Total Gym Global Corp. v. GRUPO SA Ltd Co / Grupo S.A. Ltd. Co.
Claim Number: FA2101001928027
Complainant is Total Gym Global Corp. (“Complainant”), represented by Lisel M. Ferguson of Procopio, Cory, Hargreaves and Savitch LLP, California, USA. Respondent is GRUPO SA Ltd Co / Grupo S.A. Ltd. Co. (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <totalgymwarehouse.com>, registered with NameSilo, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2021. The Forum received payment on January 12, 2021.
On January 12, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <totalgymwarehouse.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2021 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@totalgymwarehouse.com. Also on January 15, 2021, 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 February 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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, Total Gym Global Corp., operates an international fitness and health company. Complainant has rights in the TOTAL GYM mark through extensive use since 1976 and through its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <totalgymwarehouse.com> domain name is confusingly similar to Complainant’s TOTAL GYM mark.
Respondent lacks rights and legitimate interests in the <totalgymwarehouse.com> domain name as Respondent is not commonly known by the domain name and is neither an authorized user or licensee of the TOTAL GYM mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent’s website hosts pay-per-click advertisements, some related to Complainant’s business and others unrelated.
Respondent registered and uses the <totalgymwarehouse.com> domain name in bad faith as Respondent creates a likelihood of confusion as to the source of the domain name, attracting Internet users and leading to commercial gain for Respondent. Respondent’s registration of the domain name also disrupts Complainant’s business. Complainant further contends that Respondent must have had actual knowledge of Complainant’s trademark rights prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has common law rights in the TOTAL GYM mark through longstanding and widespread use, including since 1995 through its website at “www.totalgym.com”, as well as through its registration with the USPTO” (e.g., Reg. 2,174,671, registered Jul. 21, 1998). Respondent’s <totalgymwarehouse.com> domain name is confusingly similar to Complainant’s TOTAL GYM mark, only differing by the addition of the generic term “warehouse”, which does not distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain, which may be ignored.
Complainant has established this element.
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <totalgymwarehouse.com> domain name was registered on February 19, 2005, many years after Complainant’s TOTAL GYM mark had become well known through extensive use and had also been registered in the United States. There is no evidence under Policy ¶ 4(c)(ii) that Respondent has been commonly known by the domain name, which resolves to a website with links to pay-per-click advertisements, some related to Complainant’s business and others unrelated.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the <totalgymwarehouse.com> domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <totalgymwarehouse.com> domain name under Policy ¶ 4(a)(ii).
Complainant has established this element.
It is clear from the circumstances described above in relation to the second element that Respondent was aware of Complainant’s well-known TOTAL GYM mark when registering the <totalgymwarehouse.com> domain name and did so intentionally to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the affiliation or endorsement of Respondent’s website and of the pay-per-click links to gym workouts and equipment promoted on its website.
The Panel therefore finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <totalgymwarehouse.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 12, 2021
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