Zumba Fitness, LLC v. valuedepot stores inc.
Claim Number: FA1209001461910
Complainant is Zumba Fitness, LLC (“Complainant”), represented by David K. Friedland of Friedland Vining, P.A., Florida, USA. Respondent is valuedepot stores inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zumbadvd.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2012; the National Arbitration Forum received payment on September 10, 2012.
On September 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <zumbadvd.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 September 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@zumbadvd.com. Also on September 12, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Allegations
1) Complainant is a health, wellness and fitness company engaged in, among other things, the creation and licensing of the popular ZUMBA fitness programs.
2) Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO"), two of which are the following:
i. ZUMBA (Reg. No. 3,244,094, registered May 22, 2007); and
ii. ZUMBA FITNESS (Reg. No. 3,435,705, registered May 27, 2008).
3) Respondent’s <zumbadvd.com> domain name is confusingly similar to the ZUMBA mark, only adding the generic term “DVD”.
4) Respondent is not commonly known by the disputed domain name, has not been authorized to register the disputed domain name, and has no proprietary rights in the disputed domain name.
5) Respondent is using the disputed domain name to host a website containing third-party hyperlinks to unaffiliated fitness products and services. Respondent is presumably paid for hosting such competing links.
6) Respondent’s disputed domain name and resolving website cause a bad faith disruption of Complainant’s business as potential customers of Complainant are diverted to other fitness products.
7) Respondent is paid for such use of the disputed domain and benefits from the confusion caused to Internet users as to Complainant’s affiliation with the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Complainant contends that its business began in 2001 and since that time has grown international notoriety. Complainant also asserts that it has registered the ZUMBA (Reg. No. 3,244,094, registered May 22, 2007) and ZUMBA FITNESS marks (Reg. No. 3,435,705, registered May 27, 2008), among many others, with the USPTO. The Panel finds that such registrations are sufficient for Complainant to satisfy Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Further, Complainant alleges that Respondent’s <zumbadvd.com> domain name is confusingly similar to the ZUMBA mark, merely adding the generic term “DVD”. This provides the impression that the domain is referring to a DVD that has been created recording Complainant’s Zumba Fitness program. The Panel therefore finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ZUMBA mark under Policy ¶ 4(a)(i). See 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 the complainant combined with a generic word or term).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the disputed domain name, has not been authorized to register the disputed domain name, and has no proprietary rights in the disputed domain name. The Panel finds that the WHOIS information on record indicates that the registrant of the <zumbadvd.com> domain name is “valuedepot stores inc.” Such evidence supports Complainant’s assertions that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).
Complainant further contends that Respondent is using the disputed domain name to host a website containing third-party hyperlinks to unaffiliated fitness products and services. Complainant asserts that Respondent is presumably paid for hosting such competing links. The Panel notes that Complainant’s submitted screenshot of the resolving website indicates that the disputed domain name resolves to a parked website with GoDaddy.com, LLC and that the links contained thereon are for both competing and unrelated products and services. The Panel therefore finds that Respondent’s use of the disputed domain name 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is paid for its use of links to websites featuring other fitness products and benefits from the confusion caused to Internet users as to Complainant’s apparent affiliation with the resolving websites. The Panel notes that Respondent’s disputed domain name is parked with GoDaddy.com LLC and that the resolving website contains links to competing health and fitness products and services. Complainant further alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by knowingly creating confusion with Complainant’s ZUMBA mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Panel agrees and finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant further asserts that Respondent’s disputed domain name and resolving website cause a bad faith disruption of Complainant’s business as potential customers of Complainant are diverted to other fitness products. The Panel agrees with Complainant’s arguments and finds that the <zumbadvd.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zumbadvd.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 19, 2012
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