24 Hour Fitness USA, Inc. v. Kim
Hyung-Gon
Claim
Number: FA0508000528837
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”),
represented by Susan E. Hollander of Manatt, Phelps & Phillips, LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA, 94304. Respondent is Kim Hyung-Gon (“Respondent”), Taechi-dong 941-26, Kangnam-gu, Seoul
135280, Korea (South), KR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <24-hour-fitness.biz>, registered with Yesnic
Co., Ltd.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically August
1, 2005; the National Arbitration Forum received a hard copy of the Complaint August
4, 2005.
On
August 9, 2005, Yesnic Co., Ltd. confirmed by e-mail to the National
Arbitration Forum that the <24-hour-fitness.biz> domain name is
registered with Yesnic Co., Ltd. and that Respondent is the current registrant
of the name. Yesnic Co., Ltd. verified
that Respondent is bound by the Yesnic Co., Ltd. registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
August 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 30, 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@24-hour-fitness.biz by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 7, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <24-hour-fitness.biz>, is confusingly similar to
Complainant’s 24 HOUR FITNESS mark.
2. Respondent has no rights to or legitimate
interests in the <24-hour-fitness.biz> domain name.
3. Respondent registered and used the <24-hour-fitness.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
world’s largest privately owned and operated health and fitness chains in the
world. Complainant offers a wide
selection of cardiovascular and strength training machines and exercise
equipment, group exercise programs, personal training programs, basketball and
raquetball courts, lap pools, rock climbing, saunas, pro shops, child care,
knowledgeable staff and many other services.
Complainant holds registrations with the United States Patent and
Trademark Office (“USPTO”) for its 24 HOUR FITNESS mark (including Reg. No.
2,130,895 issued January 20, 1998; Reg. No. 2,395,501 issued October 17, 2000;
and Reg. No. 2,477,323 issued August 14, 2001). In addition, Complainant holds trademark registrations and
pending trademark applications in at least eighteen countries around the world,
including South Korea, Respondent’s purported location. Complainant has used its 24 HOUR FITNESS
mark in commerce continuously since at least as early as 1996.
Complainant has spent substantial amounts of effort and money promoting
and advertising its 24 HOUR FITNESS mark by using newspapers, magazines,
signage at major professional sporting events, national television, cable and
the Internet. Additionally, Complainant
operates a popular website at the <24hourfitness.com> domain name.
Respondent registered the <24-hour-fitness.biz> domain name November 7, 2001. Respondent has not made use of the disputed
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."
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
will draw such inferences as the Panel 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 Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
24 HOUR FITNESS mark through registration with the USPTO and with trademark
authorities in various other countries.
Complainant’s registration of its mark with the USPTO is sufficient to
establish a prima facie case of Complainant’s rights in the mark for
purposes of Policy ¶ 4(a)(i). See
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.”); see also 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.”).
The <24-hour-fitness.biz>
domain name that Respondent registered differs from Complainant’s 24 HOUR
FITNESS mark only with the additions of hyphens between the words in the mark
and the generic top-level domain (“gTLD”) “.biz.” These changes are insignificant and cannot create a domain
name that is distinguishable from Complainant’s mark. Therefore, the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat.
Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark
does not create a distinct characteristic capable of overcoming a Policy ¶
4(a)(i) confusingly similar analysis.”); see also Columbia Sportswear
Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (“The use of hyphens
‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue
is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR
COMPANY.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”).
Accordingly, the
Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under the
Policy, Complainant has the initial burden of proving that Complainant has
rights to and legitimate interests in a mark contained within a disputed domain
name and that the respondent lacks such rights and legitimate interests. In Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel
held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a prima
facie case and the burden of proof is then shifted onto the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”).
Having found
that Complainant met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent met its burden to establish
rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <24-hour-fitness.biz>
domain name and that Respondent is not affiliated with Complainant in any
way. The WHOIS information for the
disputed domain name lists Respondent as “Kim Hyung-Gon” and identifies no
other connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Furthermore,
Complainant asserts that Respondent is not using the <24-hour-fitness.biz>
domain name. Without a response from
Respondent to assert a use or intended use, the Panel accepts as true
Complainant’s assertion that Respondent is not using the disputed domain name. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”).
The Panel holds
that Respondent’s nonuse of the <24-hour-fitness.biz> domain name
for nearly four years constitutes passive holding and is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(i) or (iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see
also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's passive holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent registered and passively held the disputed domain
name. Although Policy ¶ 4(b) includes a
list of four specific situations that constitute evidence of bad faith
registration and use, the Panel is not limited to this list and may take into
account additional evidence in making a finding under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v.
Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent did
not provide evidence that would suggest that Respondent is holding the disputed
domain name for any non-infringing purpose.
Without an indication that Respondent registered the domain name with
the intention of using it for a legitimate purpose, the Panel finds that
Respondent’s passive holding of the <24-hour-fitness.biz> domain
name for almost four years constitutes bad faith registration and use under
Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also 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);
see also Caravan Club v. Mrgsale,
FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no
use of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith).
Furthermore,
Complainant’s registration of its mark with the USPTO and other international
authorities is sufficient to confer upon Respondent constructive notice of
Complainant’s rights in the 24 HOUR FITNESS mark included in the domain
name. Respondent’s constructive notice
coupled with Respondent’s registration of a domain name that includes
Complainant’s registered 24 HOUR FITNESS mark in its entirety permits a finding
that Respondent knew of Complainant’s rights in the mark when registering the
disputed domain name. Respondent’s
registration of the <24-hour-fitness.biz> domain name with actual
or constructive knowledge of Complainant’s rights in the mark evidences 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 Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“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.”).
The Panel finds
that Complainant satisfied 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 <24-hour-fitness.biz> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 21, 2005
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