Fitness International, LLC v. Fitoor Shah
Claim Number: FA2206001999637
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is Fitoor Shah (“Respondent”), Sri Lanka.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lafitnessemployeeportal.net>, registered with Porkbun 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2022; the Forum received payment on June 8, 2022.
On June 9, 2022, Porkbun Llc confirmed by e-mail to the Forum that the <lafitnessemployeeportal.net> domain name is registered with Porkbun Llc and that Respondent is the current registrant of the name. Porkbun Llc has verified that Respondent is bound by the Porkbun 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 June 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@lafitnessemployeeportal.net. Also on June 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Fitness International, LLC, uses its LA FITNESS mark in connection with a fitness and health club across over twenty states in the United States. Complainant has rights in the LA FITNESS mark through its registration with the United States Trademark and Patent Office (“USPTO”) (e.g., Reg. No. 1,806,464, registered November 23,1993). The disputed domain name is identical or confusingly similar to Complainant’s mark because it incorporates the LA FITNESS mark in its entirety and adds the words “employee” and “portal”, as well as the “.net” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its LA FITNESS mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users with a false impression of association with Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. First, Respondent uses the disputed domain name to disrupt Complainant’s business. Additionally, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Moreover, Respondent uses the disputed domain name’s resolving webpage to impersonate Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the LA FITNESS mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on February 8, 2022.
2. Complainant has established rights in the LA FITNESS mark through its registration with the United States Trademark and Patent Office (“USPTO”) (e.g., Reg. No. 1,806,464, registered November 23,1993).
3. The disputed domain name’s resolving website displays Complainant’s LA FITNESS word mark and design mark prominently at the top and center, and offers services to Fitness International’s employees.
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”).
Complainant claims rights in the LA FITNESS mark through its registration with the USPTO (e.g., Reg. No. 1,806,464, registered November 23,1993). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). Complainant has provided evidence of the trademark registration. Therefore, the Panel finds Complainant has established rights in the LA FITNESS mark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
Complainant argues that the disputed domain name <lafitnessemployeeportal.net> is confusingly similar to Complainant’s LA FITNESS mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety in a disputed domain name with the addition of generic terms is generally not sufficient in distinguishing a domain name from a protected mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, the addition of the gTLD “.net” is generally irrelevant in determining whether a domain name is identical or confusingly similar to protected mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.). The disputed domain name incorporates Complainant’s LA FITNESS mark in whole and adds the generic terms “employee” and “portal”, as well as the “.net” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to 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 Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed to Respondent any rights in the LA FITNESS mark. Without evidence to the contrary, use of a privacy service in a domain name’s WHOIS information supports a finding that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015) (“The WHOIS information lists ‘WhoisProtectService.net’ as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.”). Respondent used a privacy service to shield its identity in the disputed domain name’s WHOIS information. However, the registrar has revealed Respondent being “Fitoor Shah.” Further, there is no evidence to suggest that Respondent was authorized to use Complainant’s LA FITNESS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. A respondent’s use of confusingly similar domain name to divert Internet users seeking the complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Further, the Panel notes that Respondent passes itself off as Complainant in the disputed domain name’s resolving webpage in order to impersonate Complainant through displaying Complainant’s logo and mark as well as descriptions purporting to be Complainant. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent uses the disputed domain name in order to disrupt Complainant’s business in bad faith. Complainant has provided a screenshot of the landing page at the disputed domain name which displays Complainant’s LA FITNESS word mark and design mark prominently at the top and center, and claims to offer services to Fitness International’s employees.
Impersonating a complainant is evidence of bad faith per Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
The Panel also notes that use of a domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also 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 Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lafitnessemployeeportal.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 12, 2022
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