national arbitration forum

 

DECISION

 

Fitness Anywhere, Inc. v. Fitness Angwhere

Claim Number: FA1006001330909

 

PARTIES

Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid A. Mantashi, California, USA.  Respondent is Fitness Angwhere (“Respondent”), Idaho, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <trxfitnessanywhere.com> and <trxfitnessanyhere.com>, registered with GoDaddy.com, Inc.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 21, 2010.

 

On Jun 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@trxfitnessanywhere.com and postmaster@trxfitnessanyhere.com.  Also on June 23, 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 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <trxfitnessanywhere.com> and <trxfitnessanyhere.com> 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 <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names.

 

3.      Respondent registered and used the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Fitness Anywhere, Inc., has registered its TRX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,202,696 issued January 23, 2007) and its FITNESS ANYWHERE mark with the USPTO (Reg. No. 2,975,844 issued July 26, 2005).  Complainant uses the marks in connection with exercise devices and fitness regimes.  Additionally, Complainant provides consumer information and ecommerce services for the advertising, offering for sale, and sale of its products through its official website resolving from the <fitnessanywhere.com> domain name

 

Respondent, Fitness Angwhere, registered the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names in May of 2010. The disputed domain names both resolve to a website that offers counterfeit products of Complainant’s goods.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts it has rights in its TRX mark due to its registration with the USPTO (Reg. No. 3,202,696 issued January 23, 2007) and its FITNESS ANYWHERE mark due to its registration with the USPTO (Reg. No. 2,975,844 issued July 26, 2005).  The Panel finds that trademark registration with the USPTO establishes Complainant’s rights in the TRX and FITNESS ANYWHERE marks for the purpose of Policy ¶ 4(a)(i).  See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also 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).”).

 

Complainant alleges that Respondent’s <trxfitnessanywhere.com> domain name is confusingly similar to Complainant’s marks.  Complainant argues that Respondent’s disputed domain name combines both of its marks in their entirety, removes the space between terms of the FITNESS ANYWHERE mark, and adds a generic top-level domain (“gTLD”); arguing these are minor alterations to Complainant’s marks when creating a domain name.  Complainant contends that these alterations are not enough to distinguish the disputed domain name from its marks 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 G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); 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); see also W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding that the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance).  The Panel finds that Respondent’s <trxfitnessanywhere.com> domain name is made up of such minor alterations to Complainant’s marks that it is confusingly similar pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <trxfitnessanyhere.com> domain name is also alleged by Complainant to be confusingly similar to its TRX and FITNESS ANYWHERE marks.  In addition to combining Complainant’s marks, removing the space between terms of the FITNESS ANYWHERE mark, and adding a gTLD, Respondent’s disputed domain name removes the letter “w” from Complainant’s FITNESS ANYWHERE mark.  Complainant contends that these alterations do not distinguish Respondent’s disputed domain name from Complainant’s marks.  See Nintendo of Am. Inc. v. Pokemon, supra; see also G.D. Searle & Co. v. Paramount Mktg., supra; see also U.S. News & World Report, Inc. v. Zhongqi, supra; see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., supra; see also Trip Network Inc. v. Alviera, supra; see also W. Union Holdings, Inc. v. XYZ; see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter).  The Panel finds that Respondent’s <trxfitnessanyhere.com> domain name is not distinguished from Complainant’s marks and therefore is confusingly similar to the marks pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of these allegations, the burden shifts to the Respondent to establish that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case in support of its Complaint, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant asserts Respondent is not licensed or otherwise authorized to use the TRX and FITNESS ANYWHERE marks. The WHOIS information for the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names identifies “Fitness Angwhere” as the registrant. Respondent has not offered evidence, nor is there evidence in the record, that Respondent is commonly known by the disputed domain names.  Without affirmative evidence, the Panel finds that Respondent appears to be, but is not, commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).

 

Respondent’s disputed domain names each resolve to a website that resells the exercise products Complainant offers under its mark and presumably offers counterfeit versions of the products Complainant offers under its mark.  The Panel finds that Respondent’s use of the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

Complainant asserts that Respondent’s disputed domain names both resolve to a website that contains Complainant’s marks and logos, includes information on Complainant’s tension and suspension exercise products, and displays replicas of Complainant’s product images related to its marks. The Panel finds that Respondent is attempting to pass itself off as Complainant, which does not reflect Respondent’s rights or legitimate interests in the disputed domain name under 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

.

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent uses the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names to offer counterfeit versions of Complainant’s suspension exercise products. The Panel finds Respondent’s registration and use of the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4 (b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Internet users, searching for Complainant’s products, will be confused by the disputed domain names when they resolve to a web site that includes Complainant’s TRX and FITNESS ANYWHERE marks, pictures, and descriptions of the goods related to Complainant’s marks, and offers discount online sales of Complainant’s products.  Complainant further asserts that Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain names 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 <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

Complainant alleges that Respondent has a prior relationship with Complainant and that Respondent thereby has actual and constructive knowledge of the TRX and FITNESS ANYWHERE marks.  Previous panels have determined that registering and using domain names with knowledge of a complainant’s marks constitutes bad faith under Policy ¶ 4(b)(iv).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy

 

Lastly, Complainant contends that Respondent is using the <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names to pass itself off as Complainant by resolving to a website that contains Complainant’s marks, and displays replicas of Complainant’s product images related to its marks. The Panel finds Respondent’s attempt to pass itself off as Complainant constitutes bad faith and registration pursuant to Policy ¶ 4(a)(iii).  See 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); see also 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).

 

The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(iii).

 

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 <trxfitnessanywhere.com> and <trxfitnessanyhere.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  July 20, 2010

 

 

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