Fitness Anywhere, Inc. v. Jose Gomes
Claim Number: FA1007001333903
Complainant is Fitness
Anywhere, Inc. (“Complainant”), represented by Omid A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 7, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@fitnessanywhereshop.com, postmaster@fitnessanywhereshop.info, postmaster@trx-fitnessanyplace.info, postmaster@trxfitness-shops.info, postmaster@trxfitnessanysite.com, postmaster@trxshops.com, and postmaster@trxshops.info by e-mail. Also on July 8, 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 August 5, 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 "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 <fitnessanywhereshop.com> and <fitnessanywhereshop.info> domain names are confusingly similar to Complainant’s FITNESS ANYWHERE mark.
Respondent’s <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names.
3. Respondent registered and used the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its TRX (e.g., Reg. No. 3,202,696 issued January 23, 2007) and FITNESS ANYWHERE marks (e.g., Reg. No. 2,975,844 issued July 26, 2005) in connection with exercise devices and instructional services.
Respondent, Jose Gomes, registered the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names no earlier than June 22, 2010. The disputed domain names resolve to websites that sell counterfeit versions of Complainant’s exercise products and also requests Internet users to create a profile so that Respondent’s can phish for consumer information.
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 holds trademark registrations with the USPTO for its TRX (e.g., Reg. No. 3,202,696 issued January 23, 2007) and FITNESS ANYWHERE marks (e.g., Reg. No. 2,975,844 issued July 26, 2005). The Panel finds Complainant’s trademark registrations with the USPTO are sufficient to establish rights under Policy ¶ 4(a)(i) in Complainant’s TRX and FITNESS ANYWHERE marks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that Respondent’s <fitnessanywhereshop.com> and <fitnessanywhereshop.info>
domain names are confusingly similar to Complainant’s FITNESS ANYWHERE
mark. The disputed domain names contain
Complainant’s entire FITNESS ANYWHERE mark after removing the space that
separates the terms of the mark. The
disputed domain names further add the generic term “shop” and the generic
top-level domain (“gTLD”) “.com” or “.info.”
The Panel finds the removal of a space, the addition of a generic term,
and the addition of a gTLD fail to adequately distinguish the disputed domain
names from Complainant’s mark. See Bond & Co. Jewelers, Inc. v.
Complainant further alleges that Respondent’s <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names are confusingly similar to Complainant’s TRX mark. All of the disputed domain names contain Complainant’s TRX mark in its entirety. The <trx-fitnessanyplace.info> and <trxfitness-shops.info> domain names add a hyphen to Complainant’s mark. All of the disputed domain names add the descriptive term “fitness” or the generic terms “place,” “shops,” any,” or “site.” The disputed domain names also append the gTLDs “.com” or “.info” to Complainant’s TRX mark. The Panel determines that Respondent’s addition of a hyphen, the addition of descriptive or generic terms, and the addition of a gTLD all fail to sufficiently distinguish the disputed domain names from Complainant’s mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names are confusingly similar to Complainant’s TRX mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See 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); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The WHOIS information identifies the domain name registrant as “Jose Gomes,” which the Panel determines is not similar to any of the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names. Complainant asserts that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Complainant further argues that Respondent is not permitted to use Complainant’s TRX and FITNESS ANYWHERE marks. Respondent has failed to present any evidence in support of a finding that Respondent is commonly known by the disputed domain names and the Panel fails to find such evidence anywhere in the record. Consequently, the Panel determines that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
According to Complainant, Respondent’s disputed domain names
all resolve to websites that sell counterfeit versions of Complainant’s
exercise equipment. Complainant contends
that the resolving websites also attempt to phish for Internet users’ personal
data. Complainant provides screen shots
of a webpage requesting Internet users to log-in or sign-up for a user profile
in order to receive free shipping. The
screen shots also show an extensive use of Complainant’s TRX and FITNESS
ANYWHERE marks throughout the resolving websites. The Panel finds Respondent’s use of the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>,
<trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>,
and <trxshops.info> domain names does not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain names pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has engaged in a pattern of registering trademark-related domain names in bad faith by registering the seven disputed domain names incorporating Complainant’s TRX and FITNESS ANYWHERE marks. The Panel finds Respondent has engaged in such a pattern of bad faith registration and use due to Respondent’s registration of the instant <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names pursuant to Policy ¶ 4(b)(ii). See 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.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Respondent uses the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names to resolve to websites that sell counterfeit versions of Complainant’s exercise equipment. Internet users interested in Complainant’s exercise equipment and searching for Complainant’s websites, may instead encounter Respondent’s websites due to Respondent’s confusingly similar disputed domain names. Complainant’s business is disrupted by Internet users who purchase Respondent’s counterfeit versions of Complainant’s exercise equipment instead of purchasing Complainant’s actual products. The Panel finds Respondent’s use of the confusingly similar disputed domain names causes this disruption of Complainant’s business, which constitutes bad faith registration and use 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).”).
The Panel infers that Respondent commercially benefits from its sale of the counterfeit versions of Complainants’ exercise equipment found on the websites resolving from the disputed domain names. The Panel further presumes that Respondent commercially benefits in some way from the personal information gained by Respondent from the user name sign-up featured at the resolving websites. Respondent utilizes Complainant’s TRX and FITNESS ANYWHERE marks extensively on the websites, which, coupled with the confusingly similar disputed domain names, creates confusion among Internet users as to Complainant’s sponsorship of the disputed domain names and resolving websites. The Panel finds that Respondent is attempting to profit off of Internet users’ confusion, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Complainant claims that Respondent is using the <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names as part of a phishing scheme in order to gain personal consumer information about Complainant’s potential customers. The Panel finds Respondent’s use of the disputed domain names to attempt to phish for Internet users’ personal information constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel finds 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 <fitnessanywhereshop.com>, <fitnessanywhereshop.info>, <trx-fitnessanyplace.info>, <trxfitness-shops.info>, <trxfitnessanysite.com>, <trxshops.com>, and <trxshops.info> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 9, 2010
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