Fitness Anywhere LLC v. Sha hao aka Simon onil aka ilia Mcgee
Claim Number: FA1105001390206
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is Sha hao a/k/a Simon onil a/k/a ilia Mcgee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheaptrx.org>, <trxonsale.com>, <cheaptrxsuspension.com>, <cheaptrxshop.com>, <trxsuspensiononsale.com>, and <trxsuspensiontrainers.org>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2011; the National Arbitration Forum received payment on May 23, 2011.
On May 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cheaptrx.org>, <trxonsale.com>, <cheaptrxsuspension.com>, <cheaptrxshop.com>, <trxsuspensiononsale.com>, and <trxsuspensiontrainers.org> 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 May 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@cheaptrx.org, postmaster@trxonsale.com, postmaster@cheaptrxsuspension.com, postmaster@cheaptrxshop.com, postmaster@trxsuspensiononsale.com, and postmaster@trxsuspensiontrainers.org. Also on May 26, 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.
A timely Response was received and determined to be complete on June 2, 2011.
On June 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <cheaptrx.org>, <trxonsale.com>, <cheaptrxsuspension.com>, <cheaptrxshop.com>, <trxsuspensiononsale.com>, and <trxsuspensiontrainers.org>, (collectively the “disputed domain names”) domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent disputes Complainant’s allegations.
Complainant, Fitness Anywhere, LLC, is engaged in the business of selling and marketing physical exercise instructional services and exercise devices. Complainant registered its TRX (e.g., Reg. No. 3,202,696 issued January 23, 2007 for exercise devices; Reg. No. 3,384,871 issued February 19, 2008 for physical exercise instructional services) mark with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the domain names at issue starting on or about April 23, 2011.
The domain names at issue either resolve to a phishing website or a website to sell counterfeit replicas of Respondent’s products through that website.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that common ownership and control is demonstrated by the fact that all of the disputed domain names share the same email address as the registrant, administrative, and technical contact. According to the WHOIS information, beyond the shared email address, two of the registrant names, “Simon Onil” and “Sha Hao,” appear to share the same mailing address and telephone number. Complainant alleges “Ilia Mcgee,” the third registrant, recently received the disputed domain name <trxonsale.com> through a transfer by “Simon Onil.” Furthermore, Complainant points out that all three of the resolving websites provide the same basic information and are identical in nearly every respect: all of the domain names offer for sale counterfeits of Complainant’s products.
Based on the foregoing, the Panel finds that Complainant has presented sufficient evidence to support a determination that the disputed domain names are controlled a single entity and thus chooses to proceed with the instant proceedings.
Complainant has established rights in the TRX mark through its two trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,202,696 issued January 23, 2007 and Reg. No. 3,384,871 issued February 19, 2008 ). See 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.”); 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).”). The Panel finds that Complainant is not required to register its mark with China, the country listed as Respondent’s mailing address for some of the disputed domain names. 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel concludes that Complainant has established rights in its TRX mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to its TRX mark. Complainant claims that the domain names incorporate the TRX mark entirely and only change it by adding generic words, such as “cheap,” “on sale,” and “shop,” adding the descriptive words “suspension” and “trainers,” and adding the generic top-level domains (“gTLDs”) “.com.” and “.org.” The Panel finds that the addition of generic words, or descriptive words, which here, reference Complainant’s suspension training exercise equipment, do not remove the disputed domain names from the realm of confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel may also find that affixing a gTLD to a disputed domain name also does not adequately distinguish the disputed domain from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain names. The Panel has determined that the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Complainant claims that it has never permitted Respondent to use its TRX mark within domain names or to advertise products that compete with Complainant. The Panel finds that Respondent is not commonly known by the disputed domain names pursuant to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant maintains that Respondent uses the disputed domain names to intentionally misdirect Internet users to its own websites which sell counterfeit versions of Complainant’s exercise equipment and training programs. The Panel finds that Respondent’s use of the disputed domain names to operate its own websites to sell counterfeit products directly competing with Complainant’s business 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)).
Complainant also argues that Respondent attempts to pass off its websites as being Complainant’s official sites. Complainant asserts that the resolving sites make no effort to distinguish themselves from Complainant or clarify that they have no relationship with Complainant. Complainant asserts that the resolving sites make liberal use of Complainant’s registered TRX mark in order to sell its counterfeit replicas of Complainant’s suspension training equipment. The Panel finds that Respondent’s use of the disputed domain names in order to pass itself off as Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names according to Policy ¶ 4(a)(ii). 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 Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent has demonstrated a pattern of bad faith registration given its registration of multiple confusingly similar disputed domain names in the instant case. The Panel finds that registration of five disputed domain names utilizing Complainant’s mark is evidence of bad faith according to 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)).
Complainant contends that Respondent registered and is using the disputed domain names to disrupt its business by redirecting potential consumers to Respondent’s website, where they may purchase Respondent’s counterfeit goods instead of Complainant’s genuine equipment. The Panel finds the Respondent’s registration and use of the domains does disrupt Complainant’s exercise training and equipment business and is evidence of bad faith 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent registered and uses the confusingly similar disputed domain names to instigate consumer confusion as to Complainant’s sponsorship of, or affiliation with, the resolving site and products offered for sale. Complainant alleges that Respondent takes advantage of the misperception by profiting from the sale of counterfeit goods. The Panel finds that such registration and use constitutes bad faith 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant alleges that Respondent’s websites purport to be official websites of Complainant, selling official TRX equipment, by using images and Complainant’s TRX mark throughout the site content. The Panel finds that Respondent is attempting to pass itself off as associated with Complainant, which is indicative of bad faith use and registration under Policy ¶ 4(a)(iii). See 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); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Finally, Complainant argues that Respondent had constructive and actual notice of Complainant’s TRX mark since Respondent’s registration of the disputed domain names commenced after Complainant established trademark rights and the TRX mark had gained wide commercial recognition. The Panel finds that actual or constructive notice on the part of Respondent is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheaptrx.org>, <trxonsale.com>, <cheaptrxsuspension.com>, <cheaptrxshop.com>, <trxsuspensiononsale.com>, <trxsuspensiontrainers.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 20, 2011
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