Peloton Interactive, Inc. v. William Beckett
Claim Number: FA1511001647927
Complainant is Peloton Interactive, Inc. (“Complainant”), represented by Amanda V. Dwight of Dwight Law Group, California, USA. Respondent is William Beckett (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <peloton-cycle.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2015; the Forum received payment on November 19, 2015.
On November 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <peloton-cycle.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@peloton-cycle.com. Also on November 24, 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 December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the PELOTON mark based on registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,580,888, registered Aug. 5, 2014).
Respondent’s disputed domain is confusingly similar to Complainant’s PELOTON mark because the domain includes the whole PELOTON mark and merely adds non-distinguishing features such as a hyphen, the generic term “cycle,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been a licensee of Complainant, authorized to use the PELOTON mark, or been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain, to divert internet users to Respondent’s own website, tarnish Complainant’s mark and products, and sell Complainant’s competing goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent uses the similarity between Complainant’s PELOTON mark and the domain name to confuse and attract internet users for commercial gain through promotion of its competing business. Further, through Respondent’s use of the disputed domain and operation of a business in the same field as Complainant it is clear that Respondent was aware of Complainant’s rights in the PELOTON mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PELOTON mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its PELOTON trademark.
Respondent uses the at-issue domain name to address a website used by Respondent for a competing business.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the PELOTON mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The at-issue <peloton-cycle.com> domain name contains Complainant’s PELOTON trademark in its entirety adding a hyphen and the term “cycle” which is a term often used in conjunction with, and related to, Complainant’s PELOTON mark. The complete domain name has the top-level domain name, “.com,” affixed to the trademark laden string. However, the differences between Respondent’s domain name and Complainant’s PELOTON mark are insufficient to differentiate one from the other for the purposes of the Policy. Therefore, the Panel finds that the <peloton-cycle.com> domain name is confusingly similar to Complainant’s PELOTON trademark under Policy ¶ 4(a)(i). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “William Beckett” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <peloton-cycle.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name, to divert internet users to Respondent’s own website and offer goods that compete with those offered by Complainant’s. Respondent’s <peloton-cycle.com> website displays the message, “Thinking Peloton? Think Again” and displays the heading, “Jeff Wimmer’s StudioCycles.” Additionally, Respondent’s website includes the message “Looking For An Authentic Ride? Jeff Wimmer’s StudioCycles.” Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the similarity between Complainant’s PELOTON mark and the <peloton-cycle.com> domain name to confuse and attract internet users for commercial gain through promotion of its competing business on its <peloton-cycle.com> website. As mentioned in part above concerning Policy ¶ 4(a)(ii), Respondent’s <peloton-cycle.com> domain name addresses a website that prominently displays criticism of Complainant’s products and displays advertisements for Respondent’s own products and services. Such use of the confusingly similar domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Additionally, it is apparent that Respondent registered the <peloton-cycle.com> domain name knowing that Complainant had trademark rights in the PELOTON trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, the Inclusion of the suggestive term “cycle” in the domain name and from Respondent’s use of the domain name to addresses a website that directly competes with Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <peloton-cycle.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peloton-cycle.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 29, 2015
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