24 Hour Fitness USA Inc. v. Internet Revenue Services, Inc.
Claim Number: FA0701000888715
Complainant is 24 Hour Fitness USA Inc. (“Complainant”), represented by Laura
M. Franco, of Manatt Phelps & Phillips LLP, 1001
Page Mill Road Bldg. 2, Palo Alto, CA 94304. Respondent is Internet Revenue Services, Inc. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <24hrfittnes.com>, registered with Moniker Online Services.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 18, 2007.
On January 29, 2007, Moniker Online Services confirmed by e-mail to the National Arbitration Forum that the <24hrfittnes.com> domain name is registered with Moniker Online Services and that Respondent is the current registrant of the name. Moniker Online Services has verified that Respondent is bound by the Moniker Online Services 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 February 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2007 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@24hrfittnes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <24hrfittnes.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <24hrfittnes.com> domain name.
3. Respondent registered and used the <24hrfittnes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 24 Hour Fitness
Complainant has continuously used the 24 HOUR FITNESS mark since 1996 and the abbreviated 24 HOUR mark since as early as 1983. Complainant has registered the 24 HOUR FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,633,150 issued October 8, 2002; Reg. No. 2,130,895 issued January 20, 1998) and with trademark authorities in at least seventeen other countries around the world.
On December 11, 2005, Respondent registered the <24hrfittnes.com> domain name. Since that date, Respondent’s domain name has resolved to a website displaying advertisements, a search engine feature, and links to various third-party websites, some of which are the websites of 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."
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 registered the 24 HOUR FITNESS mark with the United States Patent and Trademark Office (“USPTO”) and in numerous other countries around the world. These trademark registrations sufficiently demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Respondent’s <24hrfittnes.com> domain name differs
from Complainant’s 24 HOUR FITNESS mark in several ways. First, Respondent abbreviates the term “hour”
to “hr.” Second, Respondent has added an
extra “t” to the term “fitness” and removed an “s.” Third, Respondent has removed the spaces
between terms of the mark. Finally,
Respondent has added the generic top-level domain (“gTLD”) “.com.” Despite these alterations, the Panel does not
find any of them to sufficiently distinguish the <24hrfittnes.com> domain name from the 24 HOUR FITNESS mark. Consequently, the Panel finds that Respondent’s
<24hrfittnes.com> domain name
is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <24hrfittnes.com>
domain name. See 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); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “Internet Revenue Services, Inc.,” and there is no other evidence
in the record suggesting that Respondent is commonly known by the <24hrfittnes.com> domain name, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also
Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) by maintaining a search engine website with advertisements and sponsored links. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel found that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry. As Respondent’s website also contains links to Complainant’s competitors in the health and fitness industry and is likely receiving click-through fees for diverting Internet users to these competing websites, Respondent has failed to show that it has rights or legitimate interests in the <24hrfittnes.com> domain name pursuant to either Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See The Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Furthermore, Respondent’s <24hrfittnes.com> contains a misspelling of Complainant’s 24 HOUR
FITNESS mark. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the
panel found that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names.” The Panel in this case also finds that
Respondent’s registration of a misspelled variation of Complainant’s 24 HOUR
FITNESS mark shows that Respondent has no rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
By maintaining a website with advertisements and links, some of which feature competing companies, Respondent has apparently registered and is using the <24hrfittnes.com> domain name to disrupt Complainant’s business. The Panel therefore concludes that Respondent has violated Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed doamin name to operate a commercial search engine with links to the complainant’s competitors).
Respondent has also registered and is using the <24hrfittnes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent likely receives click-through fees for each consumer it diverts to competing and non-competing websites. Respondent is therefore taking advantage of the confusing similarity between the disputed domain name and Complainant’s 24 HOUR FITNESS mark in order to profit from the goodwill associated with the mark, which provides strong evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See The Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds further evidence of bad faith registration and use because Respondent has engaged in typosquatting by registering and using a domain name that is a misspelled variation of Complainant’s 24 HOUR FITNESS mark. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel concluded that the respondent’s registration and use of the <zonelarm.com> domain name, which was confusingly similar to the complainant’s ZONE ALARM mark, constituted bad faith under Policy ¶ 4(a)(iii) because respondent was capitalizing on the typographical errors of Internet users for its own commercial gain. The panel in Microsoft Corp. v. Domain Registration Phil., FA 877979 (Nat. Arb. Forum Feb. 20, 2007) also concluded that the respondent registered and used the typosquatted <microssoft.com> domain name in bad faith because it was a mere misspelling of the complainant’s MICROSOFT mark. As similar circumstances exist in the present case, the Panel concludes that Respondent has engaged in typosquatting by registering and using the <24hrfittnes.com>, demonstrating bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel concludes that Complainant has 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 <24hrfittnes.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 9, 2007
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