Anytime Fitness, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1212001474904
Complainant is Anytime Fitness, LLC (“Complainant”), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd., Minnesota, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anytimefitnes.com>, registered with PDR Ltd. d/b/a publicdomainregistry.com.
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.
James A. Carmody, Esq., 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 11, 2012, PDR Ltd. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <anytimefitnes.com> domain name is registered with PDR Ltd. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a publicdomainregistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a publicdomainregistry.com 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 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@anytimefitnes.com. Also on December 17, 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 January 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <anytimefitnes.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ANYTIME FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the ANYTIME FITNESS mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,814,144 registered February 10, 2004). Complainant uses the ANYTIME FITNESS mark in connection with its health and fitness club services and has used this mark in business since September of 2002.
Respondent registered the <anytimefitnes.com> domain name on July 10, 2006, and has created a corresponding website that features links to other websites, some of which compete with Complainant’s health and fitness club services. The <anytimefitnes.com> domain name is confusingly similar to Complainant’s mark and is a typosquatted version of the mark. Respondent is not commonly known by the disputed domain name, and fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered and uses the <anytimefitnes.com> domain name in bad faith, due to its typosquatting, and its use of the domain name to cause disruption to Complainant’s business. Further, Respondent’s bad faith registration and use is shown by its attempt to attract Internet traffic to its website in order to generate income.
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 owns rights in its ANYTIME FITNESS mark, and has provided, as evidence, its USPTO trademark registration (e.g., Reg. No. 2,814,144 registered February 10, 2004). The panel in Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), found that the complainant’s evidence of its USPTO registration establishes its rights in the mark under the Policy. Complainant’s USPTO registration serves to demonstrate its rights in the ANYTIME FITNESS mark pursuant to Policy ¶ 4(a)(i). It is not necessary for Complainant to register its mark in the same country of Respondent’s residence for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The <anytimefitnes.com> domain name is confusingly similar to the ANYTIME FITNESS mark. Deleting one letter (“s”) and adding a generic top-level domain (“gTLD”) (“.com.”) does not remove the domain name from the realm of confusing similarity. The disputed domain name does not include the space in between the words of Complainant’s mark. The <anytimefitnes.com> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark due to the omission of a single letter and a space, and the addition of the gTLD “.com.” See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
No evidence exists to show that Respondent is commonly known by the <anytimefitnes.com> domain name. The WHOIS information identifies the registrant as “Private Registrations Aktien Gesellschaft / Domain Admin.” The WHOIS information in no way resembles the disputed domain name or that Respondent operates under the <anytimefitnes.com> domain name. The panel in Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002), held that the WHOIS information did not match the respondent’s business name and determined that the respondent was not commonly known by the disputed domain name. This Panel likewise finds that Respondent is not commonly known by the <anytimefitnes.com> domain name and therefore does not possess rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <anytimefitnes.com> domain name, as Respondent uses the resolving website to offer visitors hyperlinks that lead to businesses who offer health and fitness services in competition with Complainant. Respondent uses the ANYTIME FITNESS mark prominently on its website, which is rife with links to websites promoting the competing services. The Panel concludes that Respondent does not use the <anytimefitnes.com> domain name in a manner showing 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The <anytimefitnes.com> domain name is typosquatted, as it is a misspelling of Complainant’s ANYTIME FITNESS mark. Typosquatting is evidence in itself that Respondent does not possess rights or legitimate interests in the <anytimefitnes.com> domain name. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), held that the respondent did not have rights or legitimate interests in the disputed domain name, as the respondent engaged in the practice of typosquatting by taking advantage of common spelling errors of Internet users attempting to type the complainant’s mark, which was evidence that respondent did not have rights or legitimate interests in the disputed domain name. The Panel finds that Respondent does not own rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii), as Respondent used a misspelled version of Complainant’s ANYTIME FITNESS mark.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the <anytimefitnes.com> domain name, by offering hyperlinks to business in competition with Complainant, disrupts Complainant’s business and demonstrates bad faith registration and use. The Panel concludes that Respondent registered and uses the <anytimefitnes.com> domain name in bad faith under Policy ¶ 4(b)(iii), by so disrupting Complainant’s business with the hyperlinks posted at its resolving website. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent enjoys a commercial gain as a result of its use of the <anytimefitnes.com> domain name to feature third-party hyperlinks that belong to Complainant’s competitors. The Panel concludes that by using the confusingly similar domain name to attract Internet users to its website in order to make a profit from the displayed hyperlinks, Respondent has registered and is using the <anytimefitnes.com> 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).”).
Respondent takes advantage of Complainant’s ANYTIME FITNESS mark by registering a domain name that is a misspelling of the mark. Respondent’s registration and use of a typosquatted form of its mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anytimefitnes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 17, 2013
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