Fitness International, LLC v. Furqan Hameed
Claim Number: FA1808001800980
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is Furqan Hameed (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healthlafitness.com>, registered with NameCheap, Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 10, 2018.
On August 13, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <healthlafitness.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@healthlafitness.com. Also on August 15, 2018, 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.
A timely Response was received on August 20, 2018.
On August 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Fitness International, LLC, operates state of the art fitness facilities in over twenty states. Complainant uses its LA FITNESS mark to promote its products and services and established rights in the mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). Respondent’s <healthlafitness.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “health” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <healthlafitness.com> domain name. Respondent is not authorized to use Complainant’s LA FITNESS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the <healthlafitness.com> domain name resolves to an inactive webpage.
Respondent registered and uses the <healthlafitness.com> domain name in bad faith. Respondent offered to sell the domain name to Complainant at a price that exceeds out-of-pocket expenses. Respondent also attempts to disrupt Complainant’s business and creates confusion with Complainant’s mark for Respondent’s commercial gain. Finally, Respondent failed to actively use the domain name.
B. Respondent
Respondent did not contest Complainant’s allegations and stated his willingness to transfer the <healthlafitness.com> domain name.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <healthlafitness.com>domain name.
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.
Complainant claims to have rights in the LA FITNESS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its USPTO registration for the LA FITNESS mark (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). The Panel finds that Complainant has sufficiently demonstrated its rights in the LA FITNESS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <healthlafitness.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “health” and the “.com” gTLD. Adding a generic term and a gTLD to a mark may not sufficiently distinguish a disputed domain name from the mark for purposes of Policy ¶ 4(a)(i). 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 finds that Respondent’s <healthlafitness.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its LA FITNESS mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <healthlafitness.com> domain name lists “Furqan Hameed” as the registrant. The Panel finds that Respondent is not commonly known by the <healthlafitness.com> domain name.
Complainant further alleges the Respondent uses the <healthlafitness.com> domain name to resolve to an inactive website. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to resolve to an inactive site may is not considered a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant provides screenshots of the <healthlafitness.com> website, which indicate that the site is inactive. The Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <healthlafitness.com> domain in bad faith. Specifically, Complainant contends that Respondent offered to sell the disputed domain name to Complainant at a price that exceeds out-of-pocket costs. Offers to sell a disputed domain for more than out-of-pocket costs may constitute bad faith per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Complainant alleges that it contacted Respondent to have the disputed domain name transferred to Complainant. Complainant contends that Respondent offered to sell the domain name to Complainant for $100, which Complainant accepted. Complainant alleges that Respondent later demanded $1,000 for the disputed domain name. The Panel finds that the price of $1000 exceeds out-of-pocket costs associated with the transfer of domain names, evidence that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant alleges that Respondent fails to actively use the <healthlafitness.com> domain name. Failure to use a disputed domain name may evidence bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provided screenshots of the <healthlafitness.com> website, which indicate that the site is inactive. The Panel finds that Respondent failed to actively use the domain name, evidence that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent attempts to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Complainant contends that although Respondent is not currently actively using the <healthlafitness.com> domain name, any use of the domain name would inevitably infringe on Complainant’s rights in the LA FITNESS mark due to the similarity between the mark and the domain name. The Panel agrees and finds from Complainant’s uncontested allegations and evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant has proved this element.
DECISION
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 <healthlafitness.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 28, 2018
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