Total Gym Global Corp. v. Milen Radumilo
Claim Number: FA2210002015820
Complainant is Total Gym Global Corp. (“Complainant”), represented by Tiffany Salayer of Procopio, Cory, Hargreaves and Savitch LLP, California. Respondent is Milen Radumilo (“Respondent”), RO.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <totalgym.pro>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on October 12, 2022; Forum received payment on October 12, 2022.
On Oct 18, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <totalgym.pro> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@totalgym.pro. Also on October 19, 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 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in 1974, Complainant is a manufacturer and worldwide marketer of athletic and recuperative training equipment.
Complainant holds a registration for the trademark TOTAL GYM, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,082,481, registered April 18, 2006, and renewed as of March 16, 2016.
Complainant has done business online since November 7, 1995, via the domain name <totalgym.com>.
Respondent registered the domain name <totalgym.pro> on October 9, 2022.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent, for its commercial gain, employs the domain name to resolve to a website featuring links to other websites selling gymnasium equipment in competition with the business of Complainant.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the TOTAL GYM mark.
Respondent has neither any rights to nor any legitimate interest in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the TOTAL GYM mark when it registered the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the TOTAL GYM trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Romania). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), the Panel concludes from a review of the record that Respondent’s <totalgym.pro> domain name is substantively identical and therefore confusingly similar to Complainant’s TOTAL GYM mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the generic Top Level Domain (“gTLD”) “.pro.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Ace Cash Express, Inc. v. Cyberwire, LLC., Case No. FA1387559 (Forum June 14, 2011):
Respondent’s domain name is confusingly similar to … [complainant’s] … service mark. In forming the contested domain name, Respondent has removed the spaces between the terms of Complainant’s mark … added the generic top-level domain (‘gTLD’) ‘.net.’ These alterations of the mark to form the domain name are insufficient to distinguish the domain name from the mark under Policy¶4(a)(i).
As to Respondent’s deletion of the space between the terms of Complainant’s mark in creating the domain name, this alteration of the mark is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces. See, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
… [S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither any rights to nor any legitimate interests in the <totalgym.pro> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <totalgym.pro> domain name, and that Complainant has not authorized Respondent to use the TOTAL GYM mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Milen Radumilo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent, for its commercial gain, employs the <totalgym.pro> domain name to resolve to a website featuring links to other websites selling gymnasium equipment in competition with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Tytenz Sports, LLC d/b/a Hippie Runner v. Tulip Trading Company, FA1714500 (Forum March 21, 2017):
[T]he disputed domain name resolves to a website consisting of links to the commercial websites of Complainant’s competitors .... Use of a disputed domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii) .... The Panel therefore finds that Respondent lacks rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii) for its failure to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are convinced by the evidence that Respondent’s employment of the
<totalgym.pro> domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Consolidated Property Holdings, Inc. v. Domain Escrow Manager, FA1674999 (Forum June 14, 2016):
Complainant argues that Respondent’s use of the disputed domain name to host competing hyperlinks disrupts and competes with Complainant’s business. The Panel agrees and finds bad faith registration and use under Policy ¶ 4(b)(iii).
We are also persuaded by the evidence of record that Respondent uses the <totalgym.pro> domain name, which we have found to be substantively identical, and therefore confusingly similar, to Complainant’s TOTAL GYM trademark, to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy¶4(b)(iv), this stands as further proof of Respondent’s bad faith in registering and using the domain name. See, for example,
National Academy of Recording Arts & Sciences, Inc. v. Argo Technologies LLC, FA1232078 (Forum December 19, 2008):
Complainant contends that Respondent is intentionally taking advantage of the likelihood of confusion between the domain name and Complainant’s … mark. Complainant also contends that Respondent’s purpose is commercial gain, in the form of the ‘click-through’ fees that Respondent presumably receives when Internet users click through to the third-party websites. The Panel finds that Respondent’s use of the disputed domain name for commercial gain is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <totalgym.pro> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 15, 2022
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