Mehdi Hadim d/b/a STRONGLIFTS v. PRIVATE REGISTRATION
Claim Number: FA1504001612774
Complainant is Mehdi Hadim d/b/a STRONGLIFTS (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is PRIVATE REGISTRATION (“Respondent”), represented by Sam Parker of mdp McDonald Partners, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strongliftwear.com>, registered with Crazy Domains FZ-LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2015; the Forum received payment on April 2, 2015.
On April 2, 2015, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <strongliftwear.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@strongliftwear.com. Also on April 3, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 22, 2015.
Complainant submitted a timely Additional Submission, which was received on April 27, 2015.
Respondent submitted a timely Additional Submission, which was received on April 30, 2015.
On May 5, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the STRONGLIFTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,314,677, first use in commerce May 1, 2007, filed Apr. 20, 2012, registered Apr. 2, 2013). The mark is used on or in connection with providing fitness training information for increasing strength, losing weight, and reducing body fat. The <strongliftwear.com> domain name is confusingly similar to the mark for the following reasons: it contains the entire mark save the removal of the “s,” it adds the generic term “wear,” and it adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a website that competes with the goods or services offered under Complainant’s mark.
Respondent has engaged in bad faith registration and use. Respondent’s offering of competing services disrupts Complainant’s business, and Respondent is attempting to commercially profit from a likelihood of confusion.
B. Respondent
Respondent does not contest Complainant’s registered rights in the STRONGLIFTS mark. Respondent contends that the disputed domain name is not confusingly similar to the mark because the domain name consists of descriptive terms that could not possibly cause confusion.
Respondent has rights or legitimate interests in the disputed domain name. Respondent is commonly known as the domain name for business purposes, and Respondent is running a clothing business.
Respondent has not engaged in bad faith registration or use. Respondent is not disrupting Complainant business because Respondent does not compete with Complainant. Further, Respondent’s rights or legitimate interests preclude a finding of bad faith.
C. Additional Submissions
a. Complainant
Complainant asserts Respondent is a competitor of Complainant’s because both offer apparel and give fitness advice. Complainant also argues that Respondent had actual knowledge of its trademark rights.
b. Respondent
Respondent claims that the screenshots Complainant has provided, which Complainant says are evidence that Respondent offers fitness advice on the resolving webpage, are actually screenshots from Respondent’s Facebook page, and not screenshots from the resolving webpage. Respondent also contends that the first page of Annex AD in Complainant’s additional submission is actually a screenshot from a third party website not related to Complainant.
Complainant is Mehdi Hadim d/b/a STRONGLIFTS of Hong Kong. Complainant registered the domain name <stronglifts.com> in 2007 for the purpose of providing fitness training information. Complainant launched a website at that time and has used the STRONGLIFTS mark continuously since that time. Complainant states that he heavily invested his time and money in developing his website, e-marketing his information, and engaging in related activities including developing a workout app that was available on the website. Complainant claims that millions of visitors have visited his website which was very popular amongst body-builders and strength trainers. In May 2012 Complainant registered the STRONGLIFTS mark with the Benelux Office of Intellectual Property and in September 2012 with the United States Patent and Trademark Office. Complainant contends that he became aware that Respondent had registered the disputed domain name in late 2014.
Respondent is Private Registration of Australia. Respondent’s registrar’s address is the United Arab Emirates. Respondent registered the <strongliftwear.com> domain name on July 30, 2012 and began hosting a website in October 2012 to sell bodybuilding apparel. Respondent claims to have been unaware of Complainant’s existence at the time of its domain name registration. Upon being contacted by Complainant regarding the disputed domain name, Respondent took steps to register “Strong Lift Wear” as a mark in Australia in order to protect the clothing business it had developed since it established its website.
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."
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 STRONGLIFTS mark with the USPTO (e.g., Reg. No. 4,314,677, first use in commerce May 1, 2007, filed Apr. 20, 2012, registered Apr. 2, 2013). The mark is used on or in connection with providing fitness training information for increasing strength, losing weight, and reducing body fat. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark, and that Complainant’s rights in the STRONGLIFTS mark date back to the filing date. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application . . . ”).
Complainant further argues that he has common law rights in the STRONGLIFTS mark based on the mark’s acquired fame and through Complainant’s consistent use. Complainant provides evidence that he launched the <stronglifts.com> website on May 1, 2007 and has continuously used the domain since that date as Complainant’s official website. Complainant further states that over time he “invested substantial time and money” for email, marketing, hosting, search engine optimization, and other performance improvements. Complainant also states that he developed a computer application in 2011 that has been downloaded more than 700,000 times.
Complainant asserts that, “From 2007 to 2012, the Complainant had common law trademark rights by virtue of the fact his Mark had become famous, and the Complainant had acquired secondary meaning in it for all of the aforesaid reasons.” Prior panels have found common law rights in a mark where the mark has taken on a secondary meaning in relation to complainant as evidenced by the mark’s public recognition. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the goods or services to which the mark is affixed. Common law rights are generally also limited in geographical scope to the area bounded by the evidence provided. The Complainant has failed to provide evidence of any sales or advertising as well as any indication of the extent of use beyond the self-serving assertions that the mark, as evidenced by its use in Complainant’s domain name and website, had become famous. Complainant states that its site was originally established to give advice on fitness training, or more specifically weight lifting exercises to increase strength. The Complainant provides no evidence of any sale of specific goods or services beyond largely unsubstantiated contentions that it was, or is, engaged in selling weight lifting apparel, along with its provision of advice on lifting exercises. Domain names are not trademarks and mere usage on the internet is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, or primary association of the proposed mark with the owner’s goods or services in the mind of the general public. As the Panel cannot speculate on the amount of expenditures, sales figures or any other evidence generally required to prove secondary meaning, the Panel finds the Complainant has failed to establish fame, secondary meaning or common law rights extending to any particular area dating back to 2007.
Complainant argues that the <strongliftwear.com> domain name is confusingly similar to the STRONGLIFTS mark for the following reasons: it contains the entire mark save the removal of the “s,” it adds the generic term “wear,” and it adds the gTLD “.com.” As a general rule, the addition of a gTLD, such as “.com,” can never distinguish a domain name from the mark at issue. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have found that removing the letter “s” from the mark fails to negate a finding of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Prior panels have also found that the addition of a generic term in a domain name fails to negate confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). The Panel finds that the removal of the letter “s,” and the addition of the term “wear” (as a generic term) fails to negate that the <strongliftwear.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not contest Complainant’s registered rights for the STRONGLIFTS mark. Respondent does contend that the disputed domain name is comprised of common and descriptive terms and thus cannot be deemed identical or confusingly similar to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(ii).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has NOT met this burden.
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the STRONGLIFTS mark in domain names. The Panel notes that “PRIVATE REGISTRATION” is listed as the registrant of record for the disputed domain name. The Panel also notes that while the record is void of any evidence to indicate that Respondent is in possession of licensing rights, Respondent has provided evidence that it does business under the name “Strong Lift Wear” and that it has consistently done so since 2012.
Respondent claims it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). Respondent’s argument in support of this contention rests on its assertion that it has been running an online clothing business called “Strong Lift Wear.” Respondent has submitted a copy of a certificate of registration, dated September 2012, with the Australian Securities & Investments Commission (“ASIC”), showing “Strong Lift Wear” as the registered business name. The Panel finds this to be valid evidence that Respondent is commonly known as the disputed domain name for business purposes, and therefore supportive of Respondent’s assertion that Respondent has rights or legitimate interests under Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name). The Panel further finds that Respondent has provided enough evidence to show it runs a legitimate business, further supporting its claim that Respondent has rights under Policy ¶ 4(c)(i).
Respondent also argues that the terms of the disputed domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly of the terms on the Internet. The Panel finds the terms in dispute to be merely descriptive. Complainants website prominently features lifting exercises to make an individual strong and is called strong lifts. Respondents website prominently features clothing to wear while lifting and is called strong lift wear, which Respondent states was picked as a name to indicate that the apparel stood up well to training workouts. Individuals cannot remove common language from the reach of the general public by using merely descriptive terms to label the source of their business. Because only common and merely descriptive (generic) terms are involved Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Complainant has NOT proven this element.
Because the Panel finds that Respondent has rights or legitimate interests in the <strongliftwear.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Complainant has NOT proven this element.
As the Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <strongliftwear.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: May 19, 2015
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