Anytime Fitness, LLC v. Clintenaragona
Claim Number: FA1210001467318
Complainant is Anytime Fitness, LLC (“Complainant”), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd., Minnesota, USA. Respondent is Clintenaragona (“Respondent”), represented by Gregory H. Schillace of Schillace Law Office, West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anytime-fitness-bridgeport-wv.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 October 15, 2012; the National Arbitration Forum received payment on October 15, 2012.
On October 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <anytime-fitness-bridgeport-wv.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 October 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@anytime-fitness-bridgeport-wv.com. Also on October 18, 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 November 20, 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Anytime Fitness, LLC, holds trademark registrations with the United States Patent and Trademark Office ("USPTO") for the ANYTIME FITNESS (Reg. No. 2,814,114 registered Feb. 10, 2004) and ANYTIME FITNESS and Design marks (Reg. no. 3,302,636 registered Oct. 2, 2007). Complainant also holds trademark registrations for the ANYTIME FITNESS mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA698714 registered Oct. 17, 2007) and with IP Australia (“IPA”) (Reg. No. 1,091,103 registered Oct. 18, 2006).
Respondent, Clintenaragona, registered the <anytime-fitness-bridgeport-wv.com> domain name on November 23, 2010. Respondent’s resolving website promotes a health and fitness club by the name of “WV Fitness 24.”
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’s trademark registrations are sufficient for Complainant to establish rights in the ANYTIME FITNESS and ANYTIME FITNESS and Design marks under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <anytime-fitness-bridgeport-wv.com> domain name is confusingly similar to Complainant’s ANYTIME FITNESS marks where it merely adds three hyphens, the geographic descriptive term “bridgeport-wv,” and the gTLD “.com.” Hyphens and gTLD’s are not relevant to a Policy ¶ 4(a)(i) determination. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Adding a geographic term, such as “Bridgeport” and “wv,” is not sufficient to render a domain name distinct from the mark in which the term(s) was added. See Skype Ltd. & 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.”). The Panel finds that the <anytime-fitness-bridgeport-wv.com> domain name is confusingly similar to Complainant’s ANYTIME FITNESS marks under Policy ¶ 4(a)(i).
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).
Complainant claims that Respondent is not commonly known by the disputed domain name and has not been licensed or authorized to use the ANYTIME FITNESS mark. The WHOIS information indicates that the registrant of the <anytime-fitness-bridgeport-wv.com> domain name is “Clintenaragona.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the disputed domain name to directly compete with the health and fitness club services that are legitimately offered by Complainant. Complainant notes that Respondent’s resolving website promotes a health and fitness club by the name of “WV Fitness 24,” and the competing club is located less than a ½ mile from an ANYTIME FITNESS location in Bridgeport, West Virginia. A respondent’s competing use of a 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, the Panel finds that Respondent is not using the disputed 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), where Respondent is resolving the domain name to a competing health and fitness club.
Respondent’s use of the disputed domain name to offer directly competing health and fitness club services disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Further, Respondent has registered, and is using, the disputed domain name to attract Internet users to its competing website and health club services by creating confusion among Internet users as to Complainant’s involvement with the website and domain name. The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <anytime-fitness-bridgeport-wv.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 4, 2012
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