Fitness International, LLC v. Dan Lee
Claim Number: FA2205001995850
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin B. Kosinski, California, USA. Respondent is Dan Lee (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lafitnessboxing.com>, registered with GoDaddy.com, 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2022; the Forum received payment on May 10, 2022.
On May 11, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lafitnessboxing.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2022 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@lafitnessboxing.com. Also on May 13, 2022, 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 May 16, 2022.
On May 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Fitness International, LLC, has rights in the L.A. FITNESS and LA FITNESS marks (jointly called the “L.A. FITNESS mark”) through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,464 registered November 23, 1993, and Reg. No. 2,326,358 registered March 7, 2000). See Kosinski Decl. Ex. A. Respondent’s <lafitnessboxing.com> domain name is confusingly similar to Complainant’s mark because it incorporates the L.A. FITNESS mark in its entirety and adds the term “boxing” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <lafitnessboxing.com> domain name. Respondent is not commonly known by the disputed domain name, Complainant made no agreement with Respondent to use its L.A. FITNESS mark, and there is no evidence to indicate that Respondent maintains any legitimate rights or interest in the disputed domain name.
Respondent registered and uses the <lafitnessboxing.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent failed to respond to Complainant’s attempts at communication.
B. Respondent
Respondent uses the disputed domain name to refer to a blog detailing the training of Respondent’s clients and manage scheduling. See Response.
Respondent makes a legitimate noncommercial fair use of the domain name <lafitnessboxing.com>.
Respondent registered and uses <lafitnessboxing.com> in good faith. Respondent lacks intent to misleadingly divert consumers for commercial gain or to tarnish the trademark of Complainant.
Complainant, Fitness International, LLC, offers a variety of health club services. Complainant has rights in the L.A. FITNESS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,464 registered November 23, 1993, and Reg. No. 2,326,358 registered March 7, 2000). See Kosinski Decl. Ex. A.
Respondent runs a boxing training facility in Los Angeles. The <lafitnessboxing.com> domain name was registered on January 22, 2022. See Kosinski Decl. Ex. D. The disputed domain name refers to a website promoting personal training and boxing services.
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 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.
Complainant asserts rights in the L.A. FITNESS mark based upon the registration with the USPTO (e.g., Reg. No. 1,806,464 registered November 23 1993). See Kosinski Decl. Ex. A. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the L.A. FITNESS mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues Respondent’s <lafitnessboxing.com> domain name is identical or confusingly similar to Complainant’s L.A. FITNESS mark because it contains the L.A. FITNESS mark in its entirety while adding in the term “boxing” and the “.com” gTLD. The addition of a gTLD and a descriptive term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <lafitnessboxing.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the L.A. FITNESS mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Dan Lee”. See Registrar Email Verification. Complainant asserts it did not give any license or other permission to Respondent to use Complainant’s L.A. FITNESS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
In view of the above, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to come forward with evidence of its rights or legitimate interests.
Respondent claims it has a legitimate interest and is making a legitimate noncommercial fair use of the <lafitnessboxing.com> domain name. Respondent does not provide any reasons other than indicating it uses the disputed domain name for a blog detailing the training of Respondent’s clients. According to Respondent, the website linked to the <lafitnessboxing.com> domain name is consistently visited by Respondent’s clients to answer questions about Respondent’s schedule.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0. In this case, the disputed domain name incorporates Complainant’s L.A. FITNESS trademark in its entirety and adds the term “boxing”, which can be easily related to Complainant’s fitness services. Therefore, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant.
The Panel further observes that the <lafitnessboxing.com> domain name refers to a website offering services related to Complainant’s services or even competing services. According to the Panel, Respondent makes a commercial use of the disputed domain name as the website promotes Respondent’s services to all visitors of the website. Considering the overall circumstances of the case, as further addressed under the third element of the Policy below, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore concludes that Respondent has no rights or legitimate interests in the <lafitnessboxing.com> domain name.
Complainant argues that Respondent registered and uses the <lafitnessboxing.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Use of a confusingly similar domain name can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”) Complainant provides evidence of the disputed domain name resolving to a page which displayed a logo including the L.A. FITNESS mark, as well as the words “LA FITNESS” in white color next to the term “boxing” in blue. See Kosinski Decl. Ex. C. The Panel observes that the words “LA FITNESS” in white color, corresponding to Complainant’s mark, have subsequently been changed to “DAN LEE”. The logo including the L.A. FITNESS mark remains unchanged. In the Panel’s view, the above elements are indications of bad faith per Policy ¶ 4(b)(iii).
Complainant also argues that Respondent registered and uses the <lafitnessboxing.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant provides evidence to establish the notoriety of its mark, used in commerce for over thirty years. See Bryant Decl. ¶¶2, 4. Moreover, the Panel observes that Respondent resides in the same area where Complainant was founded and still has its registered offices as well as about 20 fitness centers. Given the Respondent’s activity as a personal trainer and boxing coach, the Panel finds that Respondent must have been aware of Complainant and its L.A. FITNESS mark when registering the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that it sent a demand letter and did not receive a reply from Respondent. See Cislo Decl. ¶ 3. Complainant contends that Respondent’s failure to respond to its demand letter or other efforts at communication is evidence of bad faith under Policy ¶ 4(a)(iii). In the circumstances of the present case, the Panel considers failure to respond to Complainant’s demand letter to be further evidence of bad faith, even if Respondent submitted a Response in the present case. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lafitnessboxing.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: June 7, 2022
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