Total Gym Global Corp. v. Tulip Trading Company
Claim Number: FA1707001741974
Complainant is Total Gym Global Corp. (“Complainant”), represented by Margaret Esquenet of Finnegan, Henderson, Farabow, Garret & Dunner, L.L.P., District of Columbia, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <totaldirectgym.com>, registered with Key-Systems GmbH.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2017; the Forum received payment on July 27, 2017.
On August 1, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <totaldirectgym.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 August 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2017 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@totaldirectgym.com. Also on August 2, 2017, 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 August 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the world’s leading privately-held manufacturer of functional and bodyweight training equipment. Its products are sold through dealers around the country and are advertised on both television and radio. Today, with over $1.2 billion in sales, Complainant’s products are distributed in over 23 countries and used in 14,000 physical therapy clinics, athletic training facilities, hospitals, universities, professional sports teams and health clubs, inspiring over 24 million workouts per year worldwide. Complainant uses the TOTAL GYM mark to promote its business. Complainant registered the mark in the United States in 1998. The mark is also registered in other countries around the world.
According to Complainant, the disputed domain name is confusingly similar to its mark because it merely eliminates the spacing and includes the descriptive term “direct” as well as the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its mark in any fashion and Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Instead, Respondent is using the disputed domain name to resolve to a website exclusively featuring pay-per-click advertisements that compete with Complainant’s fitness equipment business. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain in bad faith. Respondent has shown a pattern of bad faith registration and use through its involvement in prior UDRP decisions resulting in transfers. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the TOTAL GYM mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Respondent’s actual knowledge of Complainant’s rights in the mark as well as its use of a privacy service are further evidence of bad faith. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TOTAL GYM, with rights dating back to 1998.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names points to a website that features click-through advertising for 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(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.”).
The disputed domain name is confusingly similar to Complainant’s mark because it eliminates the spacing and merely includes the descriptive term “direct” as well as the gTLD “.com” to the fully incorporated mark. The elimination of spacing and inclusion of descriptive words and a TLD are not sufficiently distinguishing to overcome a finding of confusing similarity. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Homer TLC, Inc. v. KAREL KAPTEYN / BEE38, Case No. FA1504001613701 (Forum May 13, 2015) (finding confusing similarity where “Complainant claims the <homeupgradedepot.com> domain name is confusingly similar to its THE HOME DEPOT mark because Respondent has simply dropped the ‘the’ from Complainant’s mark and added the generic term ‘upgrade’ in-between the words of the mark. The disputed domain name also differs from Complainant’s mark by the addition of the generic top-level domain (‘gTLD’) ‘.com.’ Generally speaking, deleting a minor portion of a mark and addition of a generic term are not sufficient to prevent a finding of confusing similarity.”); see also Cash Converters Pty Ltd v. Craig Nelson, Case No. D2013-0673 (WIPO May 27, 2013) (“The disputed domain names [<carcashconverters.com> and <cashcarconverters.com>] differ from this [CASH
CONVERTERS] mark only by the inclusion of the word ‘car’, either before the mark or in between its constituent elements. The mere inclusion of this common English word does nothing to distinguish either of the disputed domain names from the Complainant’s mark and as a result the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trade mark.”); see also Sleep Bamboo, Inc. v. Onedin Sportswear, Case No. FA1106001392777 (Forum July 20, 2011) (“Respondent’s <sleepcomfortbamboo.com> domain name is confusingly similar to Complainant’s SLEEP BAMBOO mark. The domain name incorporates Complainant’s SLEEP BAMBOO mark entirely and merely alters it by inserting the descriptive word ‘comfort,’ deleting the space between the words of the mark, and adding the generic top-level domain (‘gTLD’) ‘.com.’). As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark in the sense of the Policy.
Complainant has not licensed or otherwise authorized Respondent to use its TOTAL GYM mark in any fashion. Per the WHOIS of record, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “TULIP TRADING COMPANY” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving website exclusively features pay-per-click advertisements that compete with Complainant’s fitness equipment business. Use of a domain name to display pay-per-click advertisements is not a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the TOTAL GYM mark by confusing Internet users, and by offering click-through advertising to Complainant’s competitors. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content by including competing content therein constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). See State Farm Mutual Automobile Insurance Company v. Tulip Trading
Company, FA1611001701155 (Forum Dec. 12, 2016) (“Respondent has caused hyperlinks to Complainant’s competitors to resolve through Respondent’s dynamic parking page at <statefarmclaimstatus.com>. This constitutes bad faith disruption under Policy ¶4(b)(iii). . . . The hyperlinks display items such as ‘General Car Insurance Company,’ ‘Homeowners Insurance Company,’ and ‘State Auto Insurance Company.’ The hyperlinks compete with Complainant and its insurance offerings. Respondent has registered and used <statefarmclaimstatus.com> in bad faith under Policy ¶4(b)(iii).”); see also The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”); see also Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum February 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent created a disruptive website and fostered Internet user confusion and therefore registered and used the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent has engaged in bad faith registration and use due to its involvement in prior UDRP decisions that resulted in transfers. A Respondent’s history of past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Vanguard Trademark Holdings USA, LLC v. Tulip Trading Company, Case No. FA1612001706140 (Forum Jan. 16, 2017) (“Respondent has been a party to multiple adverse UDRP decision such as … . Respondent’s history of cybersquatting shows a clear pattern of domain name abuse and thereby suggests Respondent’s bad faith in the instant proceedings regarding Respondent’s <alamobic.net> domain name pursuant to Policy ¶ 4(b)(ii).”).
Respondent has been the respondent in the following cases: Tytenz Sports, LLC d/b/a Hippie Runner v. Tulip Trading Company, FA1701001714500 (Forum Mar. 21, 2017); Vanguard Trademark Holdings USA, LLC v. Tulip Trading Company, FA1612001706140 (Forum Jan. 16, 2017); Kellogg North America Company v. Tulip Company /Tulip Trading Company, FA 1671756 (Forum May 31, 2016); State Farm Mutual Automobile Insurance Company v. Tulip Company / Tulip Trading Company, FA 1681653 (Forum Aug. 2, 2016); TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016); Emerson Electric Co. v. Hulmiho Ukolen / Poste
restante, FA1602001659000 (Forum Mar. 4, 2016). In light of the foregoing, the Panel finds that Respondent has shown a pattern of bad faith registration and use that leads to a conclusion that Respondent is acting in bad faith in the present case under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <totaldirectgym.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 24, 2017
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