Coulter Ventures, LLC d/b/a Rogue Fitness v. Kay Bitzer / MindBody Online
Claim Number: FA2203001986874
Complainant is Coulter Ventures, LLC d/b/a Rogue Fitness ("Complainant"), represented by Liz Brodzinski of Banner & Witcoff, Ltd., Illinois, USA. Respondent is Kay Bitzer / MindBody Online ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roguefitness.coach>, registered with NameCheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022; the Forum received payment on March 4, 2022.
On March 4, 2022, NameCheap, Inc. confirmed by email to the Forum that the <roguefitness.coach> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@roguefitness.coach. Also on March 10, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 April 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 produces strength and fitness products and services and related entertainment media. Complainant has used ROGUE and ROGUE FITNESS in connection with these goods and services since its inception in 2006. Complainant owns longstanding United States trademark registrations for ROGUE and ROGUE FITNESS in standard character form, and also asserts common law rights in the marks arising from continuous use and promotion.
Respondent registered the disputed domain name <roguefitness.coach> via a privacy registration service in January 2022. The domain name currently redirects users to Complainant's website, and the MX (mail exchanger) records for the domain name are configured to use Google as an email service provider. Complainant alleges that this suggests an intent to use the domain name to pass off as Complainant and thereby conduct fraudulent activity victimizing Complainant's current or potential customers. Complainant states that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <roguefitness.coach> is identical or confusingly similar to its ROGUE FITNESS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <roguefitness.coach> incorporates Complainant's registered ROGUE FITNESS trademark, omitting the space and appending the ".coach" top-level domain. The omission of a space and the addition of a top-level domain are normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., PFIP, LLC v. Zhou ZeHao, FA 1374790 (Forum Apr. 1, 2011) (finding <planetfitness.info> identical to PLANET FITNESS). Accordingly, the Panel finds the disputed domain name to be identical to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. Its sole apparent use has been to redirect Internet users to Complainant's own website. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., HDR Global Trading Ltd. v. \uc18c\ubbfc \ucd5c, FA 1829914 (Forum Mar. 15, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name corresponding to Complainant's registered mark without authorization, and is using the domain name to redirect users to Complainant's website and potentially to send or receive email. Complainant alleges that Respondent is likely attempting to pass off as Complainant and thereby engage in fraudulent activity aimed at Complainant's customers; Respondent has neither denied that allegation nor come forward to offer an alternative explanation. The Panel considers these circumstances to be indicative of bad faith registration and use under the Policy. See, e.g., United Parcel Service of America, Inc. v. Horacio Taylor, FA 1955379 (Forum Aug. 16, 2021) (finding bad faith where domain name registered via privacy registration service was used for website mimicking complainant's site, with MX records configured to support email); HDR Global Trading Ltd. v. \uc18c\ubbfc \ucd5c, supra (finding bad faith where domain name corresponding to trademark was redirected to complainant's website, absent plausible explanation from respondent). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roguefitness.coach> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 6, 2022
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