Anytime Fitness, LLC v. Jason Curry
Claim Number: FA1808001799811
Complainant is Anytime Fitness, LLC (“Complainant”), represented by Molly T. Eichten of Larkin Hoffman Daly & Lindgren Ltd., Minnesota, USA. Respondent is Jason Curry (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <anytimefitness.co>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 2, 2018.
On August 7, 2018, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <anytimefitness.co> 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 August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@anytimefitness.co. Also on August 20, 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 September 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Anytime Fitness, LLC, uses its ANYTIME FITNESS mark to promote its health and fitness club services. Complainant established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,814,114, registered Feb. 10, 2004). See Amend. Compl. Ex. A. at Attach. 2. Respondent’s <anytimefitness.co> domain name is identical or confusingly similar to Complainant’s ANYTIME FITNESS mark as it merely adds the “.co” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <anytimefitness.co> domain name. Complainant has not licensed or otherwise authorized Respondent to use its ANYTIME FITNESS mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Jason Curry” as the registrant. See Amend. Compl. Ex. A. at Attach. 1. Respondent is not using the <anytimefitness.co> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to an inactive website.
Respondent registered and is using the disputed domain name in bad faith. Respondent has failed to actively use the <anytimefitness.co> domain name for over six years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing health and fitness club services.
2. Complainant has established its rights to the ANYTIME FITNESS mark by registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,814,114, registered Feb. 10, 2004).
3. Respondent registered the <anytimefitness.co> domain name on February 27, 2012.
4. Respondent uses the disputed domain name to resolve to an inactive 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.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it established rights in its ANYTIME FITNESS mark through registration with the USPTO (e.g., Reg. No. 2,814,114, registered Feb. 10, 2004). See Amend. Compl. Ex. A. at Attach. 2. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). As such, the Panel finds that Complainant has established its rights in the ANYTIME FITNESS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ANYTIME FITNESS mark. Complainant submits that Respondent’s <anytimefitness.co> domain name is identical or confusingly similar to Complainant’s ANYTIME FITNESS mark as it merely adds the country code top-level domain (ccTLD) ".co". The addition of such a country code top-level domain may not sufficiently distinguish a disputed domain name from a mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel finds that Respondent’s <anytimefitness.co> domain name is identical to Complainant’s ANYTIME FITNESS mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s prominent ANYTIME FITNESS trademark and to use it in its domain name, adding only the country code top-level domain ".co". That does not negate the identicalness of the domain name with Complainant’s trademark;
(b) Respondent registered the <anytimefitness.co> domain name on February 27, 2012;
(c) Respondent uses the disputed domain name to resolve to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its ANYTIME FITNESS mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <anytimefitness.co> domain name lists “Jason Curry” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <anytimefitness.co> domain name;
(f) Complainant submits that Respondent uses the <anytimefitness.co> domain name to resolve to an inactive website. Under Policy ¶ 4(c)(i) and (iii), use of a domain name to resolve to an inactive website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provided screenshots of the <anytimefitness.co> domain name, which indicate that the site is inactive. See Amend. Compl. Ex. A. at Attach. 4. As such, the Panel finds that Respondent failed to use the <anytimefitness.co> domain name for a legitimate Policy ¶ 4(c)(i) or (iii) use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant submits that Respondent engaged in Policy ¶ 4(a)(iii) bad faith registration and use by failing to use the <anytimefitness.co> domain name actively for over six years. Failure to use a domain name actively may be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provided screenshots of the <anytimefitness.co> website, which show that the site is inactive. See Amend. Compl. Ex. A. at Attach. 4. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ANYTIME FITNESS mark and in view of the conduct that Respondent has engaged in since registering the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. It is abundantly clear that what Respondent has done is to note the fame and notoriety of the Anytime Fitness business and concocted a domain name on no basis other than that it is a copy of that name and of what he assumed, rightly, was the principal domain name of Complainant, but changing the top level domain. That is bad faith registration and use beyond any doubt. It must also be concluded that Respondent has done this for improper motives and to benefit its own interests.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anytimefitness.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 19, 2018
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