Fitness Anywhere LLC v. jack chiang a/k/a Sha hao / zhanghuayang / zhanghuayang / ke engao
Claim Number: FA1106001395271
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is jack chiang a/k/a Sha hao / zhanghuayang / zhanghuayang / ke engao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <besttrxdiscount.info>, <buytrxpro.info>, <buytrxsuspension.info>, <buytrxtraining.info>, <buytrxtrainings.info>, <cheaptrxforsale.info>, <cheaptrxhere.info>, <cheaptrxsale.info>, <cheaptrxsuspension.info>, <cheaptrxtraining.info>, <findcheaptrx.info>, <findtrxsale.info>, <findtrxstore.info>, <fitnesstraincenter.com>, <getcheaptrx.info>, <newtrxdiscount.info>, <newtrxsale.info>, <newtrxsales.info>, <straptrainer.org>, <suspensionstrap.org>, <trxbands.info>, <trxbuynow.info>, <trxcenter.info>, <trxdiscount.info>, <trxdiscountnow.info>, <trxdiscountshop.info>, <trxdiscountstore.info>, <trxdiscounttoday.info>, <trxforce.info>, <trxforsale.info>, <trxgym.info>, <trxmarket.info>, <trxprofessional.info>, <trxsales.info>, <trxshipping.info>, <trxsite.info>, <trxstart.info>, <trxstore.info>, <trxstraps.info>, <trxstrapsforsale.info>, <trxtrainingsale.info>, <trxuse.info>, <trxworkout.info>, and <youneedtrx.info> registered with Go Daddy.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2011; the National Arbitration Forum received payment on June 23, 2011.
On June 24, 2011, Go Daddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <besttrxdiscount.info>, <buytrxpro.info>, <buytrxsuspension.info>, <buytrxtraining.info>, <buytrxtrainings.info>, <cheaptrxforsale.info>, <cheaptrxhere.info>, <cheaptrxsale.info>, <cheaptrxsuspension.info>, <cheaptrxtraining.info>, <findcheaptrx.info>, <findtrxsale.info>, <findtrxstore.info>, <fitnesstraincenter.com>, <getcheaptrx.info>, <newtrxdiscount.info>, <newtrxsale.info>, <newtrxsales.info>, <straptrainer.org>, <suspensionstrap.org>, <trxbands.info>, <trxbuynow.info>, <trxcenter.info>, <trxdiscount.info>, <trxdiscountnow.info>, <trxdiscountshop.info>, <trxdiscountstore.info>, <trxdiscounttoday.info>, <trxforce.info>, <trxforsale.info>, <trxgym.info>, <trxmarket.info>, <trxprofessional.info>, <trxsales.info>, <trxshipping.info>, <trxsite.info>, <trxstart.info>, <trxstore.info>, <trxstraps.info>, <trxstrapsforsale.info>, <trxtrainingsale.info>, <trxuse.info>, <trxworkout.info>, and <youneedtrx.info> domain names are registered with Go Daddy.com, Inc. and that Respondent is the current registrant of the names. Go Daddy.com, Inc. has verified that Respondent is bound by the Go Daddy.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 July 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@besttrxdiscount.info, postmaster@buytrxpro.info, postmaster@buytrxsuspension.info, postmaster@buytrxtraining.info, postmaster@buytrxtrainings.info, postmaster@cheaptrxforsale.info, postmaster@cheaptrxhere.info, postmaster@cheaptrxsale.info, postmaster@cheaptrxsuspension.info, postmaster@cheaptrxtraining.info, postmaster@findcheaptrx.info, postmaster@findtrxsale.info, postmaster@findtrxstore.info, postmaster@fitnesstraincenter.com, postmaster@getcheaptrx.info, postmaster@newtrxdiscount.info, postmaster@newtrxsale.info, postmaster@newtrxsales.info, postmaster@straptrainer.org, postmaster@suspensionstrap.org, postmaster@trxbands.info, postmaster@trxbuynow.info, postmaster@trxcenter.info, postmaster@trxdiscount.info, postmaster@trxdiscountnow.info, postmaster@trxdiscountshop.info, postmaster@trxdiscountstore.info, postmaster@trxdiscounttoday.info, postmaster@trxforce.info, postmaster@trxforsale.info, postmaster@trxgym.info, postmaster@trxmarket.info, postmaster@trxprofessional.info, postmaster@trxsales.info, postmaster@trxshipping.info, postmaster@trxsite.info, postmaster@trxstart.info, postmaster@trxstore.info, postmaster@trxstraps.info, postmaster@trxstrapsforsale.info, postmaster@trxtrainingsale.info, postmaster@trxuse.info, postmaster@trxworkout.info, and postmaster@youneedtrx.info. Also on July 5, 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 July 18, 2011.
On July 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that the disputed domain names are all registered to and controlled by the same entity, albeit using different aliases. The Respondent Chiang is an intentional counterfeit seller who has twice appeared before a Panel of the National Arbitration Forum. See Fitness Anywhere, Inc. v. Jack Chiang, FA1374816 (NAF March 29, 2011) (“cheaptrxstore.com” ordered transferred.) As demonstrated by the evidence attached, all disputed domain names that are currently active and online are providing the same basic website, identical in every respect, offering for sale counterfeit replica of the Complainant’s products.
The Complainant states, and provides evidence to show, that it owns the registered trademarks TRX, FITNESS ANYWHERE, and SUSPENSION TRAINING. Those trademarks are used to promote and market physical training equipment.
According to the Complainant, each of the disputed domain names is confusingly similar, in the sense of the Policy, to one or more of its marks.
The Complainant alleges that the Respondent does not have rights or legitimate interests in the any of the disputed domain names, because they were registered well after the Complainant’s marks, and because the disputed domain names are being used to point to websites that offer for sale counterfeit replicas of the Complainant’s products. The Respondent's predominant interest in the disputed domain names is to cause consumer confusion, in order to sell counterfeit replicas of the Complainant’s products. The disputed domain names make liberal use of the Complainant’s various registered trademarks to advertise and offer the Respondent’s counterfeit goods for sale while serving as a portal to collect consumer data and information for sales contacts by the Respondent. This pattern of intentional infringement dramatically increases the likelihood of consumer confusion by passing off and presenting the Respondent’s counterfeit goods through the disputed domain names.
Further, says the Complainant, the Respondent is capitalizing on the interest of consumers searching for information about the Complainant’s products to divert those consumers to the Respondent’s websites, or to collect consumer data from those users. Thus the Respondent's only use of the disputed domain names has been for commercial gain by creating a likelihood of confusion with the Complainant’s marks, which is evidence of bad faith registration and use under the Policy.
B. Respondent
The Respondent’s Reply is reproduced verbatim below:
Fitness Anywhere LLC just have the trademark “TRX”, my domain: Fitnesstraincenter.com, Straptrainer.org have no words related with “TRX”
I think it’s unreasonable that they complained my domains. They cannot complaint my domains just because I sell TRX, Domain Dispute should only be valid if my domain just contains the word “TRX”.
The Complainant owns trademarks in the terms TRX, FITNESS ANYWHERE, and SUSPENSION TRAINING.
The disputed domain names all point to identical web sites that offer counterfeit versions of the Complainant’s 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."
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.
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”.
A Response has been submitted for only two of the contested domain names. That Response does not address the question of whether or not the domain names are registered by the same domain name holder.
In accordance with 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondents or Respondents’ failure to address the question of whether or not the domain names are registered by the same domain name holder.
Given that the domain names all point to the same website, and given the Respondent’s silence, the Panel holds that all the domain names are registered by the same domain name holder.
The Complainant has provided evidence showing that it has established rights in the TRX, SUSPENSION TRAINING, and FITNESS ANYWHERE marks. The Panel holds that the Complainant has demonstrated its rights in the TRX, SUSPENSION TRAINING, and FITNESS ANYWHERE marks under Policy ¶ 4(a)(i).
The Complainant alleges that Respondent’s disputed domain names are confusingly similar to its TRX mark. The <besttrxdiscount.info>, <buytrxpro.info>, <buytrxtraining.info>, <buytrxtrainings.info>, <cheaptrxforsale.info>, <cheaptrxhere.info>, <cheaptrxsale.info>, <cheaptrxtraining.info>, <findcheaptrx.info>, <findtrxsale.info>, <findtrxstore.info>, <getcheaptrx.info>, <newtrxdiscount.info>, <newtrxsale.info>, <newtrxsales.info>, <trxbands.info>, <trxbuynow.info>, <trxcenter.info>, <trxdiscount.info>, <trxdiscountnow.info>, <trxdiscountshop.info>, <trxdiscountstore.info>, <trxdiscounttoday.info>, <trxforce.info>, <trxforsale.info>, <trxgym.info>, <trxmarket.info>, <trxprofessional.info>, <trxsales.info>, <trxshipping.info>, <trxsite.info>, <trxstart.info>, <trxstore.info>, <trxstraps.info>, <trxstrapsforsale.info>, <trxtrainingsale.info>, <trxuse.info>, <trxworkout.info>, and <youneedtrx.info> all incorporate the entire TRX mark and change it by adding the generic words “best,” “discount,” “buy,” “pro,” “training,” “trainings,” “cheap,” “for sale,” “here,” “sale,” “find,” “store,” “get cheap,” “new,” “sales,” “buy now,” “center,” “discount now,” “discount shop,” “discount store,” “discount today,” “force,” “market,” “professional,” “shipping,” “site,” “start,” “use,” or “you need,” or by adding the descriptive words, which relate to Complainant’s physical exercise equipment and services, “bands,” “gym,” “straps,” “straps for sale,” “training sale,” or “workout,” and finally by adding the generic top-level domain (“gTLD”) “.info.” The Panel holds that the addition of generic or descriptive words does not serve to avoid a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel holds that the aforementioned disputed domain names are confusingly similar to Complainant’s TRX mark under Policy ¶ 4(a)(i).
The Complainant argues that the Respondent’s disputed domain names are confusingly similar to its SUSPENSION TRAINING mark. The <buytrxsuspension.info>, <cheaptrxsuspension.info>, and <suspensionstrap.org> domain names utilize the entire SUSPENSION mark and merely add the generic words “buy,” or “cheap,” add the descriptive word “strap,” combine the mark with Complainant’s TRX mark, delete the word “training,” and add the gTLDs “info” or “org.” The Panel holds that combining the Complainant’s marks does not sufficiently differentiate the disputed domain names. 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). Also, past panels have found that adding generic or descriptive words does not remove the disputed domain names from the realm of confusing similarity. See 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 Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Previous panels have held that deleting words does not sufficiently distinguish the disputed domain name. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel holds that the Respondent’s <buytrxsuspension.info>, <cheaptrxsuspension.info>, and <suspensionstrap.org> domain names are confusingly similar to Complainant’s SUSPENSION mark pursuant to Policy ¶ 4(a)(i).
Finally, Complainant argues that Respondent’s <fitnesstraincenter.com> is confusingly similar to its FITNESS ANYWHERE mark. The Panel holds that the disputed domain name incorporates Complainant’s mark and changes it by deleting the word “anywhere,” adding the descriptive words “train center,” and by adding the gTLD “.com.” The Panel holds that adding descriptive words, which relate to Complainant’s business in the fitness industry, and adding a gTLD do not adequately distinguish the disputed domain name from Complainant’s mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel holds that deleting words of a mark does not distinguish the disputed domain name enough to avoid confusion. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). Therefore, the Panel holds that the Respondent’s <fitnesstraincenter.com> domain name is confusingly similar to Complainant’s FITNESS ANYWHERE mark pursuant to Policy ¶ 4(a)(i).
The Complainant provides no evidence of a trademark relating to the <straptrainer.org> domain name and makes no allegations as to why <straptrainer.org> domain name is identical or confusingly similar to any of its registered marks in regard to Policy ¶ 4(a)(i). The Panel holds that the Complainant has not established this element of the Policy for this domain name, so the Complaint must be dismissed for this one domain name.
The Complainant provides evidence showing that the Respondent uses the disputed domain names to resolve to websites which offer for sale counterfeit versions of the Complainant’s fitness equipment. The Panel holds that Respondent’s use of the disputed domain names to host websites selling counterfeit products of Complainant’s goods 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 Complainant presents evidence showing that the resolving websites use the Complainant’s copyrighted advertising and images, as well as the Complainant’s mark, without any attribution to the Complainant, in order to create the appearance that the disputed domain names are affiliated with the Complainant’s business. The Panel holds that the Respondent’s use of the disputed domain name in an attempt to pass itself off as associated with the Complainant is further evidence that the Respondent does not have rights or legitimate interests under 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 Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
As previously mentioned, the Complainant presents evidence showing that the disputed domain names resolve to websites that create a likelihood of confusion as to the Complainant’s affiliation with the sites and offer for sale counterfeit replicas of the Complainant’s goods and services. The Complainant also presents evidence showing that the disputed domain names display the Complainant’s TRX marks and copyrighted advertising and images in an attempt to sell goods and services similar to Complainant’s physical fitness equipment. The Panel holds that the Respondent profits from the sale of these goods. The Panel holds that the Respondent’s attempt to gain commercially from the confusion among Internet users constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Having analyzed the first element required under the ICANN Policy for the domain name <straptrainer.org>, the Panel concludes that relief shall be DENIED for the domain name <straptrainer.org>.
Accordingly, it is Ordered that the <straptrainer.org> domain name REMAIN WITH Respondent.
Having established all three elements required under the ICANN Policy for the remaining domain names, the Panel concludes that relief shall be GRANTED for the remaining domain names.
Accordingly, it is Ordered that the <besttrxdiscount.info>, <buytrxpro.info>, <buytrxsuspension.info>, <buytrxtraining.info>, <buytrxtrainings.info>, <cheaptrxforsale.info>, <cheaptrxhere.info>, <cheaptrxsale.info>, <cheaptrxsuspension.info>, <cheaptrxtraining.info>, <findcheaptrx.info>, <findtrxsale.info>, <findtrxstore.info>, <fitnesstraincenter.com>, <getcheaptrx.info>, <newtrxdiscount.info>, <newtrxsale.info>, <newtrxsales.info>, <suspensionstrap.org>, <trxbands.info>, <trxbuynow.info>, <trxcenter.info>, <trxdiscount.info>, <trxdiscountnow.info>, <trxdiscountshop.info>, <trxdiscountstore.info>, <trxdiscounttoday.info>, <trxforce.info>, <trxforsale.info>, <trxgym.info>, <trxmarket.info>, <trxprofessional.info>, <trxsales.info>, <trxshipping.info>, <trxsite.info>, <trxstart.info>, <trxstore.info>, <trxstraps.info>, <trxstrapsforsale.info>, <trxtrainingsale.info>, <trxuse.info>, <trxworkout.info>, and <youneedtrx.info> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 27, 2011
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