24 Hour Fitness USA, Inc. v. Domain Administrator / Whois Watchdog
Claim Number: FA1501001601950
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator / Whois Watchdog (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hourfiness.com>, registered with Rebel.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2015; the Forum received payment on January 26, 2015.
After numerous requests, the Registrar, Rebel.com, has not confirmed to the National Arbitration that the <24hourfiness.com> domain name is registered with Rebel.com or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On February 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2015, 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@24hourfiness.com. Also on February 6, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant has rights in the 24 HOUR FITNESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,130,895, registered Jan. 20, 1998). Complainant uses the 24 HOUR FITNESS mark in connection with health and fitness related products and services. The <24hourfiness.com> domain name is confusingly similar to the 24 HOUR FITNESS mark. The domain name contains the Complainant’s mark in full, removes a single character “t,” and adds a generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record does not show Respondent is known by the domain name. Additionally, Complainant has not licensed, authorized, or permitted Respondent to register the domain incorporating Complainant’s mark. Further, Respondent’s lack of rights or legitimate interests in the <24hourfiness.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that displays hyperlinks which redirect Internet users to Complainant’s website and Complainant’s competitors.
Respondent has engaged in bad faith registration and use of the <24hourfiness.com> domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, which features competing hyperlinks. Further, Respondent has used the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s 24 HOUR FITNESS mark. Finally, Respondent has used a practice of typosquatting to mislead consumers, which is further evidence of bad faith registration under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, 24 Hour Fitness USA, Inc., has rights in the 24 HOUR FITNESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,130,895, registered Jan. 20, 1998). Complainant uses the 24 HOUR FITNESS mark in connection with health and fitness related products and services.
Respondent, Domain Administrator / Whois Watchdog, registered the <24hourfiness.com> domain name on Oct. 24, 2005. Respondent’s disputed domain name resolves to a website that displays hyperlinks which redirect Internet users to Complainant’s website and Complainant’s competitors.
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 has rights in the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <24hourfiness.com> domain name is confusingly similar to the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i). The domain name contains Complainant’s mark in full, removes a single character “t,” and adds a generic top-level domain “.com.”
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).
Respondent has no rights or legitimate interests in the disputed domain name. The WHOIS record lists “Domain Administrator / Whois Watchdog “as the registrant of record. Complainant has not licensed, authorized, or permitted Respondent to register the domain incorporating Complainant’s mark. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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).
Further, Respondent does not use the <24hourfiness.com> domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Respondent’s disputed domain name resolves to a website that displays hyperlinks, which redirect Internet users to Complainant’s website and Complainant’s competitors. The disputed domain name resolves to fitness-related links such as “LifeTime - Try Free,” “Yoga for Beginners,” and “Anytime Fitness.” 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).”).
Respondent has engaged in bad faith registration and use of the <24hourfiness.com> domain name Policy ¶ 4(b)(iii). Specifically, Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website to Respondent’s website, which features competing hyperlinks. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Respondent has used the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s 24 HOUR FITNESS mark. Therefore, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
As further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii), Respondent has used typosquatting to mislead consumers and seek financial gain by creating a likelihood of confusion with Complainant’s mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24hourfiness.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 19, 2015
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