national arbitration forum

DECISION

24 Hour Fitness USA, Inc. v. Ernie Benavidez

Claim Number: FA1305001502341

PARTIES

Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan Hollander of K&L Gates LLP, Washington, USA. Respondent is Ernie Benavidez (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <24hourfitnessmemberships.com>, registered with GODADDY.COM, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2013; the National Arbitration Forum received payment on May 29, 2013.

On May 31, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <24hourfitnessmemberships.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 June 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@24hourfitnessmemberships.com. Also on June 3, 2013, 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 which was compliant with the requirements of the Policy or its accompanying Rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On July 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading health club industry pioneer and one of the largest privately-held health and fitness chains in the world.

Complainant holds trademark registrations, on file with the United States Patent and Trademark Office (“USPTO”) for the 24 HOUR FITNESS mark (including Registry No. 2,130,895, registered January 20, 1998).

Respondent registered the <24hourfitnessmemberships.com> domain name on March 21, 2012.

Respondent’s <24hourfitnessmemberships.com> domain name is substantially identical and confusingly similar to Complainant’s 24 HOUR FITNESS mark.

Respondent has never been known by or operated a business under either the 24 HOUR FITNESS name or the contested domain name.

Respondent has used the <24hourfitnessmemberships.com> domain name to misdirect Internet traffic to Respondent’s website, which has offered fitness-related information but also linked to an advertisement for a weight loss “cure.”

Respondent has no rights to or legitimate interests in the disputed domain name.

Respondent selected, registered, and used the contested domain name for com-mercial advantage to capitalize on the goodwill associated with Complainant’s 24 HOUR FITNESS mark.

Respondent has used the domain name to impersonate Complainant for com-mercial gain by creating a likelihood of confusion among Internet users with regard to the possible association of the 24 HOUR FITNESS mark with the domain name.

Respondent knew of Complainant and its rights in the 24 HOUR FITNESS mark when it registered the disputed domain name.

The disputed domain name was registered and has been used in bad faith.

B. Respondent

Respondent has failed to submit a Response to the Complaint filed in this pro-ceeding which was compliant with the requirements of the Policy and its accomp-anying Rules. However, in an e-mail message addressed to the National Arbi-tration Forum, Respondent has recited: “I’m done with this…. They can have it [the contested domain name].”

DISCUSSION

Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:

i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

ii. Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accord-ance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Further, ¶ 3(a) of the Policy provides for the transfer of a domain name registra-tion upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).

DECISION

Respondent does not contest the material allegations of the Complaint, and, in particular it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather, Respondent has expressed in writing a willingness to have the domain name transferred to Complainant. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.

Accordingly, it is hereby Ordered that the <24hourfitnessmemberships.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

Terry F. Peppard, Panelist

Dated: July 9, 2013