BOSU Fitness, LLC v. Kolombo Networks
Claim Number: FA0906001266587
Complainant is BOSU Fitness, LLC (“Complainant”), represented by Omid
A.
REGISTRAR
The domain names at issue are <bosubootcamp.com> and <bosubody.com>, registered with Tucows 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bosubootcamp.com and postmaster@bosubody.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bosubootcamp.com> and <bosubody.com> domain names are confusingly similar to Complainant’s BOSU mark.
2. Respondent does not have any rights or legitimate interests in the <bosubootcamp.com> and <bosubody.com> domain names.
3. Respondent registered and used the <bosubootcamp.com> and <bosubody.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BOSU Fitness,
LLC, has provided physical fitness instructional services and sold exercise
devices and fitness regimens under the BOSU mark since 2000. Complainant has also garnered industry-wide
recognition and media attention since that time. Complainant holds several registrations of
its BOSU mark with the United States Patent and Trademark Office (“USPTO”)
(i.e., Reg. No. 2,518,696 issued
Respondent registered the <bosubootcamp.com>
and <bosubody.com>
domain names on
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."
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(e), 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 (Nat. Arb. 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.”).
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.
The Panel is satisfied with Complainant’s showing of its rights in the BOSU mark under Policy ¶ 4(a)(i) through its registrations of the BOSU mark with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Both of the <bosubootcamp.com>
and
<bosubody.com> domain names contain Complainant’s entire BOSU
mark and add the generic top-level domain (“gTLD”) “.com.” In addition, the <bosubootcamp.com> domain name adds the descriptive term “bootcamp,” which
describes Complainant’s physical fitness business, while the <bosubody.com>
domain name adds the generic term “body.”
The Panel finds that none of the aforementioned alterations to
Complainant’s mark sufficiently distinguish either of the disputed domains from
Complainant’s mark. See Oki Data Ams., Inc. v.
Therefore, the Panel finds that each of the <bosubootcamp.com> and <bosubody.com>
domain names is confusingly similar to Complainant’s BOSU mark under Policy ¶
4(a)(i). The
Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Initially, Complainant must make a prima facie showing that Respondent lacks rights and legitimate
interests in the disputed domain
names. The Panel finds that Complainant
has sufficiently made its prima facie
showing under Policy ¶ 4(a)(ii). The burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain names. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
The <bosubootcamp.com> domain name does not resolve to any
website. The Panel finds that
Respondent’s failure to make an active use of the <bosubootcamp.com>
domain name in connection with any content is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the respondent had no rights or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed
to make any active use of the domain name); see
also Bloomberg L.P. v. SC
Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum
Respondent’s
<bosubody.com> domain name resolves to a website that
features a blog about steroids and contains Complainant’s copyrighted videos. The Panel finds that Respondent’s use of this
disputed domain name is an attempt by Respondent to pass itself off as
Complainant. Therefore, the Panel finds
that Respondent’s use of the <bosubody.com>
domain name to hold itself out as the source of Complainant’s copyrighted videos
is not a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Kmart
of
Furthermore, Respondent is listed in the WHOIS information
as “Kolombo Networks,” which does not
indicate that Respondent is commonly known by either of the <bosubootcamp.com> or <bosubody.com>
domain names. Respondent has not offered any evidence to
indicate otherwise. The Panel finds that
Respondent is not commonly known by any of the disputed domain names under
Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration of the <bosubootcamp.com> and <bosubody.com>
domain names is sufficient evidence of a pattern pursuant to bad faith
registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum
Respondent’s confusingly similar <bosubody.com> domain name resolves to a website that features a blog about steroids and contains Complainant’s copyrighted fitness videos. The Panel presumes that Respondent profits from this use. The Panel finds that Respondent’s attempt to pass itself off as Complainant creates a likelihood of confusion as to Complainant’s affiliation with the <bosubody.com> domain name. Therefore, the Panel finds that Respondent’s attempt to profit from this creation of a likelihood of confusion constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site)
Moreover, the Panel further finds that Respondent’s failure
to make an active use of the <bosubootcamp.com> domain name constitutes bad
faith registration and use under Policy ¶ 4(a)(iii). See Armstrong Holdings, Inc. v.
Respondent’s current WHOIS information for both of the
disputed domain names is listed as “Kolombo
Networks.” Complainant has provided
sufficient evidence to show that prior to Respondent’s notice of the current
proceeding, Respondent’s WHOIS information for both of the disputed
domain names was listed as “Jay Corbett.” The Panel finds that this switch in WHOIS
information constitutes “cyberflying” and is further evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Medco Health Solutions, Inc. v. Whois Privacy
Protection Serv., Inc.,
D2004-0453 (WIPO Aug. 25, 2004) (respondent’s efforts to disguise its true
identity is an example of bad faith conduct); see also Marian
Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002) (finding bad faith
registration and use where “Respondent has tried to conceal the name of the
true owner of the disputed domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bosubootcamp.com> and <bosubody.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: July 22, 2009
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