Fitness Anywhere, Inc. v. Pamela Docekal
Claim Number: FA1006001330913
Complainant is Fitness
Anywhere, Inc. (“Complainant”), represented by Omid A.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <trx-shop.com> and <trxfitness-shop.com>, registered with GoDaddy.com, Inc.
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 June 21, 2010.
On June 21, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trx-shop.com> and <trxfitness-shop.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2010 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@trx-shop.com and postmaster@trxfitness-shop.com. Also on June 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 15, 2010, 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 a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trx-shop.com> and <trxfitness-shop.com> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <trx-shop.com> and <trxfitness-shop.com> domain names.
3. Respondent registered and used the <trx-shop.com> and <trxfitness-shop.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere, Inc., provides exercise devices and fitness regimens. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TRX mark (e.g., Reg. No. 3,202,696 registered on January 23, 2007).
Respondent, Pamela Docekal, registered the <trx-shop.com> and <trxfitness-shop.com> domain names on May 16, 2010. The <trx-shop.com> domain name resolves to a website that imitates Complainant’s official website and sells counterfeit versions of Complainant’s exercise product. The <trxfitness-shop.com> domain name resolves to a website offering goods that compete with Complainant’s product.
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."
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.”).
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.
Complainant asserts rights in the TRX mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,202,696 registered on January 23, 2007). The Panel finds these registrations sufficiently establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues Respondent’s <trx-shop.com> and <trxfitness-shop.com>
domain names are confusingly similar to its TRX mark. Respondent replicates Complainant’s mark in
its entirety in both the disputed domain names.
Respondent also adds a hyphen, the generic term “shop,” and the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
names. Finally, Respondent adds the term
“fitness,” which describes the Complainant’s product, to Complainant’s mark in
the <trxfitness-shop.com> domain name. The Panel finds these additions do not
distinguish Respondent’s disputed domain names from Complainant’s mark. See Health Devices Corp. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
According to Policy ¶ 4(a)(ii), Complainant must first demonstrate Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain names. The Panel may find Respondent’s failure to submit a Response indicates that Respondent lacks rights and legitimate interests in a domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant states it has not given Respondent license or permission to use its mark in a domain name. Furthermore, the WHOIS information lists “Pamela Docekal” as the registrant of the <trx-shop.com> and <trxfitness-shop.com> domain names. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims
Respondent’s <trx-shop.com> domain name resolves to a website that
displays images of what Respondent purports to be Complainant’s exercise
product. Complainant argues
Respondent uses the <trx-shop.com> domain name to sell counterfeit goods.
Complainant also provides screen shots of the website that resolves from
the <trx-shop.com> domain name.
These shots show Complainant’s mark and logo prominently featured
throughout Respondent’s site. In
addition, Complainant alleges Respondent’s <trxfitness-shop.com>
domain name resolves to a website that offers for sale products that directly
compete with Complainant’s product. The Panel finds Respondent’s use of
the disputed domain names to sell counterfeit goods and good that directly
compete with Complainant’s product do not constitute 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 Hewlett-Packard
Co. v. Inversiones HP Milenium
Finally, Complainant avers Respondent’s <trx-shop.com> domain name resolves to a website that imitates Complainant’s official website. Complainant states that Respondent copies its advertising copywriting and images. The Panel finds Respondent’s attempt to pass itself off as Complainant provides further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As previously discussed, Respondent’s disputed domain names resolve to websites that offer for sale counterfeit goods as well as goods that compete with Complainant’s product. The Panel finds Respondent uses the confusingly similar domain names to redirect Internet users seeking Complainant’s product to its competing websites. Therefore, the Panel finds Respondent’s conduct disrupts Complainant’s business, which qualifies as registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
The Panel finds that Respondent’s disputed domain names are
likely to cause confusion among Internet consumers seeking Complainant’s
product and website. Respondent
registered and is using domain names that are confusingly similar to
Complainant’s TRX mark. Moreover,
Respondent’s <trx-shop.com>
domain name resolves to a website that imitates Complainant’s official website
and provides counterfeit goods. The
Panel infers Respondent seeks to profit from this use. Therefore, the Panel finds Respondent
attempts to use the disputed domain names to attract, for commercial gain,
Internet users to its website, by creating a likelihood of confusion with
Complainant’s TRX mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website of a product on its website. Consequently, the Panel finds this further
evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name]
to benefit from the goodwill associated with Complainant’s HP marks and us[ed]
the <hpdubai.com> domain name, in part, to provide products similar to
those of Complainant. Respondent’s
practice of diversion, motivated by commercial gain, constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v.
C & M, D2003-0159 (WIPO Apr. 22, 2003)
(“The contents of the website, offering Usag products, together with the domain
name may create the (incorrect) impression that Respondent is either the
exclusive distributor or a subsidiary of Complainant, or at the very least that
Complainant has approved its use of the domain name.”).
The Panel also finds Respondent’s attempt to pass itself off as Complainant also supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
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 <trx-shop.com> and<trxfitness-shop.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 16, 2010
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