domain names identical or confusingly similar to Complainant’s marks. Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domains and that Respondent has engaged in the bad faith registration and use of the domain names at issue.

 

B.     Respondent

 

Respondent contends that although the Complainant has provided proof “that they have trademarks involved with the disputed domain names” the issue of the Respondent’s rights and legitimate interests is “murky at best”. Respondent further alleges that the Complainant provided no proof that that Respondent registered the disputed domains in bad faith or is using them in bad faith. Respondent states that Complainant’s allegations regarding the prospective sale of the disputed domain names and other assertions of Respondents misdeeds are baseless and that the registration of the disputed domains was without any intent to prevent the Complainant from registering the domains or otherwise disrupt the Complainant’s business.

 

FINDINGS

Complainant, Fitness Anywhere, Inc., is a consumer products company that sells goods in the physical wellness market. Complainant is the owner of trade and service marks registered in the USA and Canada. Complainant provides various types of employment opportunities for those interested in working with the company. Amongst the options available is an “Affiliate” program whereby those working as affiliates can earn commissions on the sales of the Complainant’s exercise equipment. The Affiliate program requires that the participants sign a contractual agreement with the company and amongst the contract provisions are clauses referencing Marketing Guidelines that place restrictions on the Affiliate’s ability to use or register “any Fitness Anywhere trademark or any potentially confusing variation…as part of your company name, trade name, product name, service name, or domain name.”  In the USA and Canada, Complainant is the registrant of the marks TRX and SUSPENSION TRAINING for exercise devices and exercise instructional services. The USA registrations allege, and Complainant contends that it first used the marks in 2005. Since that time Complainant has also purportedly used “Suspension Trainer” in identifying its products via advertising and packaging and claims that use coupled with its procurement of the domain name <suspensiontrainer.com> has established common law trademark rights for SUSPENSION TRAINER. Complainant states that it has “developed further common law rights” by securing the additional domain names, <suspensiontraining.com>, <trx-suspension-trainer.com>, and <trx-suspension-training.com>.

 

Respondent, Mode Athletics is a sole proprietorship run by an individual who is also in the business of selling exercise equipment. Respondent’s owner is a prior Affiliate with Complainant. During or near the time that Respondent was an Affiliate, he registered the domain names <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>, <trxworkouts.com>, <trxworkout.com>, and <modetrx.com> in order to market and sell Complainant’s exercise equipment. Respondent did not receive seek or receive any express authorization to secure the above domain names, and Respondent continued to use the domain names after Respondent discontinued his affiliation with the Complainant albeit for the principal purpose of selling the exercise equipment of Complainant’s competitors since Respondent was no longer authorized to sell Complainant’s goods as an Affiliate. Respondent states that he no longer has plans for <modetrx.com> or <buytrxsuspensiontrainer.com> and does not have any desire to retain ownership of those domains.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the TRX and SUSPENSION TRAINING marks by virtue of trademark registrations with national authorities.  Complainant has trademark registrations for the TRX mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,202,696 issued Jan. 23, 2007) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 726,445 issued Oct. 21, 2008).  Complainant also has trademark registrations for the SUSPENSION TRAINING mark with the USPTO (e.g., Reg. No. 3,255,161 issued June 26, 2007) and the CIPO (e.g., Reg. No. 726,444 issued Oct. 21, 2008).  These trademark registrations with the USPTO and the CIPO sufficiently prove Complainant’s rights in the TRX and SUSPENSION TRAINING marks according to Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Complainant contends that it has common law rights in the SUSPENSION TRAINER mark.  A trademark registration is not necessary for the purposes of Policy ¶ 4(a)(i) when there is evidence of continuous use and the establishment of secondary meaning that show common law rights in the mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). Normally one must provide specific and substantial factual support for a claim of common law trademark rights premised on secondary meaning to be sustained. However more general allegations of establishment will suffice when the Respondent, as here, raises no objections to Complainant’s assertions under Policy ¶ 4(a)(i).  Complainant argues that it has established common law rights in the mark through its continuous use of the mark and extensive efforts to promote and market the SUSPENSION TRAINER mark.  Complainant asserts that its SUSPENSION TRAINER mark has been prominently featured on its item packaging and in a variety of publications and media sources dating back at least to June 2008, including the Fuse Fitness Studio website (December 20, 2009), the <mainstreetfitnessri.com> website (December 20, 2009), <Forbes.com> (June 9, 208), <Military.com> (June 1, 2008), Shape (November 2008), <WorldGolf.com> (January 26, 2009), and Pacific Magazine (June 2008).  Complainant also argues that its SUSPENSION TRAINER mark has been prominently featured in its registered domain names, including <suspensiontrainer.com> (registered Oct. 24, 2009), <suspensiontraining.com> (registered May 6, 2009), <trx-suspension-trainer.com> (registered Oct. 20, 2009), and <trx-suspension-training.com> (registered Oct. 20, 2009).  Complainant argues that, as a result of its efforts to promote and continuously use the SUSPENSION TRAINER mark, its mark has achieved widespread recognition sufficient to establish secondary meaning and common law rights in the mark.  While merely registering a domain name does not establish common law trademark rights in the second level domain, registration coupled with additional activities such as those advertising, packaging and promotional efforts outlined above is sufficient evidence in this case to support a finding of Complainant’s common law rights in the SUSPENSION TRAINER mark pursuant to Policy ¶ 4(a)(i).  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).

 

 Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”  The combination of Complainant’s marks and the addition of a gTLD do not overcome a findng of confusing similarity under Policy ¶ 4(a)(i).  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s <trxsuspensiontrainer.com> disputed domain name is also confusingly similar to Complainant’s TRX and SUSPENSION TRAINER marks for the same reasons noted above.

 

 Respondent’s <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com> domain names are confusingly similar to Complainant’s TRX mark.  Each of the disputed domain names combines Complainant’s TRX registered mark or SUSPENSION TRAINER common law mark with a descriptive term or terms and adds the gTLD “.com.”  The Panel finds that the addition of a descriptive term or terms and the addition of a gTLD create confusing similarity between the disputed domain names and Complainant’s TRX and SUSPENSION TRAINER marks.  See 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); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

 

Respondent is not commonly known by any of the disputed domain names. Complainant correctly notes that the WHOIS information for the disputed domain names lists the registrant for each name as “Mode Athletics.”  Complainant also alleges that Respondent is not authorized to use Complainant’s mark as he was a member of Complainant’s affiliate program from May 19, 2008 until October 16, 2009 and agreed not to use any of Complainant’s mark in any registered domain names.  Respondent argues that he is commonly known by the disputed domain names because he has numerous YouTube videos about the TRX suspension trainer, mentions Complainant’s TRX product in each video and refers Internet viewers to the <trxsuspensiontrainer.com> disputed domain name in each video.  Respondent contends that at least 125,000 people have seen his TRX YouTube videos and therefore associate Respondent with the <trxsuspensiontrainer.com> disputed domain name, illustrating that he is commonly known by the domain name. The failure of the WHOIS information and other information in the record to indicate that Respondent is commonly known by the disputed domain names and the lack of authorization by Complainant to use Complainant’s marks supports a finding that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests in the disputed domain names.  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

Respondent fails to provide evidence substantiating the alleged number of viewers or regarding how and why viewers got to the sites to which the domain names resolve and the videos are parked. It is highly likely that if Respondent was advertising Complainant’s products, viewers would associate the videos and domains with the Complainant instead of thinking that the Complainant is also known as “Mode Athletics”. Respondent fails to discern the difference between mere exposure and the establishment of defendable rights.

 

Complainant argues that Respondent uses the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names to redirect Complainant’s intending customers to Respondent’s own website which offers competing goods.  Complainant asserts that this use of the disputed domain names creates confusion among Internet users as to the affiliation of Respondent’s resolving website and allows Respondent to commercially profit from its use of Complainant’s marks. Respondent acknowledges that as a result of difficulties between the parties in regards to Complainant’s affiliate program that Respondent has moved on to marketing a competing product. Respondent asserts that it is using adequate disclaimers with the sites to prevent confusion as Respondent works further on developing its own Internet marketing plan. However, Respondent fails to address the initial interest confusion inherent in the circumstances under which Respondent is operating. The Panel finds that using Complainant’s mark in the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names which offer competing goods for Respondent’s commercial gain 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 G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Respondent’s effort at characterizing the current use as acceptable is unpersuasive in light of the circumstances under which the domain names were procured.

The presence of a disclaimer does not mitigate confusion and does not grant Respondent rights and legitimate interests in the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names.  See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Respondent’s registration of the disputed domain names in breach of the terms of the affiliate agreement further supports a finding that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (concluding that the respondent had no rights or legitimate interests in disputed domain names containing the complainant’s marks even though it was a part of the complainant’s affiliate program, as the affiliate agreement expressly stated that affiliates could not register domain names containing the CRICKET mark); see also Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s affiliate program upon registering the domain name, which was a misspelling of the complainant’s mark, the respondent intended to use the domain name to generate profit at the complainant’s expense, thereby evidencing a lack of rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii)).

 

Complainant also asserts that Respondent is not making an active use of the <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com> disputed domain names as they do not resolve to any website.  Respondent indicates that he no longer claims two of those disputed domains but that he is planning to use the others in the future. The Panel finds Respondent’s failure to make active use of the <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com> disputed domain names is contrary to supporting a claim of a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 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).

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s registration of the disputed domain names is indicative of a pattern by Respondent to prevent Complainant from effectively reflecting its marks in commerce and in Complainant’s own domain names.  Complainant asserts that Respondent’s pattern of registering disputed domain names incorporating Complainant’s marks creates confusion with Complainant’s existing trademarks.  The Panel finds that Respondent’s activities illustrate a pattern of preventing Complainant from adequately reflecting its marks and reveal bad faith registration and use pursuant to 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. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names.  The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).

 

Complainant contends that Respondent’s <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names disrupt Complainant’s business because the disputed domain names direct Internet users seeking Complainant and Complainant’s products away from Complainant to Respondent’s website(s) where competing goods are offered, which in turn creates confusion regarding the relationship between Complainant and Respondent. Respondent does not dispute that his domains and websites are competing with Complainant but asserts that his initial registration of the domains was in good faith as a member of Complainant’s affiliate program and therefore registered with the purpose of promoting Complainant’s goods. Respondent seems to believe that the initial circumstances surrounding the registration of the disputed domains somehow carry over as continuing rights in the present despite the dissolution of the original relationship between the parties. The Panel finds that Respondent’s use of the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> domain names disrupts Complainant’s business and demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii).  See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Respondent had both actual and constructive knowledge of Complainant’s marks prior to Respondent’s registration of the disputed domain names. Complainant’s marks were registered and Respondent’s attention was drawn to these registered marks when Respondent was required to sign the agreement restricting Respondent’s use of Complainant’s marks to participate in the Affiliate program.  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! Mark at the time of registration).

 

Respondent’s failure to use some of the disputed domains with an active website, as well as Respondent’s relatively minor examples of disclaimer usage on the sites that are active, also fails to dispel the conclusion that Respondent’s use and registration was in bad faith.  See 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); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “).

 

The Complainant has proven this element.

 

DECISION

As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that the Complainant’s requested relief shall be GRANTED

 

Accordingly, it is Ordered that the <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Prof. Darryl C. Wilson, Esq., Panelist
Dated: May 20, 2010

 

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