24 Hour Fitness USA, Inc. v. Petrov
Vasiliy
Claim
Number: FA0506000489943
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”),
represented by Laura M. Franco, of Manatt, Phelps & Phillips LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA 94304. Respondent is Petrov Vasiliy (“Respondent”), str. Lenina 45-32, Kasan 400545,
Russian Federation.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <group-x.biz>, registered with Go Daddy
Software, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 3, 2005.
On
June 2, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <group-x.biz> is registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go
Daddy Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
June 7, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 27, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@group-x.biz by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 30, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <group-x.biz>
domain name is confusingly similar to Complainant’s GROUP X mark.
2. Respondent does not have any rights or
legitimate interests in the <group-x.biz> domain name.
3. Respondent registered and used the <group-x.biz>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, 24
Hour Fitness USA, Inc., is one of the largest privately held health and fitness
chains in the world. Complainant’s
facilities are distinguished by their high quality services, including numerous
cardio-and strength training machines and exercise equipment and other various
health related equipment, machinery and programs. Complainant has provided these services under the GROUP X mark
since 1998.
Complainant
currently offers approximately 300 facilities in the United States alone, with
over three million members.
Complainant has
registered the GROUP X mark with the U.S. Patent and Trademark Office (“USPTO”)
(Reg. No. 2,350,909 issued May 16, 2000).
Respondent
registered the <group-x.biz> domain name on November 16,
2004. Respondent’s domain name resolves
to a pornographic website.
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."
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.
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.").
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 has
established with extrinsic proof in this proceeding that it has rights in the
GROUP X mark through registration with the USPTO and by continuous use of the
mark in commerce. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
The <group-x.biz>
domain name is confusingly similar to Complainant’s GROUP X mark because the
domain name incorporates Complainant’s mark in its entirety and merely adds a
hyphen between the word “group” and the letter “x.” This change is not enough to overcome the confusingly similar aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1,
2000) (finding <game-boy.com> identical and confusingly similar
Complainant’s GAME BOY mark, even though the domain name is a combination of
two descriptive words divided by a hyphen); see
also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat.
Arb. Forum Aug. 14, 2000) (finding that the <loan-mart.com> domain name
WAS confusingly similar to Complainant’s mark).
Furthermore,
Respondent’s <group-x.biz> domain name is confusingly similar to
Complainant’s GROUP X mark because the domain name incorporates Complainant’s
mark in its entirety and deviates with the addition of the generic top-level
domain ‘.biz.’ The addition of a
generic top-level domain does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Hewlett-Packard Co. v. Dolzer, FA 250246 (Nat. Arb. Forum May 24,
2004)(“[T]he addition of the generic top-level domain “.biz” is irrelevant in
determining whether the <hp-cartridges.biz> domain name is confusingly
similar to Complainant’s mark.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <group-x.biz> domain name and the goodwill associated
with Complainant’s GROUP X mark to direct Internet users to a pornographic
website featuring links to other pornographic websites. See Isleworth Land Co. v. Lost In Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s
use of its domain name to link unsuspecting Internet traffic to an adult
orientated website, containing images of scantily clad women in provocative
poses, did not constitute a connection with a bona fide offering of goods or
services or a noncommercial or fair use); see also McClatchy Mgmt. Serv.,
Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
Respondent’s use of the disputed domain names to divert Internet users
to a website that features pornographic material, had been “consistently held”
to be neither a bona fide offering of goods or services . . . nor a legitimate
noncommercial or fair use); see also Nat’l
Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr.
17, 2000) (finding that Respondent had no rights or legitimate interests in the
<chargergirls.com> and <chargergirls.net> domain names where
Respondent linked these domain names to its pornographic website).
Furthermore,
Respondent has offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <group-x.biz> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed 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 respondent was not commonly known by the mark and never applied
for a license or permission from complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because respondent is not commonly known by the disputed
domain name or using the domain name in connection with a legitimate or fair
use); see also Hartford Fire Ins.
Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding
that respondent has no rights or legitimate interests in domain names because
it is not commonly known by complainant’s marks and respondent has not used the
domain names in connection with a bona fide offering of goods and services or
for a legitimate noncommercial or fair use).
Moreover,
Complainant has asserted that Respondent has no rights or legitimate interests
in the disputed domain name, and Respondent, in not submitting a response, has
failed to rebut this assertion. Thus,
the Panel may interpret Respondent’s failure to respond as evidence that
Respondent lacks rights and legitimate interests in the <group-x.biz>
domain name pursuant to Policy ¶ 4(a)(ii).
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding that where complainant has asserted that respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once complainant asserts that respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by complainant that respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
respondent to demonstrate that such a right or legitimate interest does exist);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <group-x.biz> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii) by using the domain name, which contains a
confusingly similar version of Complainant’s GROUP X mark, to market
pornographic material. Such use
constitutes dilution and is evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
Respondent’s
domain name diverts Internet users wishing to search under Complainant’s
well-known mark to a website providing adult-oriented and pornographic
material, which results in Internet user confusion. The Panel infers that Respondent commercially benefits from its
use of the disputed domain name by receiving click-through fees from its
diversion of Internet users to pornographic websites. Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) (“While an intent to confuse consumers is not required for a finding
of trademark infringement, intent to deceive is strong evidence of a likelihood
of confusion.”); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) where the domain name in question was obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore,
Respondent registered the <group-x.biz> domain name with actual or
constructive knowledge of Complainant’s rights in the GROUP X mark due to
Complainant’s registration of the mark with the United States Patent and
Trademark Office. Moreover, the Panel
infers that Respondent registered the domain name with knowledge of
Complainant’s rights in the mark due to Complainant’s aggressive promotion and
use of the mark in commerce.
Registration of a domain name that is confusingly similar to another’s
mark despite actual or constructive knowledge of the mark holder’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when the respondent
reasonably should have been aware of the complainant’s trademarks, actually or
constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a
status that confers constructive notice on those seeking to register or use the
mark or any confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18.
2000) (finding that Respondent had actual and constructive knowledge of
Complainant’s EXXON mark given the worldwide prominence of the mark and thus
Respondent registered the domain name in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <group-x.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret., Panelist
Dated:
July 14, 2005
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