Anytime Fitness, LLC v. Juan Soto
Claim Number: FA1310001525489
Complainant is Anytime Fitness, LLC (“Complainant”), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd., Minnesota, USA. Respondent is Juan Soto (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mens-anytime-fitness.com>, registered with TUCOWS, INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2013; the National Arbitration Forum received payment on October 18, 2013.
On October 21, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <mens-anytime-fitness.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 October 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@mens-anytime-fitness.com. Also on October 22, 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.
A timely Response was received on November 10, 2013.
A timely Additional Submission was received on November 15, 2013, pursuant to the Forum’s Supplemental Rule 7.
On November 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <mens-anytime-fitness.com> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <mens-anytime-fitness.com> domain name.
3. Respondent registered and uses the <mens-anytime-fitness.com> domain name in bad faith.
B. Respondent
1. Respondent’s <mens-anytime-fitness.com> domain name is not confusingly similar to Complainant’s ANYTIME FITNESS mark because it is comprised of generic words.
2. Respondent is using the <mens-anytime-fitness.com> domain name for fitness advice and e-commerce and therefore has any rights or legitimate interests in the domain name.
3. Respondent did not register and use the <mens-anytime-fitness.com> domain name in bad faith because it did not intend to obtain a commercial gain.
C. Complainant’s Additional Submission
1. Respondent does not have any rights or legitimate interests in the <mens-anytime-fitness.com> domain name because he is using the domain name for competing business services.
2. Respondent registered and uses the <mens-anytime-fitness.com> domain name in bad faith because he is using the domain name for competing business services
Complainant has rights in its ANYTIME FITNESS mark, used in connection with health and fitness services. Complainant owns registrations for the ANYTIME FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,814,114 registered Feb. 10, 2004).
Respondent registered the <mens-anytime-fitness.com> domain name on June 6, 2008, and uses it to offer fitness advice and a free “Fitness Bodybuilding Guide” if the users enter their names and e-mail addresses.
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.
.
The Panel finds that Complainant has rights in the ANYTIME FITNESS mark pursuant to Policy ¶ 4(a)(i) through its registrations with the USPTO, despite Respondent’s argument that Complainant’s ANYTIME FITNESS mark is comprised of generic terms. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <mens-anytime-fitness.com> domain name includes Complainant’s entire mark and adds the generic term “mens”, the gTLD “.com,” and two hyphens. The addition of a generic term does not sufficiently differentiate a disputed domain name from a trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The addition of a gTLD and hyphens are irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <mens-anytime-fitness.com> domain name is confusingly similar to Complainant’s ANYTIME FITNESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent is not commonly known by the <mens-anytime-fitness.com> domain name, and Complainant has not authorized Respondent to use its ANYTIME FITNESS mark. The WHOIS record for the disputed domain name lists “Juan Soto” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). The Panel finds that Respondent is not commonly known by the <mens-anytime-fitness.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <mens-anytime-fitness.com> domain name to phish for personal information from Internet users. The Panel notes that the disputed domain name resolves to a website containing Complainant’s ANYTIME FITNESS mark and offering fitness tips and advice and a free “Fitness Bodybuilding Guide” if the users enter their names and e-mail addresses. In Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007), the panel defined phishing as “us[ing] the disputed domain name to obtain personal and financial information from Internet customers of [a] complainant.” Further, past panels have found that operating a phishing site demonstrates a lack of rights and legitimate interests under Policy ¶ 4(c)(i). See Homer TLC, Inc. v. Seed of Abraham Christian School, FA 1358569 (Nat. Arb. Forum Jan. 3, 2011) (determining that the respondent lacks rights and legitimate interests in the <thehomedepotgardenclub.com> domain name because the respondent attempted to acquire the personal information of Internet users accessing the resolving website). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <mens-anytime-fitness.com> domain name pursuant to Policy ¶ 4(a)(ii) because Respondent is using the disputed domain name to phish for personal information from Internet users.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the disputed domain name to attract Internet for its own commercial gain by creating a likelihood of confusion with Complainant’s ANYTIME FITNESS mark. The Panel again notes that Respondent offers a free “Fitness Bodybuilding Guide” if Internet users enter their names and e-mail addresses. Complainant argues that Respondent uses the personal information it obtains from Internet users to profit by sending spam e-mails. Past panels have generally found that where the respondent is diverting Internet users searching for a complainant by creating a likelihood of confusion, that respondent profits in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel also notes that, although Respondent claims to have had no intent to profit through the use of the disputed domain name, Respondent refers to the resolving website as an e-commerce site, and offers fitness advice in competition with Complainant. The Panel finds that Respondent registered and is using the <mens-anytime-fitness.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the disputed domain name resolves to a website operated for Respondent’s commercial gain.
Further, operating a phishing scheme constitutes bad faith. In Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007), the panel defined phishing as “us[ing] the disputed domain name to obtain personal and financial information from Internet customers of [a] complainant;” see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Thus, the Panel finds that Respondent registered and is using the disputed domain in bad faith under Policy ¶ 4(a)(iii) because Respondent is operating a phishing scheme.
The Panel finds that 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 <mens-anytime-fitness.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 22, 2013
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