national arbitration forum

 

DECISION

 

Healthways, Inc. v. Link2Domains.com

Claim Number: FA1202001430510

 

PARTIES

Complainant is Healthways, Inc. (“Complainant”), represented by Robert L. Brewer of Bass, Berry & Sims PLC, Tennessee, USA.  Respondent is Link2Domains.com (“Respondent”), represented by Danny Sibai, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <silversneakerfitness.com>, registered with Wild West Domains, 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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.

 

On February 21, 2012, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <silversneakerfitness.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@silversneakerfitness.com.  Also on February 27, 2012, 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 March 6, 2012.

 

An Additional Submission was received from Complainant on March 9, 2012, and was timely under Supplemental Rule 7.

 

On March 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant offers health and fitness services under the trademark SILVER SNEAKERS.  Complainant’s mark is registered on the Principal Register of the U.S. Patent & Trademark Office, registration number 2,086,072, and has been used in commerce continuously since at least as early as 1995.

 

The disputed domain name <silversneakerfitness.com> was registered by Teri Sibai on July 10, 2007.  Complainant alleges that Teri Sibai used the domain name in a manner that infringed upon Complainant’s rights, and subsequently transferred the domain name to Respondent, a company owned by her husband.  Complainant further contends that Respondent has caused the domain name to resolve to a portal website that promotes services that compete with Complainant.  Complainant alleges based upon these facts that the disputed domain name is confusingly similar to Complainant’s mark; that Respondent lacks rights or legitimate interests in the domain name; and that Respondent registered and is using the domain name in bad faith.

 

B. Respondent

Respondent denies that the disputed domain name is confusingly similar to Complainant’s mark.  In support thereof, Respondent states that the disputed domain name is much longer than Complainant’s domain name.

 

Respondent also denies having used the domain name in bad faith.  Respondent explains that “we” (apparently including Teri Sibai) initially registered the disputed domain name intending to work with and offer a Silver Sneaker program, but subsequently abandoned that plan and complied with Complainant’s requests when it complained of the infringing use.  Respondent states that to its knowledge the dispute between the parties has been closed, and in support thereof provides a copy of correspondence from Complainant dated May 24, 2011, which Respondent characterizes as dismissing all of Complainant’s issues and concerns.  In that correspondence, a representative of Complainant states as follows:  “Thank you for confirming that you are not using the SilverSneaker Fitness name for your organization or products, and that the www.silversneakerfitness.com domain name is rerouted to your Kids and Fitness website.  This compliance issue is closed.”

 

C. Additional Submissions

In its Additional Submission, Complainant states that the alleged infringing use of the disputed domain name continued after May 24, 2011, and that the domain name was subsequently transferred by Teri Sibai to Respondent.  Complainant accuses Respondent of having engaged in an effort to circumvent the agreement evidenced by the 2011 correspondence.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, Respondent lacks rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was 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.

 

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."

 

Identical and/or Confusingly Similar

 

The disputed domain name is comprised of the singular form of Complainant’s registered mark, with the generic term “fitness” (describing the services offered by Complainant) and the top-level domain suffix “.com” appended thereto.  The disputed domain name is therefore confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Complainant’s allegations suffice to state a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name.  Respondent acknowledges that any plans to use the domain name in connection with an offering of goods or services are no longer in place, and offers no other basis on which a finding of rights or legitimate interests might be made.  The Panel therefore concludes that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent acquired the disputed domain name with full knowledge of Complainant’s rights, and that Respondent has used the domain name in bad faith to profit from a website promoting services that compete with those offered by Complainant.  Regardless of whether the previous dispute between Complainant and Teri Sibai was settled (or whether that settlement was breached), Complainant’s allegations with regard to Respondent’s conduct and the evidence offered in support thereof suffice to show bad faith registration and use under paragraph 4(b)(iv) of the Policy:  “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”  The Panel so finds.

 

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

David E. Sorkin, Panelist

Dated:  March 14, 2012

 

 

 

 

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