24 Hour Fitness USA, Inc. v. Sidney Jones
Claim Number: FA1806001793622
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan E. Hollander of c/o Venable LLP, California, USA. Respondent is Sidney Jones (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hourfitness.club>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2018; the Forum received payment on June 25, 2018.
On Jun 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <24hourfitness.club> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 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@24hourfitness.club. 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 Kenneth L. Port 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
Complainant is a leading health club industry pioneer, and is one of the largest privately-held health and fitness chains in the world. Complainant has rights in the 24 HOUR FITNESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,130,895, registered Jun. 20, 1998). See Compl. Appendix H. Respondent’s <24hourfitness.club> domain name is identical to Complainant’s mark as it contains the mark in its entirety and merely adds the “.club” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <24hourfitness.club> domain name. Respondent is not commonly known by the disputed domain name, as nothing in the WHOIS information would assist in supporting that finding. See Compl. Appendix J. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark in any domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert users to a website completely unrelated to Complainant’s business. See Compl. Appendix K.
Respondent registered and uses the <24hourfitness.club> domain name in bad faith. Respondent uses the domain name for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s 24 HOUR FITNESS mark while offering goods/services unrelated to those offered by Complainant. See Compl. Appendix K. Further, Respondent had actual and constructive knowledge of Complainant’s rights in the 24 HOUR FITNESS mark given the mark’s long term use and substantial fame and notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <24hourfitness.club> domain name on May 1, 2014.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or tot the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
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.”).
The Panel finds that the disputed domain name <24hourfitness.club> is confusingly similar to Complainant’s trademark, 24 HOUR FITNESS. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the g TLD, “.club”, to Complainant’s trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent had no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Respondent does not apparently use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert users to a website completely unrelated to Complainant’s business. See Compl. Appendix K.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel additionally finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently registered and uses the <24hourfitness.club> domain name in bad faith for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s 24 HOUR FITNESS mark while offering goods/services unrelated to those offered by Complainant. Complainant provides a screenshot of the resolving webpage associated with the disputed domain name, which contains a “Sign Up” option on the URL <r2binternational.com>. See Compl. Appendix K. Accordingly, the Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly claims that Respondent had actual knowledge of Complainant’s rights in the 24 HOUR FITNESS mark at the time of registering the <24hourfitness.club> domain name. Given the fame of the Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights in and to the trademark 24 HOUR FITNESS.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <24hourfitness.club> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: July 24, 2018
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