national arbitration forum

 

DECISION

 

Zumba Fitness, LLC v. Chris DeGuzman

Claim Number: FA1209001461928

 

PARTIES

Complainant is Zumba Fitness, LLC (“Complainant”), represented by David K. Friedland of Friedland Vining, P.A., Florida, USA.  Respondent is Chris DeGuzman (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zumbaclasses.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

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, Inc. confirmed by e-mail to the National Arbitration Forum that the <zumbaclasses.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@zumbaclasses.com.  Also on September 13, 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 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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. The Panel issues 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

 

  1. Complainant

1)    Complainant is a health, wellness, and fitness company engaged in the creation and licensing of the ZUMBA fitness programs.

2)    Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for the ZUMBA mark (e.g., Reg. No. 3,244,094 registered May 22, 2007).

3)    Respondent’s <zumbaclasses.com> domain name is confusingly similar to Complainant’s ZUMBA mark, merely adding the generic term “classes” and the generic top-level domain (“gTLD”) “.com.” 

4)    Respondent has no proprietary rights or legitimate interests in the ZUMBA mark or the disputed domain name.  Respondent is not commonly known by the disputed domain name. 

5)    Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <zumbaclasses.com> domain name under Policy ¶ 4(c)(iii).  Respondent’s disputed domain name resolves to a website that contains hyperlinks to various third-party websites offering unaffiliated fitness products and services, many of which compete with Complainant.

6)    Respondent’s disputed domain name was registered and is being used in bad faith where the resolving website features third-party links to the competitors of Complainant.

7)    Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by knowingly creating a likelihood of confusion with Complainant’s mark.

  1. Respondent did not submit a Response.  The Panel notes that the <zumbaclasses.com> domain name was registered on September 22, 2007.

 

B. Respondent

Respondent failed to submit a Response.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested. 

 

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:

 

(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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims to have rights in the ZUMBA mark under Policy ¶ 4(a)(i).  In support of its assertions, Complainant notes that it has several trademark registrations with the USPTO for the ZUMBA mark (e.g., Reg. No. 3,244,094 registered May 22, 2007).  The Panel agrees with Complainant and find that Complainant has established rights in the ZUMBA mark under Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant asserts that Respondent’s <zumbaclasses.com> domain name is confusingly similar to Complainant’s ZUMBA mark, merely adding the generic term “classes” and the gTLD “.com.”  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), where the domain name contains the mark entirely, merely adds a generic term, and also adds the required gTLD.  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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

 

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); 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 contends that Respondent has no proprietary rights or legitimate interests in the ZUMBA mark or the disputed domain name.  Further, Complainant asserts that Respondent is not commonly known by the disputed domain name.  The Panel notes that the WHOIS information identifies “Chris DeGuzman” as the disputed domain name’s registrant.  The Panel finds that there is no other evidence on record regarding this issue.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant also argues that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <zumbaclasses.com> domain name under Policy ¶ 4(c)(iii).  Complainant notes, and submits a screenshot to show, that Respondent’s disputed domain name resolves to a website that contains hyperlinks to various third-party websites offering unaffiliated fitness products and services, many of which compete with Complainant.  The Panel notes that the resolving website contains link headings such as “Jillian Michaels Online,” “Fitness Videos,” “Insanity® Workout DVD,” and “ITT Tech – Official Site,” among others.  Based upon Complainant’s evidence and arguments, the Panel finds that Respondent is not using the <zumbaclasses.com> domain name for 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Complainant has proven this element.

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s disputed domain name was registered and is being used in bad faith where the resolving website features third-party links to the competitors of Complainant.  Complainant asserts that Internet users who happen upon Respondent’s website are diverted to Complainant’s competitors, thus resulting in a disruption of Complainant’s business.  The Panel agrees with Complainant and finds that Respondent registered and is using the disputed domain name 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).”).

 

Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by knowingly creating a likelihood of confusion with Complainant’s mark.  Complainant presumes that Respondent receives some sort of financial gain from the products and businesses linked-to on the resolving website.  Complainant asserts that Respondent’s use of the ZUMBA mark within the <zumbaclasses.com> domain name unfairly trades on the goodwill embodied in Complainant’s mark.  The Panel 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 has proven this element.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zumbaclasses.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  October 11, 2012

 

 

 

 

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