24 Hour Fitness USA, Inc. v. Above.com Domain Privacy
Claim Number: FA1501001601951
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com>, registered with ABOVE.COM PTY LTD.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 26, 2015; the Forum received payment January 26, 2015.
On January 29, 2015, ABOVE.COM PTY LTD. confirmed by e-mail to the Forum that the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD. verified that Respondent is bound by the ABOVE.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@23hourfitness.com, postmaster@24hourfirtness.com, postmaster@24hpurfitness.com. Also on January 30, 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 February 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 names be transferred from Respondent to Complainant.
Complainant’s Contention in this proceeding:
Complainant owns the 24HOURFITNESS.COM mark through registration with the United States Patent and Trademark Office. (“USPTO) (e.g., Reg. No. 2,395,153, registered Oct. 17, 2000). Complainant uses the 24HOURFITNESS.COM mark in connection with its health and fitness-related products, information, and services. The <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names are confusingly similar to the 24HOURFITNESS.COM mark. The domain names contain the Complainant’s mark and merely feature a variety of misspellings of Complainant’s registered mark. The disputed domain names differ by single characters from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as the WHOIS records for <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> do not reflect that Respondent is commonly known by these disputed domain names. Further, Complainant has never authorized Respondent to use the 24HOURFITNESS.COM mark, and Complainant is not a sponsor or affiliated with Respondent in any way. Respondent’s lack of rights or legitimate interests in the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to parked websites that display generic links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H.
Respondent engaged in bad faith registration and use of the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, as the websites feature competing hyperlinks. Additionally, Respondent used the disputed domain names to intentionally attract Internet users to Respondent’s website, for its own commercial gain by creating a likelihood of confusion with Complainant’s 24HOURFITNESS.COM mark. Respondent’s actions qualify as bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent’s Contention in this Proceeding
Respondent did not submit a response.
The Panel notes that Respondent registered the disputed domain names, <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com>, Apr. 8, 2008, Apr. 30, 2008, and Feb. 13, 2008, respectively.
Complainant established rights and legitimate interests in its well-known 24 HOUR FITNESS mark,
Respondent has no such rights to or legitimate interests in the mark or the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant owns the 24HOURFITNESS.COM mark through registration with the USPTO (e.g., Reg. No. 2,395,153, registered Oct. 17, 2000). Complainant uses the 24HOURFITNESS.COM mark in connection with its health and fitness- related products, information, and services. This Panel finds that Complainant’s valid registration of the 24HOURFITNESS.COM mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names are confusingly similar to the 24HOURFITNESS.COM mark. The domain names contain the Complainant’s mark and a variety of misspellings. The disputed domain names differ by only a single substituted or added character from Complainant’s mark, and Complainant alleges Respondent is taking advantage of Internet users’ typographical errors. Previous Panels found confusing similarity between complainant’s registered mark and respondent’s misspelled versions of a mark. 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). This Panel finds that the disputed domain names are confusingly similar to the 24HOURFITNESS.COM mark under Policy 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that each of the three disputed domain names is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, as the WHOIS records for <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> do not reflect that Respondent is commonly known by these disputed domain names. The Panel notes that the WHOIS record simply lists “Above.com Domain Privacy” as the registrant of record for each disputed domain name. See Compl., at Attached Ex. I. Further, Complainant has never authorized Respondent to use the 24HOURFITNESS.COM mark and Complainant does not sponsor or have any affiliation with Respondent in any way. The Panel finds that these contentions are sufficient to support a finding that Respondent has no rights or legitimate interests in 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends Respondent’s lack of rights or legitimate interests in the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to parked websites that display generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that the disputed domain names feature fitness-related links such as “24 Hour Fitness Club,” “Certified Fitness Trainers,” and “Athletic Fitness Training.” See Compl., at Attached Ex. H. Such actions sufficiently establish that Respondent’s websites are not operated in connection with a bona fide offering of goods or services. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Lacking a bona fide offering of goods or services, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name in dispute under Policy ¶ 4(c)(i). Further, the Panel agrees that as Respondent’s offerings are presumably for financial gain, there can logically be no “noncommercial or fair use” under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent engaged in bad faith registration and use of the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website by featuring competing hyperlinks at the websites. See Compl., at Attached Ex. H. Complainant asserts that these actions disrupt Complainant’s business and thus support findings of bad faith registration. 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)). Accordingly, this Panel finds bad faith registration under Policy ¶ 4(b)(iii).
Additionally, Complainant asserts Respondent used the disputed domain names to intentionally attract Internet users to Respondent’s website, for Respondent’s own commercial gain, by creating a likelihood of confusion with Complainant’s 24HOURFITNESS.COM mark. The Panel recalls that the disputed domain names resolve to websites that feature hyperlinks that connect to both Complainant’s site and competing health and fitness services. See Compl., at Attached Ex. H. Complainant argues that Respondent uses the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names for commercial gain, presumably by seeking “click through” revenue, and takes advantage of Complainant’s well known mark to achieve a wrongful competitive advantage. Thus, Complainant has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). This Panel agrees that Respondent’s use as shown in Exhibit H demonstrates that Respondent here seeks commercial gain through a likelihood of confusion with Complainant’s mark and offerings of similar services, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith. Prior panels have found that the practice of typosquatting creates consumer confusion, and is thus evidence of bad faith registration and use. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). This Panel finds that the Respondent here has engaged in typosquatting, which is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <23hourfitness.com>, <24hourfirtness.com>, and <24hpurfitness.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 12, 2015
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