Elite Investment Portfolio, LLC v. Elite Fitness
Claim Number: FA1205001441713
Complainant is Elite Investment Portfolio, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Elite Fitness (“Respondent”), represented by Victor S. Voinovich, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elitefitnessclubs.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2012; the National Arbitration Forum received payment on April 30, 2012.
On May 1, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <elitefitnessclubs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@elitefitnessclubs.com. Also on May 2, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 22, 2012.
On May 25,2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has rights in and has built valuable goodwill and a strong reputation in the ELITE FITNESS trademark and service mark through its U.S. trademark registrations listed below and use of the mark in relation to its online sales and services. Complainant submits that it aggressively advertises its services online through links on other popular websites, pay-per-click advertising, affiliate advertising programs, web portals, banner ads, and mass e-mails. As a result of its expenditure of considerable sums of money on advertising, promotional activities, design, research and development, and search engine optimization, Complainant claims to have built the ELITE FITNESS mark into the distinctive identifier of Complainant’s products and services. Years of effort have culminated in the mark ELITE FITNESS and Complainant’s website at <elitefitness.com> becoming well-known across the English speaking world, and resulted in seven-figure revenue from the sale of Complainant’s services annually. Complainant states that its website generates more than 3,250,000 page views every month. Complainant claims to have established a secondary meaning in the mark ELITE FITNESS through the nature and extent of advertising as well as consumer and media recognition. See Smooth Corp. v. Cambridge Capital, Ltd, FA 0606000731652 (Nat. Arb. Forum July 27, 2006) (holding that “Complainant’s prominent use of the IFLOOR.COM mark in the marketing and advertising of its products and services, as well as the media coverage of the mark in several publications, created the necessary secondary meaning in the mark”).
Complainant claims that, consequently, individuals and other entities have come to recognize Complainant’s marks as the distinctive identifiers of Complainant’s goods and services.
Complainant argues that the disputed domain name is confusingly similar to the ELITE FITNESS mark because it differs only by the addition of the suffix “clubs”, which is a generic term. Previous panels have found the addition of a single term that has an obvious relationship to a complainant’s business does not sufficiently distinguish a disputed domain name. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark and renders the domain name confusingly similar to Complainant’s marks); 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 Complainant combined with a generic word or term); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described Complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i)). Additionally, the disputed domain name incorporates the generic top-level domain (“gTLD”) “.org.” However, the Panel considers this to be irrelevant to its Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name arguing that Respondent registered the disputed domain name with the knowledge that it infringes Complainant’s rights in the ELITE FITNESS marks, hoping to profit from the valuable goodwill Complainant built in the marks.
Complainant submits that once Complainant establishes 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 Policy ¶ 4(a)(ii). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that it is incumbent on Respondent to provide concrete evidence rebutting Complainant’s assertion because this information is “uniquely within the knowledge and control of Respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that the mere assertion by Complainant that Respondent has no right or legitimate interest in the domain name can be sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).
Complainant submits that Respondent cannot acquire trademark or service mark rights in the ELITE FITNESS expression as rights to that mark lie exclusively with Complainant as the registered trademark holder of the mark.
In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to Complainant’s direct competitors only reinforced that conclusion.
Therefore, Respondent’s use of the disputed domain name to intentionally divert Internet users seeking Complainant’s products and services to a direct competitor for its own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant has never authorized, licensed, or otherwise permitted Respondent to use its marks nor allowed Respondent to associate itself with Complainant in any way. Respondent’s unauthorized and unapproved mis-direction of consumers searching for Complainant’s products and services to a competitor’s website is solely for the purpose of achieving commercial gain at the expense of Complainant. See Singapore Airlines Ltd. v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644 (Aug. 29, 2000). As such, Respondent’s registration and use of the disputed domain name is not legitimate. See The Lotte Berk Method Limited v. ATTN: lotteberkmethod.com, FA667767 (Nat. Arb. Forum May 8, 2006).
Complainant submits that Respondent has registered and is using the disputed domain name in bad faith alleging that Respondent registered the disputed domain name on, or about, July 31, 2006 more than eleven years after Complainant began doing business using the ELITE FITNESS marks.
Complainant alleges that Respondent is intentionally attempting to divert Internet users to its website via the disputed domain name for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Complainant further alleges that Respondent registered the disputed domain name with actual or constructive knowledge, that the disputed domain name was nearly identical to Complainant’s marks, and with the intention of offering competing services to the public via the disputed domain name. Screenshots of the website to which the disputed domain name resolved on March 28, 2012 are annexed to the Complaint. Complainant submits that Respondent has begun promoting similar services to those offered by Complainant using the same advertising mechanisms. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Complainant argues that a reasonable Internet user would assume the disputed domain name was somehow related to Complainant’s well-established marks. See Treeforms, Inc. v. Cayne Ind. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access complainant’s web site, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).
Finally Complainant submits that Respondent’s bad faith registration and use of the disputed domain name has, will, and continues, to damage Complainant through the loss of customers, profits, business, lower search engine rankings, and good-will, as well as by damage to Complainant’s reputation and mark.
B. Respondent
Respondent argues that Complainant has not proven the three elements of the Policy required to succeed in this Complaint.
Respondent states that it lacks sufficient information to state whether Complainant's claims in relation to its trademarks, reputation and goodwill are accurate.
Respondent denies that the disputed domain name is identical and or confusingly similar to Complainant’s trademarks or domain name and website address <elitefitness.com> arguing that the additional element “clubs” is a descriptive word that informs Internet users that Respondent operates a gym.
Respondent claims to have a right or legitimate interest in the disputed domain name as the address for its website promoting a local fitness center, gym, or club.
Respondent asserts that there is no evidence that it registered and uses the disputed domain name in bad faith. Respondent accepts that it registered the disputed domain name <elitefitnessclubs.com> on or about July 31, 2006 but denies any knowledge of Complainant when it registered the disputed domain name. Respondent denies that it offers similar services to that of the Complainant. Respondent refers to the screenshots filed by Complainant as annexes to the Complaint to support this statement.
According to the Complaint, Complainant’s business furnishes services, magazine subscriptions, and fitness information to bodybuilders, athletes, and exercise enthusiasts. Respondent states that it does not offer any of those things to its clients. Respondent operates a local fitness center where customers utilize equipment. Respondent does not sell magazine subscriptions, nor provide information to bodybuilders, athletes, or exercise enthusiasts about obtaining supplements or anabolic steroids like Complainant does.
Respondent denies ever trying to associate itself with Complainant. Respondent runs a fitness center (gym) whereas Complainant provides bodybuilding information via a global computer network.
The website established by Respondent to which the disputed domain name resolves provides information to customers and potential customers within a radius of approximately 10 miles around its club whereas Complainant is a worldwide business providing information about bodybuilding and steroid use to everyone in the English speaking world.
Complainant provides information about steroid use and purchases and provides a forum to discuss the same. Respondent has never had nor ever will have any intention to provide any similar services provided by the Complainant
Respondent has used the name ELITE FITNESS CLUB since at least 2001 to identify its gym in the local community. Respondent has used the disputed domain name <elitefitnessclubs.com> to identify its gym and provide customers information about same since on or about July 31, 2006.
Respondent has never sought out Complainant for any reason. Respondent has not attempted to sell the disputed domain name to Complainant. Respondent has never attempted to sell the disputed domain name to any competitor of Complainant. In fact, prior to filing this Complaint, Complainant sent Respondent a letter requesting that the Respondent pay Complainant a monthly licensing fee. Respondent did not register its domain name for the purpose of blocking, disrupting or taking internet users from Complainant. Respondent's sole purpose in using the disputed domain name is to provide information about its local club to its local members and potential local members. Complainant uses its website for completely different purposes.
Complainant is the owner of the following registered service marks:
U.S. registered service mark ELITE FITNESS, registration number 2,374,799, filed on April 5, 1999, published for opposition on May 16, 2000, and registered on August 8, 2000, in international class 42 for the following services:
“Providing bodybuilding information via a global computer network.”
and
U.S. Service Mark ELITE FITNESS, registration no. 3,953,314, application filed on February 25, 2010, published for opposition on February 15, 2011 claiming a first-use-in-commerce date of April 17, 1995, and registered on May 3, 2011 in international class 35 for
“Providing an online Internet directory information service featuring information regarding advertising and information distribution services, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; providing on-line computer databases and on-line searchable databases featuring classified advertisements. On-line retail store services featuring vitamin supplements, mineral supplements, nutritional supplements, health related food products, e-books, printed books and publications.“
And in international class 38 for the following services:
“Providing on-line computer databases and on-line searchable databases for use in posting and reading online messages, namely, interactive online discussion forums for transmission of messages among computer users concerning health, fitness, and bodybuilding; and providing on-line computer databases and on-line searchable databases featuring information about sending and receiving photographic images and media.”
Both registrations disclaim the exclusive right to use “fitness” apart from the mark as shown.
The disputed domain name was registered on July 31, 2006.
Respondent carries on business as a gym or “fitness club”.
Rules ¶ 15(a) 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."
Policy ¶ 4(a) 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.
There appears to be a number of inconsistencies in the Complaint as it relates to the date on which Complainant commenced the acquisition of its rights in the ELITE FITNESS mark.
The Complaint states that “Paul Willingham began doing business as Elite Fitness online, after registering the domain name <elitefitness.com> on January 9, 1996.” The WhoIs record for Complainant’s domain name <elitefitness.com> states that it was registered on September 1, 1996 and supports Complainant’s claim to have commenced an online services in that year.
However, while in his declaration filed, supporting the Complaint, Mr. Willingham states that he incorporated the Complainant and sought to register its trademarks in 1995, the search results furnished with the Complaint record that the service marks relied upon were filed on filed on April 5, 1999 and February 25, 2010 respectively.
This Panel nonetheless finds that Complainant has rights in the trademark and service mark ELITE FITNESS through its above trademark registrations and use in trade.
This Panel further finds that the disputed domain name is clearly confusingly similar to Complainant’s mark. Complainant’s mark consists of the two word elements “elite” and “fitness” whereas the disputed domain name is composed of these identical words with the additional descriptive and generic word element “clubs”.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Policy ¶ 4(c) states that a respondent can demonstrate rights or legitimate interest if
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;…”
Complainant’s website is an online information source and forum for exchange of health information and a shop window for its health supplements and body building products. In the declaration annexed to the Complaint, Complainant’s principal Mr. Willingham states that “[f]or a period of time, the Respondent’s website was a mirror image of our own.” However, the screenshots of the Parties’ respective websites adduced in evidence show that they each have quite different appearances, livery, get up, and content. The screenshot of Respondent’s website as of March 28, 2012 adduced by Complainant as an annex to the Complaint shows that Respondent was on that date promoting an “Elite Fitness Club, family owned and operated since 2001, …located in Bainbridge Township near Cleveland in Northeast Ohio.”
The Complaint procedure under the Policy has certain limitations by its nature and has limited capacity to test the veracity of the claims of either of the Parties. Aside from Mr. Willingham’s unsupported allegation that at one stage the disputed domain name resolved to a website that mirrored Complainant’s site, there is nothing on the file to indicate that Respondent is not maintaining a bona fide website for a bona fide fitness club.
In the circumstances, on the evidence adduced, this Panel finds that Respondent has rights and legitimate interests in the disputed domain name.
Complainant is obliged to prove all three elements in the test set out in Policy ¶ 4(a) and therefore Complainant’s application must fail.
In reaching this decision, this Panel is conscious that despite its denial, it is improbable that Respondent would not have become aware of Complainant’s business when checking the availability of the disputed domain name at the time of registration. However this Panel is also conscious of the limitations of the procedures under the Policy in testing such assertions.
On the other hand, Complainant’s trademark has limited distinctiveness as it consists of the combination of the laudatory epithet “elite” and the generic word “fitness” with a disclaimer on the word “fitness”.
Furthermore, the services for which Complainant’s trademarks are registered do not include “fitness clubs” or “gyms”.
Additionally, while Complainant submits that Respondent is marketing services which are substantially similar to Complainant’s services, the screenshots of the respective websites adduced by Complainant do not support that allegation. Complainant’s website is a shop-window for its products and advisory services whereas Respondent’s website promotes a local gym.
As this Panel has found that Respondent has rights and legitimate interests in the disputed domain name, it is not necessary to consider the submissions relating to alleged bad faith registration and use.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <elitefitnessclubs.com> domain name REMAIN WITH Respondent.
____________________
James Bridgeman, Panelist
Dated: June 8, 2012
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