national arbitration forum

 

DECISION

 

Elite Investment Portfolio, LLC v. Elite Fitness and Consulting C/O Victor Brawner

Claim Number: FA1205001441728

 

PARTIES

Complainant is Elite Investment Portfolio, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA.  Respondent is Elite Fitness and Consulting C/O Victor Brawner (“Respondent”), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <elitefiteducate.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 1, 2012; the National Arbitration Forum received payment on May 1, 2012.

 

On May 3, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbi-tration Forum that the <elitefiteducate.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 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@elitefiteducate.com.  Also on May 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 May 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

 

Complainant uses the ELITE FITNESS service mark in connection with the mar-keting of its services, magazine subscriptions and fitness-related educational information for bodybuilders, athletes and exercise enthusiasts.

 

Complainant owns registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for its ELITE FITNESS service mark (including Reg. No. 2,374,799, registered August 8, 2000).

 

Respondent registered the disputed domain name on August 26, 2007.

 

Respondent is using the disputed domain name to offer services that compete with those offered by Complainant.

 

Respondent’s <elitefiteducate.com> domain name is confusingly similar to Complainant’s ELITE FITNESS mark.

 

 

Complainant has never licensed or otherwise permitted Respondent to use its ELITE FITNESS service mark.

 

Respondent has not been commonly known by the disputed domain name, and is not using the disputed domain name for a bona fide offering of goods or ser-vices or a legitimate noncommercial or fair use.

 

Respondent registered and uses the disputed domain name to attract Internet users for commercial gain.

 

Respondent knew of Complainant’s rights in the ELITE FITNESS mark when it registered, and while it has used, the disputed domain name.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.  However, in an e-mail message addressed to the National Arbitration Forum, Respondent recited as follows:

 

I do not feel that our website … is in conflict with the domain [sic] trademark elite fitness.  The only thing our domains have in com-mon is the word “elite.”  We do not use “fitness” in our domain. 

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in the ELITE FITNESS service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark through registration of the mark with the United States Patent and Trade-mark Office). 

 

Respondent’s <elitefiteducate.com> domain name is confusingly similar to Com-plainant’s ELITE FITNESS service mark under Policy ¶ 4(a)(i).  The domain name contains the essence of Complainant’s mark, with the mere addition of a descriptive term (“educate”), which relates to an aspect of Complainant’s busi-ness, and the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark in forming the domain name do not sufficiently distinguish the domain name from the mark under the standards of the Policy.  See, for example, 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 a complainant’s AIG mark failed to differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the appended term related to that complainant’s business);  see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”);  further see 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.

In light of this, Respondent’s protest that its <elitefiteducate.com> domain name is not in conflict with Complainant’s ELITE FITNESS service mark is unavailing.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny,

that Complainant has never licensed, or otherwise permitted Respondent to use its ELITE FITNESS service mark.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed <elitefiteducate.com> domain name only as Elite Fitness and Consulting C/O Victor Brawner,” which, while containing some elements of the domain name, is not the same as the domain name.  There being no other evidence in the record bearing on the question whether Respondent has been commonly known by the contested domain name, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007).

 

We next observe that Complainant alleges, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the contested domain under Policy ¶ 4(c)(i), or a legitimate noncom-mercial or fair use of the domain name under Policy ¶ 4(c)(iii), in that Respondent uses the <elitefiteducate.com> domain name to promote services that are similar to those offered by Complainant.  We therefore concur in Complainant’s assert-ion.  See, for example, Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004):

 

Since Complainant and Respondent both offer …[similar]… accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Com-plainant, which would be legitimate had Respondent not incorp-orated Complainant’s mark in a confusingly similar domain name

to accomplish this end.

 

From this we conclude that Respondent has failed to show that, by its employ-ment of the contested domain name, it makes 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).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

It is evident from the record that Respondent attempts to gain commercially from its employment of the disputed domain name by creating confusion among Internet users as to the possibility of Complainant’s affiliation with the domain and its resolving website, thus to divert users from the services offered by Complainant to those offered by Respondent.  This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv).  See, for example, Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent and a com-plainant were in the same line of business and that respondent was using a domain name confusingly similar to that complain-ant’s FITNESS WAREHOUSE mark to attract Internet users to its domain name <efitnesswarehouse.com>).

 

The Panel thus finds that Complainant has met its obligation of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <elitefiteducate.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  June 11, 2012

 

 

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