Fitness Anywhere, Inc. v. Banner Frend
Claim Number: FA1006001330918
Complainant is Fitness
Anywhere, Inc. (“Complainant”), represented by Omid A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <trxfitnessanywhere.info> and <trx-fitnessanywhere.info>, registered with Godaddy.com, 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.
Honorable Karl V. Fink (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 <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> 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 July 13, 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.info and postmaster@trx-fitnessanywhere.info by e-mail. 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 Honorable Karl V. Fink (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 "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 <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> 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.info> and <trx-fitnessanywhere.info> domain names.
3. Respondent registered and used the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., is a developer and supplier of exercise devices and fitness regimens. Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its TRX (e.g., Reg. No. 3,202,696 issued Jan. 23, 2007) and FITNESS ANYWHERE marks (e.g., Reg. No. 2,975,844 issued July 26, 2005).
Respondent, Banner Frend, registered the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names on June 7, 2010 and June 8, 2010 respectively. Respondent’s disputed domain names resolve to websites that mimic Complainant’s website and offer unauthorized counterfeit and replica products of Complainant 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.
The Panel finds that Complainant has established rights in its TRX (e.g., Reg. No. 3,202,696 issued Jan. 23, 2007) and FITNESS ANYWHERE marks (e.g., Reg. No. 2,975,844 issued July 26, 2005) under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names are confusingly similar to Complainant’s TRX and FITNESS ANYWHERE marks. Complainant argues that by combining its TRX and FITNESS ANYWHERE marks, while deleting the space between the terms of the latter, and adding a hyphen and the generic top-level domain (“gTLD”) “.info” that Respondent has not created domain names that are distinct from Complainant’s marks. The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s 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. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the domain name to be confusingly similar where <e-viagra-xenical-celebrex-propecia.com> merely includes the addition of related industry-specific words, namely, the marks of the complainant’s competitors); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights and legitimate interests in the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it holds rights and interests in the disputed domain names. 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 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.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights and legitimate interests in the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names. See 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.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use its marks. The WHOIS information identifies “Banner Frend” as the registrant of the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names and there is no further evidence on record that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names for purposes of 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 known by the disputed domain name); see also 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).
Complainant alleges that Respondent is using the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info>
domain names to resolve to a site that is identical to Complainant’s official
website. Further, Complainant contends
that Respondent is selling unauthorized counterfeit and replica exercise
equipment under Complainant’s TRX and FITNESS ANYWHERE marks. Complainant argues that Respondent is passing
itself off as Complainant for financial gain, and that such use is not a bona fide offering of goods or services
or a legitimate noncommercial or fair use.
The Panel finds that Respondent’s use of the disputed domain names to
pass itself off as Complainant and profit from the sale of replica and
counterfeit goods purporting to be Complainant’s products 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 Kmart of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info>
domain names to divert Internet users seeking Complainant’s exercise and
fitness products and services to Respondent’s websites that offer unauthorized
counterfeit and replica products of Complainant. Complainant argues that Respondent’s
diversion results in a disruption of Complainant’s business. The Panel agrees and finds that Respondent’s
use of the disputed domain names is a disruption of Complainant’s online
business and is evidence that Respondent registered and is using the disputed
domain names in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23,
2000) (transferring the <fossilwatch.com> domain name from the
respondent, a watch dealer not otherwise authorized to sell the complainant’s
goods, to the complainant); 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 argues that
Respondent is using the disputed domain names to confuse Internet users into
believing they are purchasing products from Complainant. Further, Complainant contends that Respondent
is selling counterfeit and replica products of Complainant without
authorization to do so. Complainant also
alleges that such use is further evidence of Respondent’s bad faith
registration and use of the <trxfitnessanywhere.info> and <trx-fitnessanywhere.info>
domain names under Policy ¶ 4(b)(iv). The Panel finds that Respondent is using the
disputed domain names to intentionally attract and confuse Internet users into
believing they are purchasing products from Complainant for commercial gain and
that such use is further evidence of Respondent’s bad faith registration and
use of the domain names under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb.
Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed
domain name to sell the complainant’s products without permission and mislead
Internet users by implying that the respondent was affiliated with the
complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by
displaying the complainant’s mark on its website and offering identical
services as those offered by the complainant); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
The Panel finds that 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 <trxfitnessanywhere.info> and <trx-fitnessanywhere.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 27, 2010
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