RS Fit Holdings LLC v. Magnum Domains
Claim Number: FA1806001793576
Complainant is RS Fit Holdings LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Magnum Domains (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bfit.co>, registered with Name.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2018; the Forum received payment on June 25, 2018.
On June 27, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <bfit.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 June 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2018 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@bfit.co. Also on June 29, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Trademark/Service Mark Information: Rule 3(b)(viii).
Complainant RS Fit Holdings LLC (“RS Fit” or “Complainant”) is a leading health club industry pioneer. Since at least as early as 1996, RS Fit, through its predecessors in interest, has continuously and pervasively used its famous BFIT marks in connection with a wide range of well-known health and fitness related products and services, including health club services and exercise equipment. As a result, the public has come to associate the BFIT marks with the high quality goods and services that the Complainant offers.
Consistent with this widespread use of the BFIT marks to identify Complainant and its products and services, Complainant has expended substantial efforts and millions of dollars in promoting and advertising the marks in newspapers, magazines, billboards, signage at local events such as fairs, festivals, and athletic events, and on national television, cable, well-known social media sites, through popular mobile applications and on the Internet via its popular website <bfitgyms.com>. RS Fit has continued to expand its use of the BFIT marks, include with the recent expansion of its BFIT branded health clubs. As a result, the BFIT marks have become identified in the minds of consumers exclusively with Complainant’s high quality products and services.
By means of its widespread use of BFIT as a brand, Complainant has established common law rights in the trademark and service mark BFIT. Complainant’s common law rights in the BFIT marks alone are sufficient to trigger the protections of the Policy. See Internet Billing Company, Ltd. v. Internet Solutions GmbH, FA0097663 (Nat. Arb. Forum July 16, 2001). In order to protect its common law rights, Complainant need only establish that the BFIT marks have become the distinctive identifier associated with the Complainant or its goods and services. See Gregor Fisken Ltd. v. Private Registration Aktein Gesellschaft CNR of Granby & Sharpe St., D2009-1122 (WIPO Oct. 14, 2009). The BFIT marks easily satisfy this requirement and are entitled to very broad protection because they are well-publicized, distinct identifiers of Complainant’s health-and fitness-related products and services.
Moreover, Complainant owns several United States trademark registrations and pending applications for marks consisting of or incorporating its famous BFIT mark, and stylized variations thereof. Each of these registrations and applications, together with Complainant’s common law rights thereto, are referred to collectively herein as the “BFIT Marks.” Several of Complainant’s United States registrations and applications for the BFIT Marks are summarized in the table below.
|
Mark |
App/Reg. No. |
Goods and Services |
|
BFIT |
2217664 |
Class 41: Health club services |
|
BFIT |
2840454 |
Class 28: Exercise equipment, namely, hand-held and portable exercise equipment, jump ropes, ankle weights, wrist weights, leg weights, free weights, handgrips, stretch bands, slimmer belts, workout belts, weight lifting gloves, pedometers, chinning bars, hip cycles, pushup stands, sit up bars, wrist wraps, aerobic bands, reading racks, lifting stands, bar bell pads, body fat gages, exercise wheels, support suspender belts, aerobic steps, aerobic slides, portable abdominal trainers, portable thigh trainers, magnetic belts, tension bars, chest expanders, running weights, dumbbell trees, rowers, squeeze balls; platforms, mats, tables, benches, and accessories for use therewith |
|
B FIT & Design
|
4283589 |
Class 41: Health club services, namely, providing instruction and equipment in the field of physical exercise |
|
BFIT & Design
|
5261821 |
Class 41: Health club services, namely, providing fitness and exercise facilities; instruction services, namely, instruction in the field of physical fitness and exercise; educational services, namely, instruction and training in the field of physical fitness; instruction programs in the field of physical fitness, namely, providing exercise classes for groups of individuals; providing a website featuring information in the field of fitness and exercise; educational services, namely, providing courses and instruction in the fields of health and nutrition |
|
BFIT & Design
|
87/501530 |
Class 44: Providing a website featuring information in the field of health |
|
BFIT & Design |
87/501532 |
Class 44: Providing a website featuring information in the field of health |
|
Mark |
App/Reg. No. |
Goods and Services |
|
|
|
|
|
BFIT & Design
|
5261820 |
Class 41: Health club services, namely, providing fitness and exercise facilities; instruction services, namely, instruction in the field of physical fitness and exercise; educational services, namely, instruction and training in the field of physical fitness; instruction programs in the field of physical fitness, namely, providing exercise classes for groups of individuals; providing a website featuring information in the field of fitness and exercise; educational services, namely, providing courses and instruction in the fields of health and nutrition |
|
BFIT & Design
|
87/479724 |
Class 09: Downloadable mobile application software for providing access to information in the fields of fitness and exercise, namely, workout planning and scheduling, club check- in, post-workout tracking, activity and fitness monitoring and the recording of training and workouts |
In addition, Complainant and its predecessors have extensively used the BFIT Marks in at least Europe, as evidenced by the European Union registration.
Complainant’s rights in the BFIT Marks are very broad because of its pervasive, continuous and widespread use of “BFIT.” Complainant’s multiple registrations of the BFIT Marks in the United States Patent and Trademark Office (“USPTO”) are evidence of the validity of the BFIT Marks as well as Complainant’s exclusive right to use the registered marks in commerce with the goods and services listed in its registrations. See 15 U.S.C. § 1057(b); see also McNeil Nutritionals, LLC v. Prepress Consultants, Inc., FA1043195 (Nat. Arb. Forum Sept. 11, 2007) (“[A] certificate of registration on the [USPTO’s] Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant’s exclusive right to use the mark in commerce or in connection with goods specified in the registration”) (citing Reebok Int’l Ltd. v. Santos, FA565685 (Nat. Arb. Forum Dec. 21, 2005)).
Each of the registrations for the BFIT Marks is valid and subsisting in full force, unrevoked, and un-cancelled. Notably, Registration Nos. 2217664, 2840454 and 2518918 are incontestable pursuant to 15 U.S.C. § 1065 with respect to the goods and services thereunder. Complainant’s incontestable registrations also constitute conclusive evidence of the registration of the BFIT Marks, of the validity of the registered BFIT Marks, and of the Complainant’s exclusive rights to use the registered BFIT Marks in commerce on the goods and services listed in its incontestable registrations. See 15 U.S.C. § 1115(b); see also Countrywide Fin. Corp. v. Web Domain Names, FA0708909 (Nat. Arb. Forum July 7, 2006) (“An incontestable status is also conclusive proof under U.S. law that the registered marks are distinctive.”) (citing Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985); 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 11:44, p. 11–87 (4th ed. 2012)). In short, the BFIT Marks are distinct identifiers of a well-known, leading provider of health and fitness related products and services. As such, the BFIT Marks are entitled to very broad protection.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Disputed Domain Name Is Virtually Identical and/or Confusingly Similar to Complainant’s BFIT Marks. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent is the registrant of the <bfit.co> domain name (the “Disputed Domain Name”). The Disputed Domain Name resolves to a parked website containing links to websites for Complainant’s competitors.
Respondent is not affiliated with Complainant, and has not been granted any license or permission by Complainant to use the well-known BFIT Marks.
Complainant’s right to exclude others from using the BFIT Marks is extensive, as evidenced by the strength of the BFIT Marks, Complainant’s pervasive use of the BFIT Marks for many years through its predecessors in interest, and Complainant’s trademark registrations, including three incontestable registrations, before the USPTO. See America Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (successful trademark registration with the USPTO creates a presumption of rights in a mark); Delta Corp. Identity, Inc. and Delta Airlines, Inc. v. Stanley Vartanian d/b/a MIG Travel, FA0603352 (Nat. Arb. Forum Jan. 12, 2006) (trademark registration with USPTO is sufficient to sustain Complainant’s right in the mark; ordering transfer of the <deltaairline.us> domain name); Ferrari S.p.A. v. The Parts Exchange.com, Inc., FA0271108 (Nat. Arb. Forum July 5, 2004) (under U.S. trademark law, registering mark creates a presumption that they are inherently distinctive and have acquired secondary meaning; ordering transfer of the <ferrari.us> domain name); Men’s Warehouse Inc. v. Wick, FA117861 (Nat. Arb. Forum Sept. 16, 2002) (same). Complainant’s rights in the BFIT Marks were established well prior to the registration of the Disputed Domain Name. Indeed, Complainant’s first use of its BFIT Marks in 1996 and its earliest trademark registration for the BFIT mark with the USPTO in 1999, long precedes the creation of the Disputed Domain Name on September 30, 2012 by more than twelve years.
The Disputed Domain Name consists entirely of Complainant’s well-known BFIT trademark. A domain name that wholly incorporates a federally registered mark is prima facie confusingly similar and satisfies Policy ¶4(a)(i). See Kellogg North America Co. v. Henry Chan, FA0237507 (Nat. Arb. Forum Apr. 8, 2003) (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity. . . .”); Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (same); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 0096189 (Nat. Arb. Forum Jan. 16, 2001) (<wellness-international.com> found confusingly similar to Complainant’s WELLNESS INTERNATIONAL NETWORK mark).
The addition of the “.co” top-level domain, the country code for Colombia, does nothing to eliminate the confusing similarity. See See Mars, Inc. v. Dayal, FA 1381794 (Nat. Arb. Forum April 30, 2011) (finding the <snickers.co> domain name identical to the SNICKERS mark and finding adding the ccTLD “.co” failed to sufficiently differentiate the domain name from the complainant’s mark); Spark Networks USA, LLC v. Mayni Efrem / ME New Enterprise, FA 1307001509335 (Nat. Arb. Forum August 20, 2013) (finding the <christianmingle.co> domain name identical to the CHRISTIANMINGLE mark); see also V Secret Catalogue, Inc. et al. v. Victoriassecret.org, FA0003000094349 (Nat. Arb. Forum May 15, 2000) (“[R]egistering the Complainant’s VICTORIA’S SECRET Mark in the .org top-level domain . . . creates a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product on its website and is likely to misleadingly divert web users trying to locate the legitimate VICTORIA’S SECRET web site.”); Kinnser Software, Inc. v. Domain May Be For Sale, Check Afternic.com Domain Admin/Whois Protection, FA1505001618122 (Nat. Arb. Forum June 16, 2015) (holding that <kinnser.org> was identical to complainant’s KINNSER mark, noting that the “addition of a gTLD renders a disputed domain name identical to a mark under Policy ¶4(a)(i).”); World Wrestling Entmt, Inc. v. Emad Ibrahim, FA1409001579757 (Nat. Arb. Forum Oct. 13, 2014) (finding that <wwe.org> is identical to the WWE mar, “as the inclusion of a generic top-level domain (“gTLD”) such as ‘.org’ is irrelevant to the Policy ¶4(a)(i) confusing similarity analysis); Sea World, Inc. v. JMXTRADE.com, FA872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶4(a)(i).”).
Taken together, it is clear that the Disputed Domain Name is virtually identical and confusingly similar to Complainant’s BFIT Marks, and that therefore, the first prong of the Policy is satisfied.
[b.] Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has not made a legitimate use of, nor has it made demonstrable preparations to legitimately use, the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent has not been commonly known by “Bfit” and therefore lacks any evidence of having rights in that mark pursuant to UDRP Policy ¶4(c)(ii). Further, the manner in which Respondent has used the Disputed Domain Names does not constitute a bona fide offering of goods and services pursuant to UDRP Policy ¶4(c)(i), nor is it legitimate noncommercial or fair use pursuant to UDRP Policy ¶4(c)(iii).
First, pursuant to UDRP Policy ¶4(c)(ii), there is no evidence to show that Respondent has ever been known by or operated a business under the name “Bfit,” nor does Respondent have any trademark rights in BFIT. Nothing in the WHOIS contact information supports a finding that Respondent is commonly known by the name “Bfit.” The absence of WHOIS information creates the inference that Respondent is not commonly known by the name “Bfit.” See Tercent Inc. v. Yi, FA0139720 (Nat. Arb. Forum Feb. 10, 2003) (WHOIS information indicating respondent is not commonly known by the disputed domain name weighs against respondent in determining legitimate interests); see also Bank of Am. Corp. v. Bermudez, FA0944280 (Nat. Arb. Forum Apr. 30, 2007) (the absence of WHOIS information to indicate respondent is commonly known by the disputed domain demonstrates respondent is not known by the disputed domain name).
Complainant has offered its goods and services in connection with the well-known BFIT mark since at least as early as 1996. By contrast, the <bfit.co> domain name was not created until September 30, 2012 – more than twelve years after Complainant’s first United States trademark registration for BFIT issued. Further, Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating its famous BFIT trademarks. Thus, Respondent does not have rights or legitimate interests in the Disputed Domain Name, pursuant to UDRP Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (no rights or legitimate interest where respondent not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing complainant’s distinct and famous NIKE trademark).
Second, Respondent has not used and is not using the Disputed Domain Name in conjunction with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the Disputed Domain Name. UDRP Policy ¶¶4(c)(i) and 4(c)(iii). Respondent is using the Disputed Domain Name to divert Internet users to a parked website. This is presumably for the purpose of financial profit whereby Respondent derives commercial revenue from the pay-per-click commercial links and advertisements displayed on these websites. Using a confusingly similar domain name to address a website displaying links that are unrelated to Complainant “is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use the domain name.” Nucor Corporation v. LUIS ALONZO MURO, FA1409001580989 (Nat. Arb. Forum Oct. 26, 2014); see also Black & Decker Corp. v. Clinical Evaluations, FA112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); The Coca-Cola Company v. Whois Privacy Service, D2010-0088 (WIPO March 16, 2010) (no rights or legitimate interests in <cokezone.com> used for a parked website containing sponsored links; ordering transfer); The Royal Bank of Scot. Group Plc v. Demand Domains, FA714952 (Nat. Arb. Forum Aug. 2, 2006) (operation of a commercial web directory displaying various links to third-party websites not bona fide offering of goods or services because respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Finally, as of the date of this Complaint, Respondent has advertised the Disputed Domain Name as being available for sale for $4,980. Indeed, the top banner of the webpage to which the Disputed Domain Name resolves says “This premium domain name may be listed 4 sale. Click here to inquire.” An attempt to sell a domain name is prima facie evidence that Respondent lacks rights and legitimate interests in that domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding respondent’s conduct purporting to sell the domain name as lack of legitimate interests); see also Enterprise Rent-A-Car Company v. Ramon Rojas, FA0912346 (Nat. Arb. Forum Mar. 23, 2007) (“By offering to sell the disputed domain name registrations for monetary compensation, respondent does not have any rights or legitimate interests in the disputed domain name.”).
Based on the foregoing, it is clear that Respondent lacks any rights or legitimate interests in the Disputed Domain Name.
[c.] The Disputed Domain Name Was Registered and Is Being Used In Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶¶4(a)(iii) and 4(b).
There can be no doubt that the <bfit.co> domain name was registered and is being used in bad faith.
First, bad faith exists where a respondent registers a domain with knowledge of another party’s rights in trademarks and/or service marks incorporated into that domain. See e.g., Amazon.com, Inc. v. Korotkov, D2002-0516 (WIPO Aug. 13, 2002) (determining that the complainant’s AMAZON mark was so well-known that it was “inconceivable respondent was unaware of the trademark, its connotations and its commercial attractiveness” when registering <ammazon.com>; ordering transfer). Respondent’s prior knowledge of Complainant’s mark, in the present instance, is indisputable. Indeed, domain name registrants are presumed to have actual or constructive knowledge of a mark when the mark is registered with the USPTO. See Orange Glo Int’l v. Blume, FA0118313 (Nat. Arb. Forum Oct. 4, 2002) (“[registration on the Principal Register] confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also 15 U.S.C. § 1072. Constructive notice of Complainant’s rights and Respondent’s subsequent registration and use of a confusingly similar domain name creates a legal presumption of bad faith pursuant to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Perot Sys. Corp. v. Perot.net, FA0095312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question was obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Taken together, it is highly likely that Respondent was aware, or should have been aware, of the BFIT Marks prior to registering the Disputed Domain Name. The fact that Respondent proceeded to register the <bfit.co> domain name suggests registration in bad faith. See Caesars World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (given the reputation of complainant and its presence on the Internet, respondent was or should have been aware of the marks prior to registering the disputed domain name); see also Westminster Bank plc v. Sampat Business Development, FA145847 (Nat. Arb. Forum Dec. 26, 2008) (by utilizing the “NATWEST” mark, Respondent created a high “likelihood of confusion” for unsuspecting Internet users); Pfizer, Inc. v. Suger, D2002- 0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name.”).
Second, the fact that Respondent selected, registered, and used the <bfit.co> domain name in bad faith and for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s BFIT Marks is indisputable. Use of a domain name to resolve to a website displaying links to Complainant’s competitors, and deriving click- through revenue from the same, is further evidence of bad faith. See, e.g., Lockheed Martin Corporation v. First Strike / Joe Quinn, FA1345534 (Nat. Arb. Forum Nov. 2, 2010) (holding respondent ultimately responsible for the content shown via domain name operated by parking service provider and finding bad faith); Vance Int’l, Inc. v. Abend, FA970871 (Nat. Arb. Forum June 8, 2007) (“respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche . . . . The key fact here is that respondent, in collaboration with the domain parking service providers, is exploiting complainant's goodwill.”).
Third, Respondent is seeking to sell the <bfit.co> domain name for $4,980. Respondent’s offer to sell the disputed domain name constitutes bad faith registration and use of the <bfit.co> domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA0180704 (Nat. Arb. Forum Sept. 30, 2003) (“respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under ¶4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA0093679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Finally, Respondent’s use of a privacy service to conceal its identity, together with the lack of any indication that it intends to use the Disputed Domain Name for a legitimate purpose, indicates that the Disputed Domain Name was registered in bad faith. See Lockheed Martin Corp. v. Mr Healrd Diviolrg, FA 1562892 (Nat. Arb. Forum July 1, 2014); Novartis AG v. Javapolis, Brian, FA 1543982 (Nat. Arb. Forum Mar. 14, 2014).
Taken together, the evidence clearly supports a finding of bad faith under UDRP Policy ¶4(b).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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(f), 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 (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.”).
Complainant claims rights in the BFIT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,217,664, registered Jan. 12, 1999). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established rights in the BFIT mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <bfit.co> domain name is identical to Complainant’s mark because it merely adds the ccTLD “.co.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Confusing similarity (or identicalness) is determined from the second domain name. See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶4(a)(i).”). The <bfit.co> domain name is identical to the BFIT mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <bfit.co> domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Magnum Domains” as the registrant. There is no obvious connection between that name and the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use Complainant’s the mark in any manner. Respondent is not commonly known by the <bfit.co> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the disputed domain name to resolve in a dynamic parking website containing a series of “pay-per click” hyperlinks redirecting users to services competing with Complainant. Using a domain name to offer links to service directly competing with a complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The resolving webpage displays links to services such as “Fitness Store” and “Fit Fitness Club.” Respondent uses the domain name to commercially benefit from competing hyperlinks, and fails to make a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Complainant claims Respondent offers the disputed domain name for sale. Offering a confusingly similar domain name for sale to the public demonstrates a lack of rights and legitimate interests under Policy ¶4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶4(a)(ii).”). Respondent’s domain displays a message stating “This premium domain name may be listed 4 sale. Click here to Inquire.” The domain name is apparently for sale for $4,980, presumably a price that exceeds Respondent’s out of pocket costs. Respondent offers the disputed domain name for sale for more than its out of pocket costs, which indicates it possesses no rights and legitimate interests under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent offers the <bfit.co> domain name for sale. Offering a confusingly similar domain name for sale in excess of out of pocket costs is evidence of bad faith registration and use under Policy ¶4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶4(b)(i).”). The domain name is for sale for $4,980, presumably a price which exceeds Respondent’s out of pocket costs. Respondent’s offering of the domain name for sale to the general public demonstrates Respondent’s bad faith registration and use under Policy ¶4(b)(i).
Complainant claims Respondent registered and uses the <bfit.co> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain demonstrates bad faith under Policy ¶4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶4(b)(iv)”). The parking page displays links to services such as “Fitness Store” and “Fit Fitness Club” (all of which are within Complainant’s scope of business). Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent uses a WHOIS privacy service to mask his identity when he registered the disputed domain name and therefore Respondent registered the domain name in bad faith. While this Panel agrees with this legal principal, it does not fit the facts of this case. Magnum Domains is a domain reseller. The Panel cannot find any evidence to support Complainant’s claim Respondent acts as a legal nominee for others. Respondent buys and sells domain names for its own account, which it is entitled to do under the “rules of the road” (the UDRP), which are admittedly rather restrictive. Respondent’s business isn’t illegal. Therefore, this Panel declines to find bad faith on these grounds.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bfit.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, August 3, 2018
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