Fitness Anywhere, Inc. v. Bleue Clieres
Claim Number: FA1007001333904
Complainant is Fitness
Anywhere, Inc. (“Complainant”), represented by Omid A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info>, registered with GoDaddy.com Inc. (R171-LRMS).
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 7, 2010, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names are registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the names. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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@trx-fitness-anywhere.info, postmaster@trxfitness-anywhere.info, postmaster@trxfitness-shop.info, postmaster@trxfitness.info, postmaster@trxfitnessanyplace.info, and postmaster@trxfitnessshop.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 Tyrus R. Atkinson, Jr., 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 <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names.
3. Respondent registered and used the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., designs, markets, and sells exercise equipment and exercise instructional services under its TRX mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its TRX mark (e.g., Reg. No. 3,202,696 issued January 23, 2007).
Respondent, Bleue Clieres, registered the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names no earlier than June 15, 2010. The disputed domain names resolve to websites that sell counterfeit versions of Complainant’s exercise equipment and exercise instructional services. The websites resolving from the disputed domain names also request personal information from Internet users when requesting Internet users to sign-up for usernames.
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.
Previous panels have found that a federal trademark registration establishes rights in a complainant’s mark for Policy ¶ 4(a)(i) purposes. Complainant holds multiple trademark registrations with the USPTO for its TRX mark (e.g., Reg. No. 3,202,696 issued January 23, 2007). Therefore, the Panel finds that Complainant has established rights in its TRX mark 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that Respondent’s <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>,
<trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info>
domain names are confusingly similar to Complainant’s TRX mark. Respondent incorporates Complainant’s entire
TRX mark into all of the disputed domain names.
Respondent adds a hyphen to Complainant’s mark in the <trx-fitness-anywhere.info>
and <trxfitness-anywhere.info>
domain names. Respondent further adds
the descriptive terms “fitness” and “anywhere” or the generic terms “shop” or
“anyplace.” The terms “fitness” and
“anywhere” are terms in Complainant’s ANYTIME FITNESS mark that Complainant
uses to promote its other exercise equipment and exercise instructional
services. All of the disputed domain
names further contain the generic top-level domain (“gTLD”) “.info.” The Panel determines the addition of a
hyphen, the addition of a descriptive or generic term, and the addition of a
gTLD all fail to sufficiently distinguish the disputed domain name from
Complainant’s mark. See Health Devices Corp. v.
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 <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.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.”).
Complainant claims that Respondent is not commonly known by its <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names. Complainant asserts that Respondent is not authorized or licensed to use Complainant’s TRX mark. Complainant further contends that Respondent is not affiliated with Complainant. The WHOIS information identifies the domain name registrant as “Bleue Clieres,” which the Panel finds is not similar to the disputed domain names. As Respondent has failed to present any evidence that would allow the Panel to find that Respondent is commonly known by the disputed domain names, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii) based on the evidence in the record. See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to resolve to
websites that feature counterfeit versions of Complainant’s exercise products
and services. The resolving websites
also request personal information from Internet users in the form of asking
Internet users to sign-up and create a username. Respondent utilizes Complainant’s TRX mark
extensively on the resolving websites.
The Panel determines Respondent’s use of the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>,
<trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info>
domain names is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Hewlett-Packard Co. v.
Inversiones HP Milenium
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered six domain names incorporating Complainant’s TRX mark. Complainant contends that this constitutes a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). The Panel agrees, and finds Respondent’s registration and use of the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names constitutes bad faith registration and use under 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 EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Respondent sells counterfeit versions of Complainant’s TRX exercise equipment and instructional services on the websites resolving from the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names. Since Respondent is selling counterfeit versions of Complainant’s products, Respondent becomes a competitor of Complainant as Internet users may purchase Respondent’s counterfeit exercise products instead of Complainant’s products. Therefore, Respondent is a competitor of Complainant using confusingly similar domain names. The Panel finds Respondent’s use of the disputed domain names disrupts Complainant’s business, which constitutes bad faith registration and use pursuant to 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
The Panel presumes that Respondent profits from its use of the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names. Respondent likely receives click-through fees from the aforementioned hyperlinks and also likely commercially benefits in some way from the personal information Respondent attempts to receive from Internet users. Respondent prominently displays Complainant’s TRX mark throughout the resolving websites. Due to Respondent’s use of the confusingly similar disputed domain names, Complainant’s TRX mark, and counterfeit versions of Complainant’s products, Internet users will likely become confused as to Complainant’s affiliation with and sponsorship of the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names and resolving websites. The Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant alleges that Respondent attempts to phish for
the personal information of Internet users.
Complainant provides screen shots of the websites resolving from the <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>,
<trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info>
domain names. The screen shots show a
membership log-in and sign-up page that offer discounts to Internet users that
sign up. Complainant argues that
Internet users are asked to provide personal information that Respondent
intends to use for Respondent’s commercial benefit. The Panel finds Respondent’s use of the
disputed domain names for this purpose constitutes bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Juno
Online Servs., Inc. v. Nelson, FA 241972 (Nat.
Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was
registered and used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v.
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 <trx-fitness-anywhere.info>, <trxfitness-anywhere.info>, <trxfitness-shop.info>, <trxfitness.info>, <trxfitnessanyplace.info>, and <trxfitnessshop.info> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 12, 2010
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