Bodybuilding.com, LLC v. Richard Hergerton
Claim Number: FA1306001506350
Complainant is Bodybuilding.com, LLC (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Richard Hergerton (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bodvbuildinq.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2013; the National Arbitration Forum received payment on June 24, 2013.
On June 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bodvbuildinq.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 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@bodvbuildinq.com. Also on June 26, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a. Complainant’s mark:
i. Complainant owns the BODYBUILDING.COM mark through its common law trademark.
ii. Complainant started using the BODYBUILDING.COM mark and domain in 1999, and is now the largest online sports nutrition company in the world. Complainant also uses the mark in connection with retail store services.
iii. The <bodybuilding.com> domain receives on average over 1,000,000 unique daily visitors, and has over 1.5 million registered members who frequent the site. Complainant uses the mark to feature 25,000 articles and over 10,000 videos, which help users reach their fitness goals.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <bodvbuildinq.com> domain name is confusingly similar to Complainant’s BODYBUILDING.COM mark as Respondent merely replaced the letters “y” and “g” with the visually similar letters “v” and “q” to form the disputed domain name, which is a common misspelling of the mark. The addition of the generic top-level domain name (“gTLD”) “.com” is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name. The WHOIS information does not suggest Respondent is commonly known by the disputed domain name, but lists “Richard Hergerton” as the registrant. Further, Complainant has not authorized Respondent’s use of the mark.
2. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the domain name to redirect users to a commercial website that mimics Complainant’s own website, which offers competing goods to those offered under Complainant’s mark.
3. Respondent is passing itself off as Complainant by using Complainant’s own website template and marks to promote a competing business.
iii. Policy ¶ 4(a)(iii)
1. Respondent is using the disputed domain name to redirect users to a commercial website featuring products that compete with Complainant, disrupting Complainant’s business.
2. Respondent is using the disputed domain to intentionally attract, for commercial gain, Internet users by creating confusion as to Complainant’s association with the disputed domain.
3. Similarly, Respondent is passing itself off as Complainant, creating further confusion as to the affiliation of Complainant with the disputed domain.
4. Respondent’s registration of the disputed domain name with actual knowledge of Complaint’s rights is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bodybuilding.com, LLC which list its address as Meridian, ID, USA. Complainant claims to be the largest online sports nutrition company in the world. Complainant established its website and began using BODYBUILDING.COM as its mark and trade name in September 1999. Complainant has consistently used its mark since that time, claiming to receive on average more than 1,000,000 unique daily visitors.
Respondent is Richard Hergerton who list his address as Coral Springs, FL, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on February 28, 2013.
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 claims to own the BODYBUILDING.COM mark through its common law trademark. Complainant has registered its mark. Previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). Instead, a complainant may establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims it has been using the BODYBUILDING.COM mark since 1999 in connection with an online sports nutrition company. See Complainant’s Ex. B. Complainant uses the mark to feature 25,000 articles and over 10,000 videos, which help users reach their fitness goals. See Complainant’s Ex. D. Complainant also uses the mark in connection with retail store services, and is the number one sports and nutrition online retailer. See Complainant’s Ex. C. Previous panels have found that complainants can establish a common law trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). The Panel notes that the <bodybuilding.com> domain claims to receive on average over 1,000,000 unique daily visitors, and has over 1.5 million registered members who frequent the site, making Complainant allegedly the most visited and bodybuilding and fitness website in the world. The Panel finds that Complainant has established common law rights in the BODYBUILDING.COM mark for the purposes of Policy ¶ 4(a)(i), as Complainant has promoted goods and services under the mark for 14 years, amassed a considerable clientele of visitors and members of the site, and enjoys commercial popularity.
Complainant argues that the <bodvbuildinq.com> domain name is confusingly similar to Complainant’s BODYBUILDING.COM mark. Complainant asserts that the domain merely replaced the letters “y” and “g” with the visually similar letters “v” and “q” to form the disputed domain name, which is a common misspelling of the mark. Complainant adds that the addition of the gTLD “.com” is irrelevant. Previous panels have determined that minor misspellings of a mark in a domain name serves to increase, rather than decrease, confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Further, previous panels have determined that the addition of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because the <bodvbuildinq.com> domain merely replaced the letters “y” and “g” in Complainant’s mark with the visually similar letters “v” and “q” to form a misspelling of the BODYBUILDING.COM mark, which is insufficient to differentiate the domain name from the mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant asserts that the WHOIS information does not suggest Respondent is commonly known by the disputed domain name. The Panel notes that WHOIS indicates that the registration of the disputed domain is “Richard Hergerton” (Complainant’s Ex. A). Further, Complainant contends it has not authorized Respondent’s use of the mark. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. The Panel finds that Respondent is not commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the domain name to redirect users to a commercial website, which offers competing goods to those offered under Complainant’s mark. The Panel notes that Complainant includes Exhibits E and F, which show that users who click the link for “Max Thermo Burn” supplements on Respondent’s <bodvbuildinq.com> domain are redirected to a webpage where a competing supplement is sold. Previous panels have found that redirecting Internet users to a website displaying a complainant’s mark that also provides links to competing products does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. 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).”).
Complainant further contends that Respondent is attempting to pass itself off as Complainant. Complainant notes that the resolving page features the BODYBUILDING.COM mark, logo, and webpage design. The Panel notes the similarities between Complainant’s pages (Exhibits B-D) and Respondent’s page (Exhibit E). Previous panels have failed to find a bona fide offering of goods or services or for a legitimate noncommercial or fair use where the respondent passes itself off as the complainant or diverts Internet traffic from the complainant to the respondent’s own website. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s use of the disputed domain name to attract and direct Internet users to a competing commercial website calculated to create an association with Complainant by passing itself off as Complainant, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends Respondent is using the disputed domain name to redirect users to a commercial website featuring products that compete with Complainant. Complainant argues that such competition disrupts Complainant’s business, and therefore reveals Respondent’s bad faith. The Panel again notes that Complainant includes Exhibits E and F, which show that users who click the link for “Max Thermo Burn” supplements on Respondent’s <bodvbuildinq.com> domain are redirected to a webpage where a competing supplement is sold. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant’s through the confusingly similar domain name. 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 Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”), see also 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).
Similarly, Complainant believes that Respondent is passing itself off as Complainant, creating further confusion as to the affiliation of Complainant with the disputed domain. Complainant notes that the resolving page features the BODYBUILDING.COM mark, logo, and webpage design. The Panel again notes the similarities between Complainant’s pages (Exhibits B-D) and Respondent’s page (Exhibit E). In Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004), the panel found evidence of bad faith where the respondent not only registered Complainant’s famous TARGET mark, but “reproduced [on the resolving page] Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.” The present case is analogous as Respondent incorporates Complainant’s mark, logo, and webpage design in an effort to replicate Complainant’s page. The Panel finds that Respondent’s efforts to pass itself off as Complainant, and commercially gain from the resulting confusion, constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that <bodvbuildinq.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 31, 2013
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