Zumba Fitness, LLC v. Runbo Yang
Claim Number: FA1209001461929
Complainant is Zumba Fitness, LLC (“Complainant”), represented by David K. Friedland of Friedland Vining, P.A., Florida, USA. Respondent is Runbo Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thezumbadvd.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.
Bruce E. Meyerson 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 <thezumbadvd.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@thezumbadvd.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 Bruce E. Meyerson 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) Policy ¶ 4(a)(i):
i. Complainant is a health, wellness, and fitness company engaged in, among other things, the creation and licensing of the popular ZUMBA fitness programs.
ii. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO"), two of which are:
1. ZUMBA (Reg. No. 3,244,094 registered May 22, 2007); and
2. ZUMBA FITNESS (Reg. No. 3,435,705 registered May 27, 2008).
iii. Respondent’s <thezumbadvd.com> domain name is confusingly similar to the ZUMBA mark, only adding the generic term “DVD” and the generic top-level domain (“gTLD”) “.com.”
2) Policy ¶ 4(a)(ii):
i. 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.
ii. 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.
3) Policy ¶ 4(a)(iii):
i. Respondent’s confusingly similar disputed domain name and resolving website cause a bad faith disruption in Complainant’s business as potential customers of Complainant are diverted to competing fitness products.
ii. Respondent is creating confusion as to Complainant’s involvement with the disputed domain name and website to attract Internet users to Respondent’s website for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ZUMBA and ZUMBA FITNESS marks. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <<thezumbadvd.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 asserts that it has established protectable rights in the ZUMBA mark through both its use of the mark in international commerce and its trademark registrations. Complainant 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) with the USPTO. Such registrations are sufficient for Complainant to satisfy Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Further, Complainant argues that Respondent’s <thezumbadvd.com> domain name is confusingly similar to the ZUMBA mark, only adding the generic term “DVD” and the gTLD “.com.” Respondent’s disputed domain name also adds the article “the” as a prefix to the disputed domain name. The Panel finds that the 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); 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the disputed domain name and has no proprietary rights in the disputed domain name. The WHOIS information indicates that the registrant of the <thezumbadvd.com> domain name is “runbo yang” and that Respondent has not submitted any evidence to contradict Complainant’s arguments. Such evidence supports Complainant’s assertions that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Further, Complainant argues that Respondent is using the disputed domain name to host a website containing third-party hyperlinks to competing fitness products and services. Complainant asserts that Respondent is presumably paid for hosting such competing links. Complainant’s submitted screenshot of the resolving website shows that Respondent’s website features commentary about the website, as well as Google AdChoices links to fitness products. The Panel 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 United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s disputed domain name and resolving website cause a disruption in Complainant’s business as potential customers of Complainant are diverted to other fitness products. Respondent’s website features Google AdChoices links to fitness websites such as <mccarleyfitness.com> and <dancexfitness.com>. The Panel agrees with Complainant’s arguments and evidence and finds that the <thezumbadvd.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues 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. Further, Complainant argues that Respondent presumably financially benefits from the confusion caused to Internet users who may believe Complainant is affiliated with the resolving website. The Panel agrees with Complainant and finds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds Complainant has 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 <thezumbadvd.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: Oct. 16, 2012
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