Total Gym Global Corp. v. xiansheng chen / chenxiansheng
Claim Number: FA2209002011908
Complainant is Total Gym Global Corp. (“Complainant”), represented by Tiffany Salayer of Procopio, Cory, Hargreaves and Savitch LLP, California, US. Respondent is xiansheng chen / chenxiansheng (“Respondent”), SG.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <totaldirectctgym.com> and <totalgymdifect.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on September 13, 2022; Forum received payment on September 13, 2022.
On October 04, 2022, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <totaldirectctgym.com> and <totalgymdifect.com> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 October 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2022 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@totaldirectctgym.com, postmaster@totalgymdifect.com. Also on October 7, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Registration Agreement with respect to the disputed domain name is written in the Japanese language, thereby making the language of this proceeding Japanese.
The Panel has a discretion under UDRP Rule 11(a) to determine that, although the presumption is that the language of the proceeding is Japanese, it may be a different language if the Panel finds that it would be more appropriate, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Having regard to all the circumstances, the Panel finds that it would be more appropriate for the language of the proceeding to be English. As an English language Complaint has already been filed and served, the Panel determines that the proceeding may go forward, with English being the language in which it is conducted.
A. Complainant
Complainant made the following contentions.
Complainant, Total Gym Global Corp., manufactures and offers bodyweight training equipment. Complainant asserts rights in the TOTAL GYM mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,082,481, registered April 18, 2006) and other trademark agencies worldwide. See Compl. Annexes 9 and 10. Respondent’s <totaldirectctgym.com> and <totalgymdifect.com> domain names are confusingly similar to Complainant’s mark because they contain the TOTAL GYM mark in its entirety, merely adding generic terms and the generic top-level domain (“gTLD”) “.com” to form the disputed domain names. The <totaldirectctgym.com> domain name adds the terms “direct” and “ct”, as well as the gTLD “.com”. The <totalgymdifect.com> domain name adds the term “difect” and the gTLD “.com”.
Respondent does not have rights or legitimate interests in the <totaldirectctgym.com> and <totalgymdifect.com> domain names. Respondent is not licensed or authorized to use Complainant’s TOTAL GYM mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to host pay-per-click websites featuring sponsored-link advertisements.
Respondent registered and uses the <totaldirectctgym.com> and <totalgymdifect.com> domain names in bad faith. Respondent uses the disputed domain names to attract internet users to its sites for commercial gain by creating a likelihood of confusion as to the affiliation or sponsorship of its sites. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TOTAL GYM mark.
Respondent registered the <totaldirectctgym.com> domain name on May 27, 2022, and the <totalgymdifect.com> domain name on August 17, 2022.
B. Respondent
Respondent failed to submit a Response in this proceeding.
3. Respondent registered the <totaldirectctgym.com> domain name on May 27, 2022, and the <totalgymdifect.com> domain name on August 17, 2022
4. Respondent uses the disputed domain names to host pay-per-click websites featuring adult-oriented sponsored-link advertisements.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant Submits that it has rights in the TOTAL GYM mark based upon registration with the USPTO (e.g., Reg. No. 3,082,481, registered April 18, 2006) and other trademark agencies worldwide. See Compl. Annexes 9 and 10. Registration of a mark with multiple trademark agencies is considered a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the TOTAL GYM mark with the USPTO and other trademark agencies, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TOTAL GYM mark. Complainant contends that Respondent’s <totaldirectctgym.com> and <totalgymdifect.com> domain names are confusingly similar to Complainant’s TOTAL GYM mark. The addition of generic terms and a gTLD to a mark does not distinguish the disputed domain names from the mark incorporated therein per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The disputed domain names incorporate the TOTAL GYM mark in its entirety, merely adding generic words and the gTLD “.com”. The <totaldirectctgym.com> domain name adds the word “direct” and the letters “ct”, as well as the gTLD “.com”. The <totalgymdifect.com> domain name adds the term “difect” which clearly is a misspelling of “direct” and the gTLD “.com” Therefore, the Panel finds that the disputed domain names are confusingly similar to the TOTAL GYM mark under Policy ¶ 4(a)(i).
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 names 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 TOTAL GYM mark and to use it in its domain names adding in the case of the <totaldirectctgym.com> domain name the word “direct” and the letters “ct”, and in the case of the <totalgymdifect.com> domain name the word “difect” which clearly is a misspelling of “direct”;
(b) Respondent registered the <totaldirectctgym.com> domain name on May 27, 2022, and the <totalgymdifect.com> domain name on August 17, 2022;
(c) Respondent uses the disputed domain names to host pay-per-click websites featuring adult-oriented sponsored-link advertisements;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <totaldirectctgym.com> and <totalgymdifect.com> domain names because Respondent is not licensed or authorized to use Complainant’s TOTAL GYM mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “xiansheng chen / chenxiansheng.” See Registrar Verification Emails. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the <totaldirectctgym.com> and <totalgymdifect.com> domain names to host pay-per-click websites featuring adult oriented sponsored-link advertisements. Using disputed domain names to offer third-party links to unrelated websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”); see also Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Here, Complainant has provided screenshots of the disputed domain names’ resolving sites, displaying the aforementioned links and adult oriented content. See Compl. Annexes 11 and 12. Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Using a disputed domain name to display adult oriented material may be further evidence that a respondent lacks rights and legitimate interests and is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). The Panel recalls the screenshots provided by Complainant which show Respondent’s use of adult oriented material at the disputed domain names’ resolving sites. See Compl. Annexes 11 and 12. Thus, the Panel finds that Respondent fails to use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
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 does not have a right or legitimate interest in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <totaldirectctgym.com> and <totalgymdifect.com> domain names in bad faith because Respondent uses the disputed domain names to attract internet users to its sites for commercial gain by creating a likelihood of confusion as to the affiliation or sponsorship of its sites. Using disputed domain names to create confusion and seek commercial gain is evidence of bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant points to the pay-per-click advertising links from which Respondent likely profits. See Compl. Pgs. 4-5. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TOTAL GYM mark. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). To support this submission, Complainant points to the recognition and long-standing use of its mark, as well as to Respondent incorporating the entire TOTAL GYM mark in the disputed domain names. See Compl. Pg. 7. As such, as the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in its mark and this supports a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, 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 names using the TOTAL GYM mark and in view of the conduct that Respondent has
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
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 <totaldirectctgym.com> and <totalgymdifect.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: November 11, 2022
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