Fitness Anywhere, Inc. v. 8288234 234343
Claim Number: FA1006001330904
Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid
A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2010.
On June 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name(s). 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 June 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@trx-fitnessanywhere.com and postmaster@trx-fitnessanywhere.net. Also on June 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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" 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net> domain names are confusingly similar to Complainant’s TRX and FITNESS ANYWHERE marks.
2. Respondent does not have any rights or legitimate interests in the <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net> domain names.
3. Respondent registered and used the <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness
Anywhere, Inc., provides exercise devices
and fitness regimens. Complainant holds
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the TRX mark (e.g.,
Reg. No. 3,202,696 registered on January 23, 2007). Complainant also holds trademark registrations
with the USPTO for the FITNESS ANYWHERE mark (e.g., Reg. No. 2,975,844 registered on July 26, 2005).
Respondent registered both the <trx-fitnessanywhere.com> and the <trx-fitnessanywhere.net> domain names on June 1, 2010. The disputed domain names resolve to a website that prominently displays Complainant’s marks and logo. The resolving website also purports to offer Complainant’s product for sale.
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 asserts rights in the TRX mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,202,696 registered on
January 23, 2007). Complainant also
asserts rights in the FITNESS ANYWHERE mark through its registrations of the
mark with the USPTO (e.g., Reg. No.
2,975,844 registered on July 26, 2005).
The Panel finds these registrations sufficiently establish Complainant’s
rights in the TRX and FITNESS ANYWHERE marks pursuant to Policy ¶ 4(a)(i). See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also
Complainant avers Respondent’s <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net>
domain names are confusingly similar to its TRX and FITNESS ANYWHERE
marks. Respondent fully incorporates
both of Complainant’s marks in the disputed domain names. Respondent also inserts a hyphen between
Complainant’s marks and affixes the generic top-level domain (“gTLD”) “.com” or
“.net” to the marks in the disputed domain names. The Panel finds combining two marks, adding
punctuation, and affixing a gTLD do not sufficiently distinguish Respondent’s
disputed domain names from Complainant’s marks.
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 Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb.
Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is
irrelevant in the determination of confusing similarity pursuant to Policy ¶
4(a)(i).”); see also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar). Accordingly, the Panel finds Respondent’s <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net>
domain names are confusingly similar to Complainant’s TRX and FITNESS ANYWHERE
marks under Policy ¶ 4(a)(i).
The Panel finds Complainant
has satisfied Policy ¶ 4(a)(i).
Complainant must first show Respondent lacks rights and legitimate interests in the disputed domain names. After Complainant establishes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. Prior Panels have interpreted Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests in a domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent did not respond, the Panel will review the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states it has not authorized Respondent to use its marks in a domain name. Additionally, the WHOIS information lists “8288234 234343” as the registrant of the disputed domain names. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent’s <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net>
domain names resolve to a website that offers a replica of
Complainant’s exercise product. Screen
shots of Respondent’s website show Complainant’s TRX mark and logo prominently
displayed throughout the site. The
website also provides images of what Respondent purports to be Complainant’s
product. The Panel finds Respondent’s
use of the disputed domain names to offer counterfeit goods for sale 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 Hewlett-Packard Co. v. Inversiones HP Milenium
Complainant also contends Respondent’s resolving website imitates Complainant’s official website. Complainant argues that Respondent’s website copies Complainant’s advertising copywriting and images. In addition, Respondent’s site prominently displays Complainant’s marks and replicas of its products. The Panel finds Respondent’s attempt to pass itself off as Complainant provides further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Complainant
has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s disputed domain names divert Internet users seeking Complainant’s product to Respondent’s competing website. Therefore, the Panel finds this behavior disrupts Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
The Panel also infers that Respondent uses the <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net>
domain names to attract Internet users to its website so that it can profit
from the sale of counterfeit versions of Complainant’s product. Therefore, the Panel finds Respondent’s
attempt to use the disputed domain names to create confusion as to
Complainant’s sponsorship or affiliation of Respondent’s website and products
is additional evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Hewlett-Packard
Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its
domain name] to benefit from the goodwill associated with Complainant’s HP
marks and us[ed] the <hpdubai.com> domain name, in part, to provide
products similar to those of Complainant.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie
Assoc. S.p.A. v. C & M, D2003-0159
(WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products,
together with the domain name may create the (incorrect) impression that
Respondent is either the exclusive distributor or a subsidiary of Complainant,
or at the very least that Complainant has approved its use of the domain
name.”).
Finally, the Panel finds Respondent’s attempt to pass itself off as Complainant also supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds Complainant
has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trx-fitnessanywhere.com> and <trx-fitnessanywhere.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 21, 2010
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