24 Hour Fitness USA, Inc. v. Domain Name For Sale / Redefine WEB Private Limited
Claim Number: FA1609001694048
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Domain Name For Sale / Redefine WEB Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hour.fitness>, registered with Go Canada Domains, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2016; the Forum received payment on September 16, 2016.
On September 16, 2016, Go Canada Domains, LLC confirmed by e-mail to the Forum that the <24hour.fitness> domain name is registered with Go Canada Domains, LLC and that Respondent is the current registrant of the name. Go Canada Domains, LLC has verified that Respondent is bound by the Go Canada Domains, 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 September 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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 September 21, 2016, 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 October 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant registered its 24 HOUR FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,130,895, registered Jan. 20, 1998), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <24hour.fitness> domain name is identical to Complainant’s mark, because it features the entire mark, merely omitting the spaces and using the FITNESS portion of the mark as a generic top-level domain (“gTLD”), which in this case increases the likelihood of confusion.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no trademark rights in the 24 HOUR FITNESS mark and has not been commonly known by the disputed domain name. Respondent registered the domain name for the primary purpose of reselling it, and the disputed domain name currently resolves to a website offering it for sale to the general public. This clearly is evidence that Respondent is not using the domain in connection with a permissible use under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered and is using the <24hour.fitness> domain name in bad faith. Respondent is attempting to sell this domain name for excess of its out-of-pocket costs. Respondent’s intention for registering the domain name was to resell it, and the offer to sell for $5,000 is much more than out-of-pocket costs. Respondent also had actual knowledge of Complainant’s 24 HOUR FITNESS mark when it registered the disputed domain name, and this is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <24hour.fitness> domain name.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it has registered its 24 HOUR FITNESS mark with the USPTO (e.g., Reg. No. 2,130,895, registered Jan. 20, 1998), and that it has rights in the mark under Policy ¶ 4(a)(i). Panels have found that USPTO registration confers rights in a mark, even when the registration is not in the country where a respondent resides. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its 24 HOUR FITNESS mark.
Complainant further contends that Respondent’s <24hour.fitness> domain name is identical to its 24 HOUR FITNESS mark. Complainant argues that Respondent’s domain name merely omits the spaces and uses the FITNESS portion of Complainant’s mark as a descriptive gTLD. Panels have agreed that using a gTLD that is descriptive of a complainant’s business can lead to a finding of identicality and increase confusing similarity. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (FORUM Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA 1594837 (Forum Jan. 22, 2015) (“While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys.”). As such, the Panel finds that <24hour.fitness> is identical to the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the <24hour.fitness> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its 24 HOUR FITNESS mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “Eshaan Vatsa” as the registrant, and “Redefine Web Private Limited” as the organization. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant further asserts that Respondent’s use of the domain name demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is using <24hour.fitness> to redirect Internet users to another website that offers the disputed domain name for sale. Panels have found that a respondent’s offer to sell a domain name is evidence that a respondent lacks any rights or legitimate interests. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <24hour.fitness> domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant alleges that Respondent registered and is using the <24hour.fitness> domain name in bad faith. Complainant argues that Respondent registered the disputed domain name for the primary purpose of selling it for more than its out-of-pocket costs. Complainant has provided a screen shot of the resolving website at <24hour.fitness>, which it argues is an offer to sell the domain name. Panels have found a respondent to be in bad faith when their primary purpose of registering the domain name is to resell it for a profit. See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). As such, the Panel determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant additionally argues that Respondent had actual knowledge of its 24 HOUR FITNESS mark when it registered the <24hour.fitness> domain name. Complainant argues that previous UDRP decisions have found its 24 HOUR FITNESS mark to be famous and well-known. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA0187429 (Forum Sept. 26, 2003) (“Complainant has also established common-law rights in the mark through widespread and continuous use of the mark in commerce for nearly two decades.”); see also 24 Hour Fitness USA, Inc. v. Garry Marino, FA1279683 (Forum Sept. 28, 2009) (“By employing a confusingly similar mark, Respondent captures users hoping to enter Complainant’s site and trades on the goodwill surrounding Complainant’s famous 24 HOUR FITNESS Marks. This use clearly constitutes bad faith use and registration under the Policy”). Complainant also argues that because Respondent’s <24hour.fitness> domain name is identical to its 24 HOUR FITNESS mark, this leads to the inference of actual knowledge. Although the UDRP does not recognize constructive notice alone as sufficient grounds to find a respondent in bad faith, a Panel may infer actual notice from the fame of a mark or the method by which the disputed domain name was registered. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see also Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Therefore, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii), because Respondent had actual knowledge of Complainant’s rights in the 24 HOUR FITNESS mark when it registered the <24hour.fitness> domain name.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24hour.fitness> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 26, 2016
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