Gyrotonic Sales Corporation v. Pilates Institute
Claim Number: FA0704000958532
Complainant is Gyrotonic Sales Corporation (“Complainant”), represented by Marc
H. Trachtenberg, of Ladas & Parry LLP, Digital Brands
Practice,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gyrotonics.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2007.
On April 11, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <gyrotonics.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 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@gyrotonics.com by e-mail.
Having received no timely response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Respondent was required to file a
response by May 9, 2007. On May 14,
2007, the Forum received an email from Allan Menezes,
This website rightfully
belongs to us as we registered it when the ‘official’ website of gyrotonic Corp
at the time was gyrotonic-int.com and this site was freely available. The rightful owner is Riaz Moiz who lives in
However, the Registrant of the disputed domain name is Respondent, Pilates Institute. Accordingly, this matter will proceed as a default since Respondent failed to file a timely response and failed to “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name” as required by Paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
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 "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 <gyrotonics.com> domain name is confusingly similar to Complainant’s GYROTONIC EXPANSION SYSTEM mark.
2. Respondent does not have any rights or legitimate interests in the <gyrotonics.com> domain name.
3. Respondent registered and used the <gyrotonics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gyrotonic Sales
Corporation, markets and sells the GYROTONIC EXPANSION SYSTEM, an exercise
system incorporating various gymnastics, swimming, ballet, yoga, and tai-chi
principles. Complainant holds a
registered trademark with the United States Patent and Trademark Office
(“USPTO”) for the GYROTONIC EXPANSION SYSTEM mark (Reg. No. 1,827,566 issued
March 24, 1994).
Respondent, Pilates Institute, registered the <gyrotonics.com> domain name on December 7, 1997. Respondent is using the disputed domain name to display hyperlinks advertising various exercise-training products 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.
Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Therefore, the Panel finds that Complainant has established rights in the GYROTONIC EXPANSION SYSTEM mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Tech., 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.”).
Respondent’s <gyrotonics.com> domain name incorporates the dominant portion of Complainant’s GYROTONIC EXPANSION SYSTEM mark, Gyrotonic, and adds an “s” on the end as well as the generic top-level domain (“gTLD”) “.com.” In WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), the Panel found the respondent’s <westjets.com> domain name to be confusingly similar to the complainant’s WEST JET AIR CENTER mark because the domain name still contained the dominant portion of the complainant’s mark. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), the Panel found the respondent’s <barnesandnobles.info> and <barnesandnobles.biz> domain names to be confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark did not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i). Like the disputed domain names in WestJet and Barnesandnoble.com, Respondent’s <gyrotonics.com> domain name does not negate the confusingly similar aspects of Complainant’s GYROTONIC EXPANSION SYSTEM mark because it incorporates the dominant portion of the mark, Gyrotonic, and merely omits the terms “Expansion” and “System.” Therefore, the Panel concludes that Respondent’s <gyrotonics.com> domain name is confusingly similar to Complainant’s GYROTONIC EXPANSION SYSTEM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <gyrotonics.com> 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have 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 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 a right or legitimate interest does exist). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly
known by the <gyrotonics.com>
domain name. The WHOIS information
identifies Respondent as “Pilates Institute.” Complainant has asserted that Respondent is
not licensed or authorized to use Complainant’s GYROTONIC EXPANSION SYSTEM mark
or any variation thereof, and the Panel can find no other evidence in the
record indicating that Respondent is commonly known by the <gyrotonics.com> domain name. Therefore, the Panel concludes that
Respondent is not commonly known by the <gyrotonics.com>
domain name pursuant to 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent is using the <gyrotonics.com>
domain name to display hyperlinks advertising various exercise-training
products of Complainant’s competitors.
These exercise-training products compete with Complainant’s business,
and such use does not constitute a bona
fide offering of goods and services under Policy ¶ 4(c)(i),
or 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 Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004) (“Respondent’s
appropriation of the SAFLOK mark to market products that compete with
Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <gyrotonics.com> domain name to display hyperlinks advertising various exercise-training products of Complainant’s competitors. This is likely to disrupt Complainant’s business by diverting potential customers to Respondent’s website. The Panel finds that such registration and use of the <gyrotonics.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); 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)).
Respondent’s <gyrotonics.com> domain name, which is confusingly similar to Complainant’s GYROTONIC EXPANSION SYSTEM mark, is likely to cause confusion among customers searching for Complainant’s grocery stores and products. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing goods and services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to commercially benefit from this likelihood of confusion between Respondent’s domain name and the goodwill associated with Complainant’s GYROTONIC EXPANSION SYSTEM mark. Therefore, the Panel finds that Respondent’s registration and use of the <gyrotonics.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <gyrotonics.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 23, 2007
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