24 Hour Fitness USA, Inc. v. Johnathan Brown
Claim Number: FA1609001694045
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, United States. Respondent is Johnathan Brown (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hourfitnesswater.com> (the ‘Domain Name’) registered with 1&1 Internet SE.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2016; the Forum received payment on September 16, 2016.
On September 19, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <24hourfitnesswater.com> Domain Name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 September 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2016 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@24hourfitnesswater.com. Also on September 21, 2016, 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 October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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’s contentions can be summarised as follows:
Complainant is one of the largest privately held health and fitness chains in the world. Founded in 1983, it offers over 400 facilities in the USA. It owns 24hourfitness.com.
As a result of widespread public recognition and renown, the 24 HOUR FITNESS and 24 7 FITNESS marks have become identified in the minds of consumers exclusively with Complainant’s high quality services and products such as to establish common law rights. Prior panels have recognised the strength of the 24 HOUR FITNESS mark. Complainant owns trade mark registrations consisting of or incorporating its famous 24HOUR FITNESS and 24 7 FITNESS marks including in the USA where Respondent is based for health club and/or other services and products.
The Domain Name routes users to a web site which has not yet been configured or otherwise used.
Complainant sent Respondent a letter advising the latter of Complainant’s rights. Respondent initially agreed to transfer the Domain Name to Complainant on execution of a written agreement but Respondent stopped responding and this did not happen.
Complainant’s first use of its 24 HOUR FITNESS mark in 1996 and its earliest trade mark registration for that mark in 1998 long precedes registration of the Domain Name in 2015.
The Domain Name wholly incorporates Complainant’s well-known 24 HOUR FITNESS mark and is confusingly similar to Complainant’s domain name. The addition of the generic word ‘water’ only emphasises the confusion likely to arise.
Respondent has not made bona fide use of the Domain Name, is not commonly known by it and Complainant has not licensed Respondent to use its mark. Respondent is not making non-commercial or fair use of the name. Respondent does not have rights or legitimate interests in the Domain Name.
Complainant’s mark is well known and Respondent had knowledge or should have known about Complainant’s rights. Respondent has failed to use the Domain Name for two years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the trade mark 24 HOUR FITNESS in the USA for health club services and other services and products with first use recorded as 1996.
The WhoIS data shows the creation of the Domain Name as 2013. The Domain Name has not been used. Respondent agreed to transfer the Domain Name to Complainant in correspondence but this did not happen.
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(f), 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 (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 or Confusingly Similar
The Domain Name consists of Complainant's 24 HOUR FITNESS mark (which is registered in the USA for health club and other services and products with first use in commerce recorded as 1996), the generic word ‘water’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See Wiluna Holdings LLC v Edna Sherman, FA 1652781 (Forum Jan 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy 4 (a)(i). The Panel agrees that the addition of the generic terms to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Name from the 24 HOUR FITNESS mark. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
Rights or Legitimate Interests
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s marks in the Domain Name. It does not appear to be commonly known by the Domain Name or authorised by Complainant. It appeared to acknowledge in correspondence that Complainant was entitled to the Domain Name and agreed to transfer the Domain Name to Complainant, although this did not happen. There is no evidence of any use by Respondent of the Domain Name. See Bloomberg LP v SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004)(‘The Panel finds that the failure to make an active use of a domain name that is identical to a Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4 ( c ) (i) and it is not a legitimate non-commercial or fair use of the domain name pursuant to Policy 4( c ) (iii). As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not made any active use of the Domain Name for two years. Panels have found evidence of bad faith registration and use pursuant to Policy 4 ( c ) (iii) where a Respondent fails to make any active use of a domain name. See DCI SA v Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)(concluding that the respondent’s [failure to make active use of the ] domain name satisfies the requirement of 4 (a)(iii) of the Policy). Complainant asserts that Respondent must have known of its name due to the fame of its mark in the USA, where Respondent is based. Respondent has not responded and, therefore, has not denied, that this is the case. In correspondence Respondent agreed to transfer the Domain Name to Complainant, although this did not happen. As such, the Panel finds that that Respondent has engaged in bad faith registration and use under 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 <24hourfitnesswater.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<October 27, 2016>>
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page