Sara's City Workout, Inc. v. LaPorte
Holdings c/o Admin
Claim
Number: FA0508000535102
Complainant is Sara's City Workout, Inc. (“Complainant”),
represented by David A. Copland of Wildman, Harrold, Allen & Dixon LLP, 225 West Wacker Drive, Chicago, IL 60606. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire
Boulevard #1928, Los Angeles, CA, 90036.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <saracityworkout.com>, registered with Nameking.com,
Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge 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
5, 2005; the National Arbitration Forum received a hard copy of the Complaint August
8, 2005.
On
August 8, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <saracityworkout.com> domain name is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com,
Inc. verified that Respondent is bound by the Nameking.com, Inc. 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 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 1, 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@saracityworkout.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 8, 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, <saracityworkout.com>, is confusingly similar to
Complainant’s SARA’S CITY WORKOUT mark.
2. Respondent has no rights to or legitimate
interests in the <saracityworkout.com> domain name.
3. Respondent registered and used the <saracityworkout.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Sara’s City Workout, Inc, established by extrinsic proof in this proceeding
that it is a leading provider of health and fitness education and certification
services for health and fitness professionals in the United States. Complainant
has used the SARA’S CITY WORKOUT mark continuously in commerce since 1986. Since Complainants first use of the mark in
1986, the SARA’S CITY WORKOUT mark has been prominently featured in advertising
and promotional materials distributed throughout the United States.
Respondent
registered the <saracityworkout.com> domain name April 12,
2004. The disputed domain name resolves
to a website featuring links to third-party websites that offer services that
compete with those of Complainant.
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 to 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 a background of use that would support common law rights in the
SARA’S CITY WORKOUT mark. Under Policy
¶ 4(a)(i), a complainant need not hold a registered trademark to establish
rights in a mark and that common law rights are sufficient. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name Complaint under the Policy); see
also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”).
The Panel finds
that Complainant established common law rights in the SARA’S CITY WORKOUT mark
through its longstanding and continuous use of the mark in commerce for some
nineteen years and that Complainant’s mark is entitled to common law
protection. See Tuxedos By Rose v. Nunez, FA 95248 (Nat.
Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use
was continuous and ongoing, and secondary meaning was established); see also
Fishtech, Inc. v. Rossiter, FA
92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common
law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
Complainant
alleges that the disputed domain name that Respondent registered, <saracityworkout.com>, is
confusingly similar to Complainant’s SARA’S CITY WORKOUT mark pursuant to
Policy ¶ 4(a)(i), as the domain name removes the letter “s” from Complainant’s
mark. Such a change is not enough to overcome a finding of confusing similarity
pursuant to Policy ¶ 4(a)(i). See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Am. Online, Inc.
v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that
the respondent’s domain name <go2AOL.com> was confusingly similar to the
complainant’s AOL mark); see also LOreal USA Creative Inc v. Syncopate.com –
Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding
that omission of an apostrophe does not significantly distinguish a domain name
from the mark).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants.”); 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 Complainant satisfied Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark
contained within the disputed domain name and alleged that Respondent has no
such rights or legitimate interests in the <saracityworkout.com>
domain name. When a complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove
that it has rights or legitimate interests.
Due to Respondent’s failure to respond to the Complaint, the Panel finds
that Respondent has no rights to or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
The papers in
the case established that Respondent is not commonly known by the <saracityworkout.com> 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 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).
Furthermore,
Respondent is using the <saracityworkout.com>
domain name to operate a website featuring commercial links to Respondent’s own
website. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
mark to divert Internet users to third-party websites for Respondent’s own
commercial gain is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s
diversionary use of complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of
complainant, was not a bona fide offering of goods or services); see
also Yahoo! Inc. v. Web Master,
FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of
a confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods
or services); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because the respondent's
sole purpose in selecting the domain names was to cause confusion with the
complainant's website and marks, its use of the names was not in connection
with the offering of goods or services or any other fair use).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also
alleged that Respondent registered and used the confusingly similar domain name
in bad faith. The Panel assumes that
Respondent receives click-through fees for diverting Internet users to
third-party commercial websites. This
supports a finding that Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv). Respondent is using the <saracityworkout.com> domain name to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Furthermore,
Respondent has used the <saracityworkout.com> domain name, which contains
Complainant’s SARA’S CITY WORKOUT mark, to redirect Internet users to a website
featuring links to third-party websites selling products and services that
compete with Complainant’s business.
This suggests that Respondent had actual knowledge of Complainant’s
rights in the mark when it registered the disputed domain name and chose the
disputed domain name based on the goodwill Complainant had acquired in its
SARA’S CITY WORKOUT mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); see also See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
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 <saracityworkout.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 22, 2005
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