iFIT Inc. v. wills eldren
Claim Number: FA2110001967723
Complainant is iFIT Inc. (“Complainant”), represented by James W. McConkie III of Workman Nydegger, Utah, USA. Respondent is wills eldren (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nordictrack-usa.shop>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 5, 2021.
On October 7, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <nordictrack-usa.shop> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. 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 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2021 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@nordictrack-usa.shop. Also on October 12, 2021, 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 November 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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.
A. Complainant
Complainant contends as follows:
Complainant is an innovative manufacturer, designer, and retailer of fitness equipment, gear, and technology.
Complainant has rights in the NORDICTRACK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <nordictrack-usa.shop> domain name is confusingly similar to Complainant’s NORDICTRACK mark. Respondent incorporates the mark in its entirety and adds the generic term “USA” and “.shop” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <nordictrack-usa.shop> domain name as Respondent is not commonly known by the at-issue domain name nor did Complainant authorize Respondent to use the NORDICTRACK mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent offers Complainant’s products for sale without authorization from Complainant.
Respondent registered and used the <nordictrack-usa.shop> domain name in bad faith as Respondent attempts to pass off as Complainant by displaying Complainant’s mark and offering related products for sale. Respondent had actual knowledge of Complainant’s rights in the NORDICTRACK mark due to the long-standing use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the NORDICTRACK trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the NORDICTRACK trademark.
Respondent’s domain name addresses a website that imitates Complainant’s genuine website and offers Complainant’s products for sale without any authorization from Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its NORDICTRACK trademark. Such registration is sufficient to demonstrate Complainant’s rights in the NORDICTRACK mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <nordictrack-usa.shop> domain name contains Complainant’s NORDICTRACK trademark followed by a hyphen and the geographic term “usa,” with all followed by the top-level domain name, “.shop.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <nordictrack-usa.shop> domain name from the NORDICTRACK trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <nordictrack-usa.shop> domain name is confusingly similar to Complainant’s trademark. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <nordictrack-usa.shop> identifies the domain name’s registrant as “Wills Eldren” and the record before the Panel contains no evidence showing that Respondent is commonly known by the <nordictrack-usa.shop> domain name. The Panel therefore concludes that Respondent is not commonly known by the <nordictrack-usa.shop> domain name for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also, Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Additionally, Respondent uses <nordictrack-usa.shop> to offer Complainant’s products for sale without authorization to do so. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent uses the confusingly similar <nordictrack-usa.shop> domain name to address a website offering Complainant’s products for sale at drastically reduced prices without Complainant’s authorization to do so. There, Respondent attempts to pass itself off as Complainant by misappropriating Complainant’s trademark and website content thereby creating the illusion that Respondent is somehow related to Complainant when it is not. Respondent’s use of the <nordictrack-usa.shop> domain name in such manner demonstrates Respondent’s bad faith registration and us of the domain name per Policy ¶ 4(b)(iii) and (iv). See Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the NORDICTRACK mark when it registered <nordictrack-usa.shop> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s misappropriation of Complainant’s trademark and website content for use on Respondent’s <nordictrack-usa.shop> website; and from Respondent’s use of its <nordictrack-usa.shop> website in furtherance of selling unauthorized NORDICTRACK products. Respondent’s registration and use of the at-issue domain name with knowledge of Complainant’s rights in such domain name further shows its bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nordictrack-usa.shop> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 4, 2021
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