DECISION

 

Katy Hearn v. Emrecan Dogan

Claim Number: FA2402002082759

PARTIES

Complainant is Katy Hearn ("Complainant"), represented by Joseph Ponzio, Kentucky, USA. Respondent is Emrecan Dogan ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <katyhearnfit.com>, registered with DropCatch.com 679 LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Paddy Tam as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2024; Forum received payment on February 6, 2024.

 

On February 7, 2024, DropCatch.com 679 LLC confirmed by e-mail to Forum that the <katyhearnfit.com> domain name is registered with DropCatch.com 679 LLC and that Respondent is the current registrant of the name. DropCatch.com 679 LLC has verified that Respondent is bound by the DropCatch.com 679 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 February 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2024 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@katyhearnfit.com. Also on February 12, 2024, 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.

 

A timely Response was received and determined to be complete on February 28, 2024.

 

An Additional Submission was received from the Complainant on February 28, 2024.

 

On February 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paddy Tam 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant claims that it is a well-known public figure and fitness influencer. In 2014, the Complainant published a website on the Disputed Domain Name to inspire other women to follow and join its weight loss and fitness journey. In or around May of 2016, she filed a trademark for the name and mark "Katy Hearn Fit". Through today, its popularity grew as did her business portfolio, eventually spawning Katy Hearn Fitness LLC, Kaydn LLC, Katy.ai LLC, AlaniNu LLC, Onyx & Rose LLC, and Katy Hearn Gym, each of which would subsequently be added to her website hosted under the Disputed Domain Name.

 

The Complainant is well-known on Instagram with more than 1.8 million followers, and its businesses annually serve tens of thousands of customers across the United States.

 

B. Respondent

The Respondent rebuts that the decision to purchase this domain was driven by a strategic business plan to consolidate its existing online presence, which prominently features the word "FIT" in its branding. This move was aimed at enhancing the coherence and reaching of its fitness-oriented services and content online.

 

The Respondent proactively reached out to offer the domain for purchase at the exact price it paid for the Disputed Domain Name. This gesture was made in good faith, aiming to find an amicable resolution that respected both parties' interests.

 

The domain name's acquisition was not intended to infringe upon or disrupt any other entity's business or trademark rights but rather to complement and expand its existing online fitness platform.

 

C. Additional Submissions

The Complainant has submitted the email conversation with the Respondent. On the email, the Respondent has admitted using the Complainant's info and trademarks for profit and will redirect the Disputed Domain Name in a way that will intentionally negatively affect Complainant's business and brand unless the Complainant pays the Respondent an exorbitant amount for the domain.

 

The Respondent did not submit any additional submission.

 

FINDINGS

·                      The Disputed Domain Name was registered on November 29, 2023.

·                      The Complainant is the previous registrant of the Disputed Domain Name and has setup a website on the Disputed Domain Name until it was lapsed and registered by the Respondent.

·                      The Respondent resolves a website on the Disputed Domain Name which is very similar to Complainant's previous website.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

To satisfy the first element under Policy ¶ 4(a), a Complainant needs to prove its rights in a trademark and the domain name is identical and/or confusingly similar to the trademark.

 

The Complainant claims that it filed a trademark for the name and mark "Katy Hearn Fit". However, no certificate or printout was attached to the Complaint. The Panel is of the view that the Complainant has failed to prove that it has the registered Trademark right on "Katy Hearn Fit".

 

The Complainant also asserts that it has published its website on the Disputed Domain Name since 2014 and has been continuously used until the Disputed Domain Name was lapsed and registered by the Respondent. Even the Disputed Domain Name was registered by the Respondent, the website on the Disputed Domain Name continues to display Complainant's name, logo, image and mobile applications, etc. The Panel is of the view that throughout the extensive use and marketing activities conducted by the Complainant, the mark "Katy Hearn Fit" has already acquired a secondary meaning and the Complainant has the common law trademark rights on it. See Peter B. Walker v. taotao, FA2206002001826 (Forum July 27, 2022) ("PETER WALKER based upon his longstanding use of those marks in connection with his work as a business consultant, advisor, author, and speaker. Common law rights are sufficient under the Policy, provided the Complainant can prove that the mark has acquired secondary meaning."). See also Paul Loebach v. Nanci Nette, FA2302002031225 (Forum March 22, 2023) and Jessica Queller v. Damma Laima / APT, FA2301002027196 (Forum February 11, 2023).

 

By doing side-by-side comparison between the Disputed Domain Name and Complainant's "Katy Hearn Fit" mark, the Panel finds that they are confusingly similar and the ".com" top level domain does not negate the similarity.

 

For the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights and the Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

To satisfy the second element under Policy ¶ 4(a), a Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the domain names, and the burden of proof then shifts to the 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 Complainant claims that it has never granted the Respondent any right to use its name or likeness.

 

The Disputed Domain Name was purchased by the Respondent and Complainant's old website was copied and republished on the Disputed Domain Name, illegally using Complainant's logo, name, likeness, and customer success stories to mislead the public into thinking the Disputed Domain Name was still under Complainant's control and related to Complainant's various businesses.

 

The website was modified to disable the links to the Terms of Service; however, directly navigating to the terms brings the user to a page that clearly indicates that the website is owned and operated by, and the property of, the Complainant and/or Complainant's related businesses, as was the case prior to the Disputed Domain Name being purchased by the Respondent.

 

The Respondent has since replaced the website's blog with articles pushing products, allowing the public to believe that said products are endorsed or supported by the Complainant, which is not the case.

 

Having reviewed the screenshots provided by the Complainant as well as the live website resolved by the Disputed Domain Name, the Panel is of the view that the current content on the website is highly identical to the one before the Disputed Domain Name was registered by the Respondent, Internet users may not be aware that the Disputed Domain Name and website are no longer under Complainant's control and believe that it is still the official website of the Complainant.

 

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. See Microsoft Corporation v. William Schillings / NORT WEBSOFT SERVICES, FA2309002063326 (Forum October 20, 2023) ("This appears, to the Panel, as an official website of the Complainant and no notice is provided that Respondent has no affiliation with Complainant ... the overall appearance of the site, including its copyright notice and the purchase links for Complainant's products, give the impression that Respondent's goal is to appear as a site that originates with Complainant. As Complainant has made a prima facie showing that has not been rebutted by Respondent, the Panel finds no ground upon which to hold that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii) or (iv).") 

 

The burden of proof has been shifted to the Respondent to prove that it has right or legitimate interests to the Disputed Domain Name.

 

Policy ¶ 4(c) listed some common circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

 

(i) before any notice to [respondent] of the dispute, [respondent's] use 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 you have acquired no trademark or service mark rights; or

 

(iii) [respondent] [is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

The Respondent rebuts that the purchase the Disputed Domain Name was driven by a strategic business plan to consolidate its existing online presence, which prominently features the word "FIT" in its branding. The move was aimed at enhancing the coherence and reaching of its fitness-oriented services and content online. It proactively reached out to offer the domain for purchase at the exact price it paid for the Disputed Domain Name and the offer was declined by the Complainant.

 

The Panel is of the view that disregarding the previous ownership of the Disputed Domain Name, duplicating Complainant's official website to attract or maintain the volume of the traffic for commercial gain cannot be considered as bona fide offering. Not to mention that the Respondent proactively offered the Disputed Domain Name to the Complainant which will be further discussed under the following section of Registration and Use in Bad Faith.

 

The Panel finds that the Respondent has no ground to prove that it has rights or legitimate interests in the Disputed Domain Name under Policy ¶ 4(c)(ii) or (iv). See Robert Caro v. seoforlyfe seoforlyfe, FA2304002041748 (Forum May 23, 2023) ("The Domain Name resolves to the Respondent's Website which impersonates or mimics Complainant's Website by reproducing (including reproducing many of the copyrighted materials contained on the website) Complainant's Website as it was when Complainant failed to renew the Domain Name. Respondent's use of the Domain Name to impersonate Complainant for the purpose of commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) ("The resolving webpages between Complainant's and Respondent's websites are virtually the same. Respondent's use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).").")

 

For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

To satisfy the third element under Policy ¶ 4(a), a Complainant must prove both the registration and use of the disputed domain name is in bad faith.

 

The Complainant alleges that apart from reproducing content of its official website on the Disputed Domain Name, the Respondent uses the Disputed Domain Name to attract traffic for the commercial gain of USD 1,200 per month by placing an advertising banner on the website. The Complainant has tried to resolve the issue in an amicable way after receiving an offer of USD 25,000 from the Respondent, the Respondent has then lower the offer to USD 22,000 mentioning that it is the final offer and it will go ahead to redirect the domain name to Respondent's website which the Complainant will lose all of the visitors and brand awareness will fall apart. 

 

Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to establish bad faith, and may be demonstrated by Respondent incorporating a well-known mark into its disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) ("Complainant contends that Respondent's knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant's mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).").

 

Further under Policy ¶ 4(b)(i), offering a disputed domain name for sale to the public or to a respondent, along with an offer being made after a domain name's registration may demonstrate bad faith registration and/or use, if Respondent registered the disputed domain name with the intent of selling it. See RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1506001625879 (Forum Aug. 6, 2015) (finding that the respondent had listed the disputed domain name for sale at Go Daddy's auction website for $11,706, which thus indicated bad faith under Policy ¶ 4(b)(i)).

 

Having reviewed the content of the website resolved by the Disputed Domain Name and the email conversation between the Complainant and Respondent, the Panel is of the view that the Respondent did have actual knowledge of the Complainant during the registration of the Disputed Domain Name and have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. See Robert Caro v. seoforlyfe seoforlyfe, FA2304002041748 (Forum May 23, 2023) ("The Domain Name was registered by the Complainant in 2000 and its registration lapsed in 2020. Respondent purchased the Domain Name following its lapsing. At the time of purchase, Respondent would have had actual knowledge of Complainant's ROBERT CARO mark. The Domain Name was formerly owned by Complainant who let it expire in 2020. Respondent registered the Domain Name and uses it for a website that reproduces the content of the Complainant's Website. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii)…In the present case, the Respondent has offered the Domain Name for sale to Complainant for a significant sum well in excess of any likely registration costs. The Panel is satisfied that the Respondent's actions in registering the Domain Name after expiry with the intention to resell the Domain Name back to the Complainant amounts to a use of the Domain Name in bad faith under Policy ¶ 4(b)(i).")

 

Therefore, the Panel finds that Respondent registered and is using the Disputed Domain Name with bad faith under Policy ¶ 4(a)(iii).

 

For the foregoing reasons, the Panel finds the Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <katyhearnfit.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paddy Tam, Panelist

Dated: March 3, 2024