national arbitration forum

 

DECISION

 

McCormack Intellectual Property Business Law PLLC, d/b/a Lopez USA, d/b/a Fit 360 v. Hu Yanlin

Claim Number: FA1009001346204

 

PARTIES

Complainant is McCormack Intellectual Property Business Law PLLC, d/b/a Lopez USA, d/b/a Fit 360 ("Complainant"), represented by Tim McCormack of McCormack Intellectual Property Business Law PLLC, d/b/a Lopez USA, d/b/a Fit 360, Washington, USA.  Respondent is Steve Black ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fit360.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.

 

Richard DiSalle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2010; the National Arbitration Forum received payment on September 14, 2010.

 

On September 15, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fit360.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current holder of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 20, 2010, a revised Complaint was received.

 

On September 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@fit360.com.  Also on September 21, 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.

 

A timely Response was received and determined to be complete on October 11, 2010.

 

Complainant’s Additional Submission was received on October 18, 2010 in compliance with Supplemental Rule 7.

 

On October 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

            <fit360.com> is identical to Mr. McCormack’s properly registered trademark. There is nothing in the <fit360.com> to distinguish it from Mr. McCormack’s registered FIT 360 trademark. They are exactly the same. McCormack Intellectual Property Business Law PLLC, d/b/a Lopez USA, d/b/a Fit360, owns the trademark FIT 360.  As of the date of this complaint, <fit360.com>, for which Hu Yanlin is the registrant, automatically redirects to <fitsavers.com>. <fitsavers.com> is registered through <godaddy.com>. The registrant for <fitsavers.com> is listed as “Apex”, and Steve Black is listed as the administrative contact. The trademark for FIT 360 was filed on October 3, 2002.  It was first used in commerce on October 1, 2003, as a prerecorded video cassette and DVD featuring exercise instruction. The domain name, <fit360.com>, and the mark were printed on the packaging as a trademark on the FIT 360 cassettes and DVDs. Respondent’s website, <fit360.com>, automatically directs to <fitsavers.com>. <fitsavers.com> has no rights to, or legitimate interests in, FIT 360 or <fit360.com>. The domain <fit360.com> was registered in bad faith. Mr. Yanlin was not making use of the domain name in connection with a bona fide offering of goods or services. Additionally, Mr. Yanlin has not been commonly known by the domain name and has never acquired trademark or service mark rights.  As the registered owner of the <fit360.com> domain name, Mr. Steven Black of APEX redirected <fit360.com> to <fitsavers.com>. The <fitsavers.com> website offers for sale fitness and nutritional plans. By redirecting the <fit360.com> domain name, APEX has intentionally attempted to attract, for commercial gain, internet users to the <fitsavers.com> website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of <fitsavers.com>. In light of the above, <fit360.com> should be considered as having been registered in bad faith. On February 17, 2010, Mr. McCormack sent a cease and desist letter to Hu Yanlin, Domains by Proxy, Inc., and Steven Black, informing them that he was the owner of the U.S. Rights in trademark.  On March 12, 2010, Steven Bean, attorney for Steven Black, responded to Mr. McCormack’s letter denying trademark infringement and cybersquatting. In his letter, Steven Black’s attorney acknowledged that his client personally owned <fit360.com>. Steven Black’s attorney stated that his client had no intention of relinquishing the domain name to Mr. McCormack or anyone else.

 

B. Respondent

 

“Fit360.com does not belong to me anymore.  I believe fit360.com is a common and general domain name, and the request by the Complainant should be denied.  The Complainant does not even have the exclusive right in “fit 360”, and he does not own “fit360” in the USA.  I request the Panelist to investigate whether there is a reverse domain name hijacking.  The domain fit360.com was sold via Sedo.co.uk in March, 2009 after that I had no connection with the new owner Steve Black 1922 W 700 So Orem, UT  84058 United States”

 

C. Additional Submissions

 

An additional submission was timely filed on October 18, 2010 and was considered by the Panel.  Its contentions are reflected by Complainant in this decision, which was influenced by it to some extent. 

 

D.

Steve Black has not filed a response in these proceedings.

 

FINDINGS

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.

 

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."

 

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 original Respondent contends that he is not the correct Respondent and requests that his name be withdrawn from this case.  He argues that Steve Black is the correct owner of the disputed domain name as of March 2009 when the domain name was sold to Steve Black.  He requests that the Panel not list his name in the WHOIS or within this case because he is not the correct owner of the domain name.  The Panel chooses to redact the original Respondent’s personal information from the decision to preclude his further involvement.  Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005).

 

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence that shows it owns a trademark registrations with the United States Patent and Trademark Office ("USPTO") for its FIT 360 mark (Reg. No. 3,044,243 filed October 3, 2002; issued January 17, 2006). Therefore, the Panel finds that Complainant has established rights in its FIT 360 mark that date back to its original filing date with the USPTO of October 3, 2002.  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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001).

 

The <fit360.com> domain name is identical to Complainant’s FIT 360 mark under Policy ¶ 4(a)(i).  The Panel notes that the disputed domain name contains Complainant’s mark entirely while deleting the space between the terms of the mark and adding the generic top-level domain (“gTLD”) “.com.”  Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001).

 

Rights and Legitimate Interests

 

Respondent is not commonly known by the disputed domain name and has not acquired trademark or service mark rights in the name.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006).  Respondent is using the disputed domain name to resolve to a third-party website located at <fitsavers.com>.  Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services.  The Panel finds Complainant does provide screen-shot evidence to show that Respondent presented a picture of Complainant’s workout DVD on the previous registrar website with a link that allowed Internet users to make an offer to purchase the disputed domain name.  Offering the domain name for sale while using a picture of Complainant’s products to market such a sale is not an offering of goods or services.

 

Registration and Use in Bad Faith

 

Respondent registered the domain name for the purpose of selling it to Complainant or any Internet user that made an offer for it.  Such use of an identical domain name is evidence of bad faith registration and use.  The Panel finds that Respondent’s offer to sell the disputed domain name through Respondent’s previous registrar is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

 

DECISION

The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <fit360.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Richard DiSalle, Panelist

Dated:  November 4, 2010

 


 

 

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