Anytime Fitness, LLC v. PrivacyProtect.org / Domain Admin
Claim Number: FA1212001474899
Complainant is Anytime Fitness, LLC (“Complainant”), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd, Minnesota, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anytimefitnesslocations.net>, registered with SiliconHouse.Net Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2012; the National Arbitration Forum received payment on December 7, 2012.
On December 18, 2012, SiliconHouse.Net Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <anytimefitnesslocations.net> domain name is registered with SiliconHouse.Net Pvt. Ltd. and that Respondent is the current registrant of the name. SiliconHouse.Net Pvt. Ltd. has verified that Respondent is bound by the SiliconHouse.Net Pvt. Ltd. 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 December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2013 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@anytimefitnesslocations.net. Also on December 19, 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.
A timely Response was received and determined to be complete on December 24, 2012.
On January 02, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its ANYTIME FITNESS mark in relation to its business in the health and fitness club services, and has done so since 2002. Complainant owns trademark rights in the ANYTIME FITNESS mark by its trademark registrations with various entities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,814,144 registered February 10, 2004), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA698714 registered October 17, 2007), and South Africa’s Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 2007/23352 July 26, 2010). Complainant uses the <anytimefitness.com> domain name to actively promote its business at the resolving website.
Respondent registered the <anytimefitnesslocations.net> domain name on May 19, 2011, and uses the domain name to host a website to display a variety of pay-per-click links, many of which connect to competing health and fitness club services. The <anytimefitnesslocations.net> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark. Respondent is not commonly known by the <anytimefitnesslocations.net> domain name and was not granted authorization by Complainant to use the ANYTIME FITNESS mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <anytimefitnesslocations.net> domain name, and demonstrates bad faith registration and use of the domain due to the competitive nature and disruptive use of the resolving website. Respondent makes a commercial profit from its use of the disputed domain name.
B. Respondent
Respondent sent a Response in the form of an e-mail, making the following statement: “My aim is not break your privacy as I didn't know about that, I just want to help people from this. I developed this site from 1000$ investment. And also make lots of marketing on it. For marketing I invest near about 500$. After getting it you may really get good result on your business. I am ready to give you whole site with domain. Give me best prize.”
Complainant holds trademark rights over the term ANYTIME FITNESS.
Respondent did not submit a Response in this proceeding.
Respondent sent the National Arbitration Forum an e-mail purporting to consent to the transfer of the domain name <anytimefitnesslocations.net>.
Panel found that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
The Panel decided to analyze the case under the elements of the UDRP.
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 rights in its ANYTIME FITNESS mark as a result of its multiple trademark registrations with various international agencies, including the USPTO (e.g., Reg. No. 2,814,144 registered February 10, 2004), the CIPO (Reg. No. TMA698,714 registered October 17, 2007), and CIPC (Reg. No. 2007/23352 July 26, 2010). In Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), the panel found that the complainant’s many registrations for its HONEYWELL mark throughout the world satisfied Policy ¶ 4(a)(i) in establishing rights in the mark. The Panel finds that Complainant’s numerous worldwide trademark registrations demonstrate its rights in the ANYTIME FITNESS mark pursuant to Policy ¶ 4(a)(i), and that Complainant is not required under the Policy to register its mark in the same country of Respondent’s residence. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant alleges that the <anytimefitnesslocations.net> domain name is confusingly similar to the ANYTIME FITNESS mark, in the addition of the generic word “locations” and the generic top-level domain (“gTLD”) “.net.” The Panel notes that the disputed domain name does not include the space between the words in the mark. The Panel concludes that due to the removed spaces, the added generic term “locations,” and the gTLD “.net,” the <anytimefitnesslocations.net> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark pursuant to Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent is neither commonly known by the <anytimefitnesslocations.net> domain name nor does it have authorization to use the ANYTIME FITNESS mark in a domain name. Complainant contends that the WHOIS information identifies the registrant only as “PrivacyProtect.org,” and argues that the identification does not suggest that Respondent has even been known as “<anytimefitnesslocations.net>.” The Panel concludes that based on the WHOIS information for the domain, Respondent is not commonly known by the <anytimefitnesslocations.net> domain name and therefore lacks rights and legitimate interests in the domain pursuant to 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant makes the argument that by posting pay-per-click links at the resolving website, some of which advertise other health and fitness club services in competition with Complainant, Respondent’s use of the <anytimefitnesslocations.net> domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Complainant alleges that Respondent uses the domain name to misdirect Complainant’s potential customers to competing and unrelated websites, and in particular, the resolving website purports to be a guide to Complainant’s service location and provides information relating to Complainant’s health and fitness clubs. See Exhibit A. The Panel determines that Respondent does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent causes some of the links at the website resolving from the <anytimefitnesslocations.net> domain name to connect to businesses offering health and fitness club services that compete with Complainant’ business. Complainant asserts that its business is negatively affected when Internet users click on the links to access the websites of competing companies, causing disruption and demonstrating bad faith registration and use. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), concluded that the use of a confusingly similar domain name to lure Internet users to a website with commercial links to complainant’s competitors represents bad faith registration and use. The Panel determines that Respondent’s bad faith registration and use of the <anytimefitnesslocations.net> domain name under Policy ¶ 4(b)(iii) is shown by the resolving website’s display of hyperlinks leading to competing businesses.
Complainant asserts that Respondent makes a commercial gain from the <anytimefitnesslocations.net> domain name, because it uses a confusingly similar domain name to lead to a website that prominently displays Complainant’s mark and purports to be a guide to Complainant’s services and locations. Complainant claims that the resolving website is “rife with links to Complainant’s competitors, for which Respondent presumably receives click-through compensation.” The Panel finds that Respondent’s attempt to make profits by hosting hyperlinks to websites competing with Complainant at a confusingly similar domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <anytimefitnesslocations.net> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: January 17, 2013
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