Elite Investment Portfolio, LLC v. Elite Fitness Systems Training / Dave Johnson
Claim Number: FA1205001441820
Complainant is Elite Investment Portfolio, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Elite Fitness Training / Dave Johnson (“Respondent”), represented by Aric Bomsztyk of Barokas Martin & Tomlinson, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <elitefitnessnw.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2012; the National Arbitration Forum received payment on June 1, 2012.
On June 5, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <elitefitnessnw.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@elitefitnessnw.com. Also on July 6, 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 July 25, 2012.
On July 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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 was incorporated by its owner and began doing business as Elite Fitness online in 1996, using the domain name <elitefitness.com>.
Complainant owns the ELITE FITNESS mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,374,799 registered August 8, 2000, and Reg. No. 3953314 registered May 3, 2011).
Complainant provides services, magazine subscriptions, and fitness information to bodybuilders, athletes and exercise enthusiasts.
Complainant has built goodwill and a reputation in the ELITE FITNESS mark. Complainant’s website receives over 3 million page views every month, sufficient to establish a secondary meaning in the ELITE FITNESS mark.
Complainant expends significant effort and money to promote its products and services under the ELITE FITNESS mark, which has become famous.
Respondent registered the <elitefitnessnw.com> domain name (the “Domain name”) on or about June 29, 2011. The Domain Name resolves to a website that uses the name ELITE FITNESS to identify itself and promotes similar services to those Complainant offers and uses the same advertising methods.
Respondent registered the Domain Name long after Complainant began using its ELITE FITNESS mark in commerce, with knowledge that Complainant had rights in the name. Respondent’s registration and use of the Domain Name was in bad faith and could cause potential confusion to consumers as to Complainant’s affiliation with Respondent.
Respondent had actual and constructive knowledge that the Domain Name is nearly identical to Complainant’s mark.
Respondent cannot acquire trademark or service mark rights in the ELITE FITNESS expression, as rights to that lie exclusively with Complainant as the registered trademark holder. Complainant never licensed or authorized Respondent to use the ELITE FITNESS mark in any way, and Respondent’s unauthorized use of the mark to misdirect consumers is solely for Respondent’s commercial gain. Respondent does not make a legitimate use of the Domain Name.
Respondent uses the Domain Name intentionally to divert Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial or fair use of the Domain Name pursuant to Policy ¶ 4(c)(iii).
The Domain Name is confusingly similar to Complainant’s ELITE FITNESS mark.
B. Respondent
Respondent Dave Johnson is the President of Respondent Never Quit Inc. d/b/a Elite Fitness Training. Elite Fitness Training (hereinafter referred to as “Respondent”) owns two small local gyms in the Seattle area, offering personal training and on-site equipment. Respondent does not generate revenue from any goods or services offered over the Internet. It uses the <elitefitnessnw.com> domain name only to promote the business of its two gyms. Its only income is derived from persons who actually visit and use its gyms.
Respondent was unaware of Complainant’s website prior to the commencement of this case, and was unaware of Complainant’s business at the time it registered the Domain Name.
Complainant’s business appears to consist of providing information to bodybuilders who wish to learn about, purchase and take anabolic steroids. There is no evidence that Complainant offers any in-person services or has any physical location or gym. Its services are entirely web/distance/remotely based.
Any secondary meaning that Complainant’s ELITE FITNESS Mark may have is in association with a website that condones the use of anabolic steroids and serves as an electronic forum for anabolic steroid abusers to meet.
Respondent has a legitimate interest in the <elitefitnessnw.com> domain name because its business goes by the name “Elite Fitness Training” and it has registered that trade name with the state of Washington. Respondent is known by the name “Elite Fitness Training” by employees, members of the gym, and the media. Its gyms have signs with the name “Elite Fitness Training” and its employees wear uniforms bearing that name. Local people and media sometimes refer to Respondent as simply “Elite Fitness” or “Elite” as shortened versions of its registered name.
Respondent is a legitimate business that engages in an active and bona fide offering of goods and services under the names “Elite Fitness Training,” “Elite Fitness” and “Elite.”
Respondent has not attempted to sell the Domain Name to Complainant or Complainant’s competitors. Respondent did not register the Domain Name in order to disrupt Complainant’s business or to take customers from Complainant. Respondent’s website is maintained for the sole purpose of marketing its gyms and the equipment and personal services provided there, not selling or offering information about anabolic steroids on the web. If one of Respondent’s customers wished to use anabolic steroids, Respondent would sever the relationship and refund their money.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant owns the following registered service marks with the USPTO:
ELITE FITNESS, Reg. No. 2,374,799 registered August 8, 2000 in international class 42 for “providing bodybuilding information via a global computer network.”
ELITE FITNESS, Reg. No. 3,953,314, registered May 3, 2011 in international class 35 for “providing an online Internet directory information service featuring information regarding advertising and information distribution services, . . . . 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 “providing on-line computer databases and on-line searchable databases for use in posting and reading online messages, . . . .”
Complainant’s trademark registrations with the USPTO demonstrate its rights in the ELITE FITNESS mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
The Domain Name is confusingly similar to the ELITE FITNESS mark. It contains the addition of a single geographic identifier “nw,” an abbreviation for “North West.” Further, it includes the generic top-level domain (“gTLD”) “.com,” and removes the space between the words of the mark. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark. It is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the ELITE FITNESS Mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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 interest 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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by several circumstances present in this case: (1) Respondent knew when it registered the Domain Name that Complainant had rights in it, (2) Respondent has not been licensed or permitted to use the ELITE FITNESS Mark or any domain names incorporating that mark, and (3) Respondent uses the Domain Name to misdirect consumers searching for Complainant to a competitor’s website, which is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent’s contentions in this regard are that prior to notice of any dispute over the Domain Name it used the Domain Name in connection with a bona fide offering of goods or services, and that Respondent is commonly known by the names “Elite Fitness Training” and its shortened version “Elite Fitness.” Respondent does in fact own and operate two gym facilities in the Seattle, Washington area under the name “Elite Fitness Training.” Respondent’s signs and the uniforms of its employees bear that name, and the local press has written articles using “Elite Fitness Training” and the shortened version “Elite Fitness” to refer to Respondent’s business. The record does not reflect when Respondent began its business, but its trade name was registered in May 2006, and the corporation was organized in March 2000. See Annex 2, Exhibit 7 to the Response. It seems clear from this evidence that Respondent is and has for some time been commonly known by the names “Elite Fitness Training” and the shortened version “Elite Fitness.” Further, the Domain Name resolves to a website which does nothing more or less than promote and advertise Respondent’s gyms. The Panel concludes from this that Respondent has been using the Domain Name in connection with a bona fide offering of goods and services since well before learning of Complainant’s claim.
Complainant asserts that Respondent knew of Complainant’s business and service marks when it registered the Domain Name and that it uses the Domain Name to divert Complainant’s customers to its website, which is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). There is no independent evidence of the first allegation, and Respondent categorically denies it. As to the second, the Panel is convinced that Respondent has never attempted, and would not seek, to trade off of the goodwill and reputation of Complainant by using the Domain Name. Respondent’s website is used solely to market its gyms, and Respondent has expressed in quite pointed and emphatic terms that under no circumstances whatever would it wish to be associated in any way with Complainant’s business of promoting the sale and use of anabolic steroids.
Based upon the foregoing, the Panel concludes that the Respondent has rights and legitimate interests in respect of the Domain Name.
In light of the Panel’s finding and determination with respect to the Rights or Legitimate Interests element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Complainant 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 <elitefitnessnw.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: August 9, 2012
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