T.R. World Gym-IP, LLC v. Jill Yang
Claim Number: FA0704000956677
Complainant is T.R. World Gym-IP, LLC (“Complainant”), represented by Teresa
C. Tucker of Grossman, Tucker, Perreault & Pfleger
PLLC, 55 South Commercial Street, Manchester, NH 03101. Respondent is Jill Yang (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <worldgymfitnesscenters.com>, registered with Go Daddy Software, Inc.
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 April 10, 2007; the National Arbitration Forum received a hard copy of the Complaint April 11, 2007.
On April 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldgymfitnesscenters.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 April 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@worldgymfitnesscenters.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2007, 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, <worldgymfitnesscenters.com>,
is confusingly similar to Complainant’s
2. Respondent has no rights to or legitimate interests in the <worldgymfitnesscenters.com> domain name.
3. Respondent registered and used the <worldgymfitnesscenters.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, T.R. World
Gym-IP, LLC, holds a trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the
Respondent registered the <worldgymfitnesscenters.com>
domain name April 6, 2006. Respondent is
using the disputed domain name to redirect Internet users to Respondent’s
website displaying a search engine and links to third-party websites in
competition with Complainant under the
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 to and legitimate interests in the
The disputed domain name that
Respondent registered, <worldgymfitnesscenters.com>,
is confusingly similar to Complainant’s
Additionally, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Panels have previously held that the mere addition of a gTLD is not relevant in determining whether a domain name is confusingly similar to a mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant alleges that
Respondent has no such rights to or legitimate interests in the <worldgymfitnesscenters.com> domain
name. Complainant’s submission
establishes a prima facie case, which shifts the burden to Respondent to
prove that it does have rights or legitimate interests in the disputed domain
name pursuant to policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”).
The Panel assumes that Respondent
does not have rights or legitimate interests here because Respondent has failed
to respond to the Complaint. See
Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”).
However, the Panel considers all available evidence before determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Complainant contends that Respondent is using the disputed <worldgymfitnesscenters.com> domain name to redirect Internet users to Respondent’s website displaying a search engine and links to third-party websites offering goods and services that attempt to compete with Complainant. Respondent’s use of the domain name to display a search engine and competing third-party links is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
Additionally, Respondent offered no evidence and no proof in the record indicates that Respondent is commonly known by the <worldgymfitnesscenters.com> domain name. Respondent’s WHOIS information identifies Respondent as “Jill Yang.” Therefore, Respondent failed to establish rights or legitimate interests in the <worldgymfitnesscenters.com> domain name under 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent registered and is using the <worldgymfitnesscenters.com> domain name, which is confusingly similar to Complainant’s WORLD GYM FITNESS CENTER mark, in order to redirect Internet users to Respondent’s website displaying a search engine and links to competing websites. The Panel finds that such use constitutes disruption, which supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Further, Respondent is using the <worldgymfitnesscenters.com> domain name to redirect
Internet users to Respondent’s website, which displays a search engine and
links to third-party websites that attempt to compete with Complainant to the
assumed profit of Respondent. The Panel
finds that because Respondent’s domain name is confusingly similar to
Complainant’s
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 <worldgymfitnesscenters.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 24, 2007.
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