Fitness Anywhere, Inc. v. Domain Privacy
Claim Number: FA1102001372341
Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is Domain Privacy (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trxsuspensioncenter.com>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2011; the National Arbitration Forum received payment on February 10, 2011.
On February 11, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trxsuspensioncenter.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant 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 February 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2011 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@trxsuspensioncenter.com. Also on February 15, 2011, 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 March 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trxsuspensioncenter.com> domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks.
2. Respondent does not have any rights or legitimate interests in the <trxsuspensioncenter.com> domain name.
3. Respondent registered and used the <trxsuspensioncenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., owns the TRX and SUSPENSION TRAINING marks. Complainant has used these marks since 2005 in connection with its exercise devices and physical exercise instructional services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRX mark (e.g., Reg. No. 3202696 issued January 23, 2007) and for the SUSPENSION TRAINING mark (e.g., Reg. No. 3255160 issued June 26, 2007).
Respondent registered the <trxsuspensioncenter.com> domain name on October 5, 2010. Respondent uses the disputed domain name to resolve to a website offering counterfeit replications of Complainant’s exercise equipment and instructional services.
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 contends that it has demonstrated rights in its TRX and SUSPENSION TRAINING marks. Previously, panels have decided that a complainant can establish rights in a mark through registration with a federal trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Complainant only needs to demonstrate registration in some jurisdiction and is not required to register its mark within the country of Respondent’s location. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant holds trademark registrations with the USPTO for both its TRX mark (e.g., Reg. No. 3202696 issued January 23, 2007) and its SUSPENSION TRAINING mark (e.g., Reg. No. 3255160 issued June 26, 2007). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant has established its rights in the TRX and SUSPENSION TRAINING marks through federal trademark registration.
Complainant asserts that Respondent’s <trxsuspensioncenter.com> domain name is confusingly similar to its TRX and SUSPENSION TRAINING marks. The disputed domain name combines both marks and differs merely by deleting the word “training”, adding the generic top-level domain (“gTLD”) “.com,” and adding the generic word “center.” The Panel finds that the combination of marks is insufficient to avoid a finding of confusing similarity. 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). The Panel also finds that deleting a word of the mark does not adequately distinguish the disputed domain name from Complainant’s mark. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Finally, the Panel determines that the addition of a generic word and a gTLD do not help to avoid a finding of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) Thus, the Panel concludes that Respondent’s <trxsuspensioncenter.com> domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent does not have any rights or legitimate interests in the <trxsuspensioncenter.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel said, “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.” Complainant has produced a prima facie showing in support of its claims against Respondent. Since Respondent failed to submit a response to the Complaint and address Complainant’s allegations, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to look to the record in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <trxsuspensioncenter.com> domain name. The WHOIS information identifies Respondent as “Domain Privacy,” which is not similar to the disputed domain name. Complainant further contends that Respondent has no relationship or association with Complainant that would authorize its use of Complainant’s marks within the disputed domain name. The Panel, therefore, concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), since no information in the record provides a basis for finding it is commonly known by the <trxsuspensioncenter.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Respondent’s disputed domain name redirects Internet users to its own website in order to sell counterfeit replicas of Complainant’s exercise products. The Panel finds that Respondent’s misdirection of Internet traffic to its own site for the purpose of selling counterfeit goods in competition with Complainant 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 Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant maintains that Respondent’s use of the <trxsuspensioncenter.com> domain name disrupts its business. Customers intending to purchase Complainant’s exercise equipment and instructional services might discover Respondent’s website instead because of the confusingly similar disputed domain name. Customers might then purchase the counterfeit goods and services from Respondent as a result. Complainant also argues that due to Respondent’s use of the disputed domain name, it has been deprived of an opportunity to register the domain name corresponding to its trademarks, thereby placing Complainant at a further competitive disadvantage. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit replicas of Complainant’s exercise goods does disrupt Complainant’s business, which is evidence of bad faith use and registration according to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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).”).
Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s exercise equipment and related services. The Panel infers that Respondent likely profits from these sales. Internet users searching for Complainant online might find Respondent’s resolving website and become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, website, and products sold. Respondent works to commercially gain from this confusion by receiving profits from items sold on its website. The Panel finds that Respondent’s use of the <trxsuspensioncenter.com> domain name is further evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trxsuspensioncenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 21, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page