24 Hour Fitness USA, Inc. v. Jose Medina
Claim
Number: FA0507000514959
Complainant, 24 Hour Fitness USA, Inc. (“Complainant”),
is represented by Laura M. Franco of Manatt, Phelps & Phillips, LLP, 1001 Page Mill Road, Bldg. 2, Palo Alto, CA 94304. Respondent is Jose Medina (“Respondent”), 2680 Aguas Calientes, Colonia Juarez
Cacho, Tijuana, Baja California TJ01152664, MX.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <24hrfitnessexpress.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 14, 2005.
On
July 14, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <24hrfitnessexpress.com> 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
July 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 4,
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@24hrfitnessexpress.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 <24hrfitnessexpress.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 <24hrfitnessexpress.com> domain name.
3. Respondent registered and used the <24hrfitnessexpress.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, 24
Hour Fitness USA, Inc., is a large privately owned and operated health and
fitness chain. Complainant’s clubs have
nearly 3 million members and over 300 locations in the United States and Asia. Complainant sells and markets a wide variety
of health and fitness related merchandise under its 24 HOUR FITNESS mark,
including nutrition and exercise books and magazines, clothing, head gear,
accessories, gym bags, and backpacks.
Complainant has expanded substantial efforts and millions of dollars in promoting
and advertising the 24 HOUR FITNESS mark in newspapers, magazines, at major
professional sporting events, on national television, and on the internet. Complainant’s mark is featured on its
website at <24hourfitness.com>, which receives an average of two million
hits and over four million page views daily from Internet users.
Since 1996,
Complainant has used its 24 HOUR FITNESS mark in connection with its wide range
of health and fitness related products and services. Additionally, Complainant holds numerous registrations for its 24
HOUR FITNESS marks in at least eighteen countries, including with the United
States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 2130895
issued January 20, 1998).
Respondent
registered the <24hrfitnessexpress.com> domain name on September
1, 2003. The domain name resolves to
Respondent’s website, which uses a search engine to feature links to
websites. Some of the links lead to Complainant’s
competitors. Respondent profits from
the Internet traffic that is diverted to its website through advertisement
placement and click-through fees.
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’s
registration of its 24 HOUR FITNESS mark with the USPTO is sufficient to
establish a prima facie case of rights in the mark. See 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.”); see also 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.”). Respondent’s failure to submit a response leaves undisputed
Complainant’s presumption of rights. See
Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.”). Thus,
the Panel finds that Complainant has established rights for purposes of Policy
¶ 4(a)(i).
Complainant
argues that Respondent’s <24hrfitnessexpress.com> domain name is
confusingly similar to Complainant’s 24 HOUR FITNESS mark. The disputed domain name changes
Complainant’s mark by abbreviating the word “hour” to “hr” and adding the word
“express.” The Panel holds that neither
the abbreviation nor the addition of the generic word “express” is sufficient
to distinguish the disputed domain name from Complainant’s mark. See Microsoft Corp. v. Montrose Corp.,
D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated); see also Body Shop Int’l PLC v. CPIC NET,
D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name
<bodyshopdigital.com> is confusingly similar to the complainant’s THE
BODY SHOP trademark).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
disputed domain name. Complainant’s
assertion establishes a prima facie case. Consequently, the burden shifts to Respondent to provide concrete
evidence that it does have rights or legitimate interests in the <24hrfitnessexpress.com>
domain name. See Compagnie Generale
des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14,
2001):
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 on to 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”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate
interests for purposes of Policy ¶ 4(a)(ii).
Respondent does
not offer any evidence to indicate that it is commonly known by the <24hrfitnessexpress.com>
domain name. Without such evidence, the
Panel accepts as true Complainant’s allegations that Respondent is not commonly
known by the disputed domain name. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). The
Panel concludes that because Respondent is not commonly known by the disputed domain
name, it has not established rights or legitimate interests under 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
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
commonly known by the mark).
Complainant
avers that Respondent is using the disputed domain name in connection with a
search engine that contains links to websites that compete with
Complainant. Complainant further alleges
that Respondent profits from the traffic that is diverted to its website
through advertisement placements or through click-through fees. The absence of a response leaves the Panel
without evidence to dispute Complainant’s arguments and leads the Panel to
accept them as true. 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 such
diversion is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see
also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531
(Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing
domain names to direct Internet traffic to a search engine website that hosted
pop-up advertisements was evidence that it lacked rights or legitimate
interests in the domain names).
Thus, the Panel
determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has
provided the Panel with evidence indicating that Respondent commercially
benefits from the confusingly similar <24hrfitnessexpress.com>
domain name by receiving click-through fees to advertise competing links. The
Panel holds that Respondent is creating a likelihood of confusion for its own
commercial gain. The Panel concludes
that such use is evidence of bad faith use and registration under Policy ¶
4(b)(iv). See 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); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent
registered a domain name confusingly similar to the complainant’s mark and the
domain name was used to host a commercial website that offered similar services
offered by the complainant under its mark).
Moreover,
Complainant’s registration of its 24 HOUR FITNESS mark with the USPTO confers
constructive knowledge on Respondent of Complainant’s rights in a mark. See 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.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072). The Panel holds that Respondent’s constructive knowledge of
Complainant’s rights in the mark is evidence of bad faith use and registration
for purposes of Policy ¶ 4(c)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there 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 that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Therefore, the
Panel finds 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 <24hrfitnessexpress.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret)
Dated:
August 24, 2005
National Arbitration Forum
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