Fitness International, LLC, a California Limited Liability Co. v. Holder of Domain Name <lafitnessperspect.com>
Claim Number: FA1411001592358
Complainant is Fitness International, LLC, a California Limited Liability Co. (“Complainant”), represented by Daniel M. Cislo of Cislo & Thomas LLP, California, USA. Respondent is Holder of Domain Name <lafitnessperspect.com> (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lafitnessperspect.com>, registered with Register.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2014; the National Arbitration Forum received payment on November 26, 2014.
On November 26, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lafitnessperspect.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2014 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@lafitnessperspect.com. Also on December 2, 2014, 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 December 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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.
In an e-mail sent to the FORUM on December 15, 2014, Respondent contends that she knows nothing about the <lafitnessperspect.com> domain name, and has no affiliation with an entity called Holder of Domain Name <lafitnessperspect.com>. Respondent adds that the telephone number listed in the Complaint once belonged to her while at Rush University Medical Center, and that she works at the address listed in the WHOIS record.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).
Consequently, the Panel determines the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s personal information from the Panel’s decision.
A. Complainant
i) Complainant owns the LA FITNESS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). Complainant uses the mark in connection with health club services. The <lafitnessperspect.com> domain name is confusingly similar to the LA FITNESS mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no association with Complainant, and Respondent is not commonly known by the <lafitnessperspect.com> name. Respondent uses the disputed domain name to offer fitness services, including fitness experts, fitness training services, and exercise classes.
iii) Respondent has engaged in bad faith registration and use. Respondent is using the disputed domain name to operate a website that offers health club services such as fitness experts, exercise programs, and personal training in competition with Complainant’s own offerings in the health and fitness field. Additionally, Respondent has attempted to mislead users as to Complainant’s affiliation with the disputed domain name so as to derive commercial benefit.
B. Respondent
Respondent failed to submit a formal response. However, as addressed immediately below, the FORUM is in receipt of an e-mail sent from Respondent in which Respondent claims she was not the person who registered this domain name. The disputed domain name was registered August 21, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 LA FITNESS mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). Complainant uses the mark in connection with health club services. The Panel agrees that Complainant’s USPTO registration serves to establish its rights in the LA FITNESS mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <lafitnessperspect.com> domain name is confusingly similar to the LA FITNESS mark. Complainant notes that the disputed domain name incorporates the mark in full and merely adds the term “perspect,” which is a shortened form of “perspective.” The Panel determines that the addition of a generic term is insufficient to distinguish a domain name from an incorporated mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Further, the Panel notes that the disputed domain name differs from the mark by the omission of spacing and the addition of the a gTLD, but ultimately determines that these alterations carry no weight in the confusing similarity analysis as spaces are not replicable in domain names, and some TLD is required in all domain names. See 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)). Accordingly, the Panel finds the <lafitnessperspect.com> domain name confusingly similar to the LA FITNESS mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent has no association with Complainant, and Respondent is not commonly known by the <lafitnessperspect.com> name. The Panel notes the WHOIS information lists “Holder of Domain Name <lafitnessperspect.com>” as the registrant of record. The Panel recalls that this listed individual has indicated it has no affiliation with this domain name or the listed organization. The Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent uses the disputed domain name to offer fitness services, including fitness experts, fitness training services, and exercise classes. The Panel notes that the resolving website purports to offer “Personal Training Sessions,” “Cardio/Strength Equipment,” and “Group Exercise Classes” and offers “25% Off Any 3-month Session.” See Compl., at Attached Cislo Decl., Ex. D. The Panel agrees that Respondent’s use of the <lafitnessperspect.com> domain name in furtherance of its own fitness offerings in competition with Complainant amounts to neither a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant claims that Respondent is using the disputed domain name to operate a website that offers health club services such as fitness experts, exercise programs, and personal training in competition with Complainant’s own offerings in the health and fitness field. Complainant argues that such use of the <lafitnessperspect.com> domain name is competitive with Complainant and therefore disruptive of Complainant’s own offerings under the LA FITNESS mark. Prior panels have found bad faith pursuant to Policy ¶ 4(b)(iii) in similar cases. For example, in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel wrote, “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).” The Panel agrees that Respondent is using the disputed domain name to promote itself as a health and fitness provider (as seen in Complainant’s Exhibit D) in competition with Complainant, and therefore finds Respondent’s efforts constitute commercial disruption in violation of Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent has attempted to mislead users as to Complainant’s affiliation with the disputed domain name so as to derive commercial benefit. The Panel recalls that the disputed domain name resolves to a website purporting to offer “Personal Training Sessions,” “Cardio/Strength Equipment,” and “Group Exercise Classes” and offers “25% Off Any 3-month Session.” See Compl., at Attached Cislo Decl., Ex. D. In Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), the panel wrote, “As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).” The Panel agrees that Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) by using the confusingly similar domain name to market itself as a provider of fitness services in competition with Complainant, as Respondent likely generates revenue through this ruse.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lafitnessperspect.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 7, 2015
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