24 Hour Fitness USA, Inc. v. veronica rosignoli / veronicareidwebdesign.com
Claim Number: FA1512001653945
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan Hollander of K&L Gates LLP, California, USA. Respondent is veronica rosignoli / veronicareidwebdesign.com (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fitness247.fitness>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
JAMES BRIDGEMAN as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2015; the Forum received payment on December 23, 2015.
On December 24, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <fitness247.fitness> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2016 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 firstname.lastname@example.org. Also on December 28, 2015, 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 January 13, 2016.
On January 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed JAMES BRIDGEMAN as Panelist.
On January 19, 2016 Complainant filed timely Additional Submissions in accordance with the Forum's Supplemental Rule 7.
On January 25, 2016, Respondent also filed timely Additional Submissions in accordance with the Forum's Supplemental Rule 7.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant relies on its rights in its below-listed trademark registrations and also claims rights at common law in respect of the goodwill it has acquired through the use of the marks 24 HOUR FITNESS and 24 7 FITNESS in commerce for nearly two decades. Complainant has 450 facilities across the USA, has a current membership of nearly 4 million people, and has a history of expansion.
Complainant submits that the disputed domain name <fitness247.fitness> is identical or confusingly similar to its said 24 HOUR FITNESS and 24 7 FITNESS trademarks arguing that the disputed domain name wholly incorporates the dominant portion of Complainant’s well-known mark 24 HOUR FITNESS, and is substantially identical to Complainant’s 24 7 FITNESS mark in appearance, sound, connotation, and commercial impression. The mere reversal of the terms “24 7” and “FITNESS” adds no distinguishing weight in the likelihood of confusion analysis.
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name: there is no evidence to show that Respondent has ever legitimately been known by or operated a business under the name “Fitness 24/7” nor does Respondent have any trademark rights in that name.
The disputed domain name was created on November 3, 2014, many years after Complainant’s first United States trademark registration and only five months after Respondent expressly acknowledged Complainant’s exclusive rights in and to the 24 HOUR FITNESS marks in the Settlement Agreement described below.
Complainant submits that Respondent is using the disputed domain name in bad faith to offer services similar to those of Complainant’s business; that such use is in breach of said Settlement Agreement in circumstances where Respondent had actual knowledge of and had acknowledged Complainants rights in its said trademarks.
Respondent submits that she owns a fitness club with a membership of 450 in the city of Berea, Kentucky, which has a population of approximately 13,000 residents.
Respondent submits that she began operating a fitness club, approximately 6 years ago. Her club was initially named FITNESS, FRIENDS AND FUN, for a short period was renamed FITNESS 24/7 and is now named BEREA FITNESS.
Respondent denies the disputed domain name is confusingly similar to Complainant’s marks. She adds that Respondent is using a logo totally different from Complainant’s logo and that the disputed domain name is totally different from the marks in which the Complainant has rights.
Respondent submits that there is no risk of confusion between her enterprise and the Complainant’s business; that the “facilities (in her club) are nowhere near as lavish as the ones of Complainant’s and do not include a swimming pool or a sauna nor steam rooms, but are very functional and well-liked by the gym’s members”; that Respondent only markets her services in Madison County Kentucky; and that the Complainant’s website is prominently shown in the results of any query on an Internet search engine.
Respondent acknowledges that Complainant has a worldwide enterprise that owns and franchises fitness centers in 17 of the 50 U.S. States but argues that Complainant does not have any competing establishment in Berea or in the entire State of Kentucky. Respondent further argues that Complainant does not have the monopoly on the use of the combination of the terms “fitness” and “24/7” in relation to fitness services; states that there are many competing facilities using these element in combination; and claims that she is being selectively victimized.
Respondent denies that the disputed domain name is similar to Complainant’s mark and argues that there is no risk of confusion because the elements are reversed.
Respondent acknowledges that she entered into the agreement with Complainant but claims that she did so without the benefit of legal advice, trusting Complainant’s lawyers and that she did not read the agreement before signing it. She adds that there was an oral understanding that the “the term ‘24/7’ could only not be used in front of whatever future names Respondent may decide to use at a future date.” She claims that on that understanding she established the website <fitness247.fitness> on which she posted a disclaimer of non-affiliation with any other fitness facilities.
Respondent claims a right to the disputed domain name because it has never been claimed by anyone and it was registered after a long and diligent search. She uses the disputed domain name for a legitimate business purpose in order to attract potential members to her fitness club.
Respondent states that she also carries on a small business occasionally preparing web sites for third parties but denies that she has any intention of transferring the disputed domain name for profit.
Respondent also denies that she registered the disputed domain name in bad faith, stating that she has no intention of preventing the Complainant, as trade mark owner from using its trademark or disrupting the Complainant’s business.
C. Complainant’s Additional Submissions
Complainant refutes Respondent’s portrayal of the Settlement Agreement as unconscionable and unenforceable and states that the agreement reflects the outcome of an arm’s length negotiation in which Respondent was assisted by her father-in-law who engaged in the negotiations on the basis that he was an attorney “quite versed in the law and landmark cases” related to trademark matters.
Complainant re-asserts that the disputed domain name is identical or confusingly similar to its trademarks. Furthermore Complainant submits that Respondent has not provided evidence that she has any rights or legitimate interest in the disputed domain name; that Respondent registered and began using the disputed domain name five months after she entered into said Settlement Agreement with Complainant in which she expressly acknowledged Complainant’s rights in the 24 HOUR FITNESS and 24 7 FITNESS marks, including Complainant’s exclusive right to use those marks in commerce.
While Respondent attempts to distinguish the scope of her, and Complainant’s respective fitness facilities, at their core, both businesses offer fitness club facilities.
On August 11, 2015, the USPTO issued an Office Action in which it rejected Respondent’s application to register FITNESS 24/7 as a trademark on the grounds that it was likely to cause confusion with Complainant’s 24 HOUR FITNESS marks.
Respondent is incorrect in arguing that no bad faith is present in this case because Complainant does not operate any fitness facilities in its geographic location. The correct test is that bad faith exists where a respondent registers a domain name with knowledge of another party’s rights in trademarks and/or service marks incorporated into that domain name.
C. Respondent’s Additional Submissions
In Additional Submissions, Respondent re-asserts that she has every right and legitimate interest in this domain name.
Respondent denies that the final Settlement Agreement was ever reviewed by Respondent’s father in law; that her father in law is retired from the practice of law; and that in the end the agreement that she signed contained different terms from those she had negotiated. She understood that she had merely agreed that the term “24/7” could not be used in front of a chosen name but could be used after the word “fitness” – a term in which Complainant in its trademark applications claims no property.
Respondent states that she does not sell any products on her website, and the website only contains information for her local clients in Kentucky - a State where Complainant has no business operations.
Respondent refers to a sound recording of a conversation that allegedly took place between Respondent’s husband, and Complainant’s counsel, which she states is evidence that Complainant agreed to permit the use of the name Fitness 24/7 locally, as long as she dropped the trademark application, and tweak the web presence. Respondent agreed to these terms however once the trademark application was dropped, Complainant fiercely came after Respondent again. (For technical reasons this sound file could not be uploaded by Respondent and for reasons given below, because the issues of contract law are outside the scope of the UDRP, this Panel has not required to hear the data in the file and has decided that it is not necessary to request any transcript).
Complainant has used 24 HOUR FITNESS as a trademark and service mark in connection with a wide range of health and fitness related services since 1996 and has used the 24 7 FITNESS mark for the same products and services in 2008.
Complainant uses the 24 HOUR FITNESS trademark as the second level domain of a top level domain name <24hourfitness.com> which was created by Complainant on March 15, 1999.
Complainant is the owner of numerous trademark registrations for the 24 HOUR FITNESS and 24 7 FITNESS marks in the U.S.A. and other jurisdictions throughout the world including:
U.S. service mark 24 7 FITNESS, registration number 4,072,074 registered on December 13, 2011 in International Class 41 for “Health club services, namely, providing fitness and exercise facilities; instruction services, namely, instruction in the field of physical fitness; educational services, namely, instruction and training in the field of fitness; instruction programs in the field of physical fitness, namely, providing exercise classes for groups of individuals.”
U.S. service mark 24 7 FITNESS & Design, registration number 4,419,597 registered on October 15, 2013 in international Class 41 for “Health club services, namely, providing fitness and exercise facilities; instruction services, namely, instruction in the field of health and physical fitness; educational services, namely, instruction and training in the fields of fitness and nutrition; instruction programs in the field of health and physical fitness, namely, providing exercise classes for groups of individuals.”
U.S. service mark 24 7 FITNESS, registration number 4,572,642 registered on July 22, 2014 in international Class 44 for “Consulting services in the field of health, namely, instruction in the field of health; counseling services in the fields of health, nutrition, namely, instruction and training in the field of nutrition; counseling services in the fields of health, namely, instruction programs in the field of nutrition.”
Respondent is the owner of the fitness club located in Berea, KY, and has established a website to which the disputed domain name resolves at <www.fitness247.fitness> advertising her health and fitness club. Respondent’s club was formerly called FITNESS, FRIENDS AND FUN, for a short period was called FITNESS 24/7 and is now carrying on business as BEREA FITNESS.
Respondent is also the owner of a small website development business.
In 2014, Complainant objected to the use of the name FITNESS 24/7 by Respondent’s corporation, alleging that such use infringed Complainant’s trademarks. Following discussions, Complainant entered into a Settlement Agreement with Respondent’s corporation FITNESS, FRIENDS & FUN LLC. FITNESS 24/7 on May 23, 2014. Respondent personally signed said agreement on behalf of her corporation.
Said Agreement states inter alia that FITNESS, FRIENDS & FUN LLC agreed to phase out all use of the Complainants 24 HOUR FITNESS and 24 7 FITNESS marks over a thirty day period and forever cease on a worldwide basis, any further use whether direct or indirect of said marks or other mark confusingly similar to, dilutive of and/or incorporating the Complainants 24 HOUR FITNESS marks. At paragraph 8 it is expressly stated that the “Agreement contains the entire agreement between the Parties with respect to its subject matter and supersedes any prior written or oral understandings between the Parties regarding such subject matter.”
For reasons given above, Respondent claims that she is not bound by said agreement, whereas Complainant takes the view that said agreement is valid and enforceable against Respondent.
On or about November 3, 2014 Respondent registered the disputed domain name which she now uses as the address of a website to promote her BEREA FITNESS club.
Respondent has now changed the name of her fitness club to BEREA FITNESS.
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.
Preliminary Issue relating to Jurisdiction
Both Parties accept that on or about May 23, 2014, the Complainant entered into a Settlement Agreement with Fitness, Friends & Fun LLC, Limited Liability Company organized and existing under the laws of the State of Kentucky, and said Agreement was signed by Respondent on behalf of her corporation.
Respondent asserts that she entered into said Agreement without the benefit of legal advice, that the document that she signed does not reflect what was agreed, that there was an additional oral agreement the terms of which are not reflected in the signed document. Complainant denies these assertions and maintains that said Settlement Agreement is valid, effective and binding on Respondent.
This Panel finds that the validity or otherwise of said Settlement Agreement is a matter for the Courts and outside the scope of the Policy. In the same way any issues that might remain between the Parties in relation to Respondent’s trademark application to the USPTO are also beyond the jurisdiction of this Panel.
However, having considered the file and this Panel finds that it is possible to determine this Complaint, without having to determine the validity or otherwise of said Settlement Agreement. This can be brought to another forum should the Parties choose.
Conscious that neither Party has requested the Panel to decline jurisdiction, and in the interests of expedition and fairness, this Panel has decided to proceed.
Identical and/or Confusingly Similar
Complainant has provided evidence of its statutory and common law rights in the 24 HOUR FITNESS and 24 7 FITNESS through its above-referenced USPTO registrations and through its use of the marks in commerce for two decades. Complainant’s rights in its registered trademarks have not been put in issue by Respondent. Respondent has also acknowledged in her Response that Complainant has a worldwide enterprise that owns and franchises fitness centers in 17 of the 50 U.S. States.
This Panel accepts Complainants submissions that the disputed domain name is composed of the same elements as, and is confusingly similar to Complainant’s 24 7 FITNESS mark. This Panel rejects Respondents submission that the reversal of the two elements “fitness” and “24 7” in some way distinguishes the domain name from Complainant’s mark. In fact while panels usually ignore the gTLD element when making a comparison in the present case the “.fitness” gTLD extension adds to the confusing character of the disputed domain name.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent claims a right to the disputed domain name because it has never been claimed by anyone and it was registered after a long and diligent search. She asserts that she is using the disputed domain name for a legitimate business purpose in order to attract potential members to her fitness club.
If said Settlement Agreement is valid and binding and the entirety of the agreement reached, then Respondent’s company, clearly can assert no rights to use the disputed domain name. Such use would be in breach of the express provisions of the Agreement as the disputed domain name is similar to and incorporates Complainant’s 24 7 FITNESS mark.
On the other hand if said Agreement is not binding on Respondent, or her company, or is not the entirety of their bargain, as she would claim, the situation nonetheless remains that her club is not known by the domain name; she is carrying on business under the quite different name BEREA FITNESS; and any unauthorized use of the disputed domain name to promote a gym or fitness club would infringe Complainants above-listed trademarks each of which pre-date the registration of the disputed domain name.
Regardless of whether said Settlement Agreement is enforceable or not, there is still no evidence that Respondent has any entitlement to use Complainant’s trademark for her business. Respondent asserts a legitimate interest in the disputed domain name because it has never been claimed by anyone and it was registered after a long and diligent search and she asserts that she has a right to use the disputed domain name for a legitimate business purpose in order to attract potential members to her fitness club. These assertions are incorrect. The fact that the disputed domain name was available for registration does not automatically grant Respondent, as registrant a legitimate interest in the registration and Respondent has no right to use Complainant’s mark in this manner without license or authority.
In the circumstances Respondent has failed to discharge the burden of production to establish that she has rights or legitimate interest in the disputed domain name and therefore, Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent denies Complainants allegation that the disputed domain name was registered and is being used in bad faith.
Complainant has argued that the use of the disputed domain name is in breach of said Agreement which is denied by Respondent. If said Agreement is valid and its express terms are binding on Respondent, then the registration and use of the disputed domain name would be clearly in breach of her undertakings and therefore in bad faith.
If the express terms of said Agreement are not binding on Respondent for whatever reason, it remains the case that Respondent was actually aware of Complainant’s statutory and common law rights in the 24 HOUR FITNESS and 24 7 FITNESS marks when she chose and registered the disputed domain name.
Since then Respondent has intentionally used the disputed domain name to promote a fitness center which is in competition with Complainant’s business. In doing so Respondent is infringing Complainant’s statutory and common law rights in said marks. The fact that Complainant has no outlet in Kentucky is not relevant as its statutory rights and protectable reputation are nation-wide. See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Furthermore Respondent has acknowledged that the “facilities (in her club) are nowhere near as lavish as the ones of Complainant’s and do not include a swimming pool or a sauna nor steam rooms, but are very functional and well-liked by the gym’s members…” It follows that use of the Complainant’s marks in association with an enterprise with less facilities than those provided at Complainant’s fitness centers carries the risk of damaging Complainant’s reputation.
Because of the similarity of the domain name at issue and Complainant’s mark, any use of the disputed domain name as the address of a website would create an Initial interest confusion which would not be dispelled by any disclaimer posted on the website.
In the circumstances, this Panel concludes that Respondent has registered and is using the disputed domain name in bad faith in order to take predatory advantage of Complainant’s rights in the 24 7 FITNESS mark. This Panel finds that by such use of the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's 24 7 FITNESS mark as to the source, sponsorship, affiliation, or endorsement of his web site. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the respondent registered the domain name <statefarmnews.com> in bad faith because the respondent intended to use the complainant’s marks to attract the public to the web site without permission from the complainant).
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fitness247.fitness> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: January 28, 2016
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