Zumba Fitness, LLC v. Essenic
Claim Number: FA1209001461927
Complainant is Zumba Fitness, LLC (“Complainant”), represented by David K. Friedland of Friedland Vining, P.A., Florida, USA. Respondent is Essenic (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zumbalove.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.
The Honorable Charles K. McCotter, Jr. (Ret.) 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 <zumbalove.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@zumbalove.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 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
1) Complainant began marketing its ZUMBA products and services in 2001 and since that time has continued to offer health, wellness, and fitness products.
2) Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ZUMBA mark (e.g. Reg. No. 3,244,094 registered May 22, 2007).
3) Respondent, Essenic, registered the <zumbalove.com> domain name on January 27, 2009.
4) Respondent’s <zumbalove.com> domain name is confusingly similar to Complainant’s ZUMBA mark.
5) Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent has no proprietary rights or legitimate interest in the ZUMBA mark or the disputed domain name. Respondent is not commonly known by the <zumbalove.com> domain name.
ii. Respondent is using the disputed domain name to promote Respondent’s own fitness products and services for its own commercial gain.
6) Respondent’s redirection of Internet users to Respondent’s competing website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
7) Respondent has intentionally attempted to attract, presumably for commercial gain, Internet users to Respondent’s website by knowingly creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Zumba Fitness, LLC, began marketing its ZUMBA products and services in 2001 and since that time has continued to offer health, wellness, and fitness products. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its ZUMBA mark (e.g. Reg. No. 3,244,094 registered May 22, 2007).
Respondent, Essenic, registered the <zumbalove.com> domain name on January 27, 2009. Respondent is using the disputed domain name to promote Respondent’s own fitness products and services for its own commercial gain.
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 argues that it began marketing its ZUMBA products and services in 2001 and, since that time, has continued to offer health, wellness, and fitness products. Complainant contends that it owns hundreds of domain name registrations containing its ZUMBA mark and that it is internationally famous. Further, Complainant owns several trademark registrations with the USPTO for its ZUMBA mark (e.g., Reg. No. 3,244,094 registered May 22, 2007). The Panel finds that Complainant has submitted sufficient evidence under Policy ¶ 4(a)(i) to establish protectable rights in the ZUMBA mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
As for the second prong of Policy ¶ 4(a)(i), Complainant asserts that Respondent’s <zumbalove.com> domain name is confusingly similar to Complainant’s ZUMBA mark. The domain name contains the entire ZUMBA mark, the generic term “love,” and the generic top-level (“gTLD”) “.com.” Such additions do not render the disputed domain name distinct from Complainant’s ZUMBA mark. The Panel finds that Respondent’s <zumbalove.com> domain name is confusingly similar to Complainant’s ZUMBA mark pursuant to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 interests 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).
Under Policy ¶ 4(a)(ii), Complainant first argues that Respondent has no proprietary rights or legitimate interest in the ZUMBA mark or the disputed domain name. Complainant contends that Respondent is not commonly known by the <zumbalove.com> domain name. The WHOIS information identifies “Essenic” as the registrant of the disputed domain name, which is substantially dissimilar from the <zumbalove.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Second, Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name where Respondent is using the disputed domain name to promote its own fitness products and services for its own commercial gain. The Panel finds that Respondent’s use of the disputed domain name in the marketing and sale of competing products does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <zumbalove.com> domain name under Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant argues that Respondent’s redirection of Internet users to Respondent’s competing website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). Complainant contends that Respondent “is diverting Complainant’s customers or potential customers from seeking information about Complainant to Respondent’s website.” Complainant argues that such redirection is a disruption to Complainant’s business in bad faith. The Panel finds bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant argues that Respondent has intentionally attempted to attract, presumably for commercial gain, Internet users to Respondent’s website by knowingly creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent uses the disputed domain name to resolve to Respondent’s commercial website selling fitness products and services. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zumbalove.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 22, 2012
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