Fitness Anywhere, Inc. v. Private Registration
Claim Number: FA1102001372344
Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is Private Registration (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.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.
Honorable Karl V. Fink (Ret.) 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 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@trxcentral.com, postmaster@trxspot.com, postmaster@trxtrainershop.com, and postmaster@trxtrainerstore.com. Also on February 24, 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 21, 2011, 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 (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names.
3. Respondent registered and used the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., uses the TRX mark for exercise devices and exercise instructional services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRX mark (e.g., Reg. No. 3,202,696 issued January 23, 2007).
Respondent registered the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names on December 25, 2010. The disputed domain names resolve to websites that sell counterfeit versions of Complainant’s TRX products.
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 claims rights in the TRX mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,202,696 issued January 23, 2007). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the TRX mark pursuant to Policy ¶ 4(a)(i). See 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 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.”). Furthermore, the Panel finds it is irrelevant whether Complainant holds a trademark registration for the TRX mark with the trademark authority in the country in which Respondent resides. See 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).
Complainant avers the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names are confusingly similar to its TRX mark. Respondent fully incorporates Complainant’s mark in the disputed domain names and then merely attaches the following generic terms to the mark: “central,” “spot,” “trainer,” “shop,” and “store.” Respondent also affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names. The Panel finds the addition of generic terms and a gTLD to another’s mark fails to sufficiently distinguish a domain name from the mark. See 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 Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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 holds Respondent’s <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names are confusingly similar to Complainant’s TRX mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first show Respondent lacks rights and legitimate interests in the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 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.”). Despite Respondent’s failure to respond, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts it has not given Respondent permission or license to use its TRX mark. Additionally, the WHOIS registrant information does not indicate that Respondent is commonly known by the disputed domain names. Therefore, without evidence to the contrary, the Panel finds Respondent is not commonly known by the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names under Policy ¶ 4(c)(ii). See 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); 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).
Complainant submits screen shots of the websites resolving from the disputed domain names. These images show webpages that contain pictures of Complainant’s TRX exercise product next to information about the “FitnessAnywhere TRX Suspension Trainer Pro Pack P2 w/Door Anchor.” Complainant contends Respondent uses the disputed domain names to sell counterfeit replica of its official products. The Panel finds that Respondent uses the disputed domain names in an attempt to pass itself off as Complainant’s official website. Furthermore, the Panel finds Respondent uses the disputed domain names to offer counterfeit versions of Complainant’s exercise product for sale. Accordingly, the Panel finds Respondent does not use the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names to make 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent uses the disputed domain names to redirect Internet users seeking Complainant’s products to its competing websites. As a result, the Panel finds that Respondent’s domain names disrupt Complainant’s business, which constitutes registration and use 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).”).
As previously discussed, Respondent attempts to profit from the sale of counterfeit versions of Complainant’s goods. Respondent also prominently features Complainant’s mark on its resolving websites. Moreover, Respondent’s <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names are confusingly similar to Complainant’s TRX mark. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or a product on these sites. Accordingly, the Panel finds this behavior provides additional evidence of registration and use in bad faith pursuant to 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Finally, the Panel finds Respondent’s attempts to use the disputed domain names to pass itself off as Complainant provide further evidence of Respondent’s registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trxcentral.com>, <trxspot.com>, <trxtrainershop.com>, and <trxtrainerstore.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 25, 2011
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