24 Hour Fitness USA, Inc. v.
Claim Number: FA1003001315664
PARTIES
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24houfitness.com>, registered with Fabulous.com
Pty Ltd.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 25, 2010.
On March 28, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <24houfitness.com> domain name is
registered with Fabulous.com Pty Ltd. and
that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On April 2, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of April 22, 2010 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@24houfitness.com by
e-mail. Also on April 2, 2010, 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.
A Response was received on April 23,
2010, and deemed deficient under Supplemental Rule 5(a) as it was not properly
served on the other party.
On April 26, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Confusing Similarity (ICANN Rule 3(b)(ix)(1);
ICANN Policy ¶ 4 (a)(i))
Complainant informs that it was founded in 1983 and that it has grown
to become one of the largest privately-owned
Complainant states that it owns the 24 HOUR FITNESS Mark, for which it
has obtained federal trademark registrations.
Complainant also states that it has spent millions of dollars in
advertisement and promotion of the 24 HOUR FITNESS Mark on the Internet through
its website located at <24hourfitness.com>. Complainant argues that, based
on its federal trademark registrations and extensive use, it owns the exclusive
right to use the 24 HOUR FITNESS Mark for health club services and services
related to the health industry.
Complainant argues that the Disputed Domain Name is confusingly similar
to Complainant's Mark because it differs by only a single character from
Complainant's Mark, or because it differs by only the juxtaposition of two
characters when compared to Complainant's Mark.
Complainant asserts that the Disputed Domain Name is a classic example
of "typosquatting" and that the practice of typosquatting is designed
to take advantage of Internet users' typographical errors, which means the name
must be confusingly similar by design.
Right to
or Legitimate Interests (ICANN Rule 3 (b)(ix)(2);
ICANN Policy ¶ 4 (a)(ii))
Complainant asserts that Respondent has not been commonly known by the
Disputed Domain Name. Complainant states that Respondent is not sponsored by or
legitimately affiliated with Complainant in any way and that Complainant has
not given Respondent permission to use Complainant's Mark in a domain name.
Complainant contends that Respondent is using the Disputed Domain Name
to redirect unsuspecting Internet users to a website featuring generic links to
third-party websites, some of which directly compete with Complainant's
business. Complainant argues that it is presumable that Respondent receives
pay-per-click fees from these linked websites. As such, Respondent is not using
the domain name to provide a bona fide
offering of goods or services as allowed under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
Registered and Used in Bad Faith (ICANN Rule 3 (b)(ix)(3); ICANN Policy ¶ 4 (a)(iii))
Complainant asserts that the earliest date on which Respondent
registered the Disputed Domain Name was February 4, 2008, which is
significantly after Complainant's registration of 24HOURFITNESS.COM on March
15, 1999 and after Complainant's first use in commerce as specified in their
relevant registration with the USPTO.
Complainant contends that Respondent has ignored Complainant's attempts
to resolve the dispute outside of this administrative proceeding. Complainant
did not, however, submit any evidence of such attempts.
Complainant argues that Respondent's typosquatting behavior is, in and
of itself, evidence of bad faith.
Complainant states that Respondent is a recalcitrant, serial
cybersquatter / typosquatter. Searches through the NAF and WIPO UDRP decision
databases reveal that Respondent has engaged in an ongoing pattern of such
behavior. Complainant contends that Respondent holds registrations on other
domain names that appear to be straightforward examples of typosquatting.
Complainant further contends that Respondent's use of apparently
falsified and/or incomplete WHOIS contact information demonstrates a desire to
avoid being held accountable, which serves as further evidence of bad faith
intent.
Complainant asserts that Respondent has caused the website reachable by
(some or all of) the Disputed Domain Name to display content and/or keywords
directly related to Complainant's business and that this serves as further
evidence of bad faith intent because it removes any doubt as to whether or not
the misspelling was intentionally designed to improperly capitalize on
Complainant's famous Mark and its related business.
B. Respondent
Respondent has submitted a deficient response.
In his brief response, Respondent affirms that “24 Hou Fitness” should
not be confused with <24hourfitness.com>. Respondent argues that “Hou”
is a commonly used abbreviation for “
Respondent briefly informs that “HouFit” and “HouFitness” have been
featured on <KillerStartups.com>, <I-newswire.com>, <Bodybuilding.com>,
<Prlog.org>, and many other reputable sites and news organizations.
Respondent has not submitted any evidence of such allegation.
Respondent concludes that even though the spelling of the disputed
domain name is close to the spelling of Complainant's domain name, “24 Hou
Fitness” would be short for “24 Houston Fitness,” a site that, according to
Respondent, “is open 24 hours a day 7
days a week.”
FINDINGS
The Panel finds that Complainant is the
record owner of the following registrations in the
24 HOUR FITNESS for health club services,
clothing, namely, sweat suits, baggy pants,
shorts, sweatshirts, T-shirts, tank tops,
leotards, sport bras, boxer shorts, leggings, socks, hats, gym bags and
backpacks (U.S. Reg. No. 2,130,895);
24HOURFITNESS.COM for providing health and
fitness related information over a global information network (U.S. Reg. No.
2,395,153);
24 HOUR FITNESS SPORT for health club
services (U.S. Reg. No. 2,499,844);
24 HOUR FITNESS ACTIVE for health club
services (U.S. Reg. No. 2,684,457) and;
24 HOUR FITNESS EXPRESS for providing health
club services, namely, providing
fitness and exercise facilities (U.S. Reg. No. 2,926,364).
Complainant’s principal website is located at
<24hourfitness.com>.
The Panel finds that the Respondent
registered the Disputed Domain Name on February 4, 2008, which is significantly
after Complainant's registration of 24HOURFITNESS.COM on March 15, 1999.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary Issue: Deficient
Response
Respondent’s Response was not served on the other party. Thus the National Arbitration Forum does not
consider the Response to be in compliance with ICANN Rule 5. The Panel chooses to accept and consider this
Response, as it does not harm Complainant.
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar.
4, 2003) (holding that the respondent’s failure to submit a hard copy of the
response and its failure to include any evidence to support a finding in its
favor placed the respondent in a de facto default posture, permitting
the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628
(Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a
timely response electronically, but failed to submit a hard copy of the
response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
The Panel finds that the disputed domain name
is confusingly similar to Complainant’s 24 HOUR FITNESS trademark.
The disputed domain name <24houfitness.com>
differs from Complainant’s registered 24 HOUR FITNESS mark only in the removal of
the letter “r”, which is not enough to characterize it as distinct from
Complainant’s trademark. See Columbia
Pictures Indus., Inc. v. Caribbean Online Int’l Ltd., D2008-0090 (WIPO Mar.
10, 2008) (“adding or removing letters to a domain name is not sufficient to
escape the finding of similarity and does not change the overall impression of
the designation as being connected to the trademark of Complainant.”).
The Panel finds that removing letters from a
domain name, such as the removal of “r” in this case, is not sufficient to
escape the finding of similarity and does not change the overall impression of
the designation as being connected to the trademark of the Complainant.
Furthermore, the Panel concludes that
Respondent’s registration of the disputed domain name <24houfitness.com>
constitutes typosquatting, which not only renders the disputed domain name
confusingly similar to Complainant’s 24 HOUR FITNESS mark, but is also evidence
of bad faith, which will be further addressed. It is clear that the disputed
domain names <24hourfitness.com> is a common
mistyping of Complainant’s 24 HOUR FITNESS mark and <24hourfitness.com>
domain name.
Respondent alleges that “Hou” would be a
common abbreviation for “
The Panel finds that the Complainant has
established the first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, Respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC,
D2005-0263 (WIPO Apr. 28, 2005); see also
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent,
before any notice of the dispute, used or prepared to use the domain name or a
name corresponding to the domain name in connection with a bona fide
offering of goods or services.
Respondent alleges that “24 Hou Fitness” is
affiliated with <HouFit.com>, the leading Houston Fitness networking
website. However, Respondent did not submit any evidence of such allegations.
At the moment this dispute was filed and the moment this decision was rendered, the website under the disputed domain name resolved to a page that displayed pay-per-click links to Complainant’s competitors. This is not a bona fide use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the Respondent’s use of complainant’s mark to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates
that Respondent has ever been commonly known by the disputed domain name.
Respondent’s allegations that “HouFit” and “HouFitness”
have been featured on <KillerStartups.com>, <I-newswire.com>, <Bodybuilding.com>,
<Prlog.org>, and many other reputable sites and news organizations are
not proved. Simple screenshots of the websites could evidence Respondent’s
allegations, but this was not submitted. Moreover, the Panel, at its sole
discretion, has accessed the mentioned websites and did not find any mention to
Respondent or to the disputed domain name.
With respect to paragraph 4(c)(iii) of
the Policy, Respondent has not made and is not making a legitimate
noncommercial or fair use of the disputed domain name and has not used the
disputed domain name, or a name corresponding to it, in connection with a bona
fide offering of goods or services.
The Panel finds that Respondent did not
demonstrate rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has
established the second element of the Policy.
Under paragraph 4(b), a respondent has used
and registered a domain name in bad faith if, inter alia, the respondent
has used the domain name intentionally to attempt to attract, for commercial
gain, Internet users to the respondent’s website or other online location by
creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation or endorsement of the respondent’s site or of
a product or service offered on the respondent’s site. See Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered
the domain name in bad faith.
The trademark registrations of record confirm
Complainant’s allegations that it had long been using its 24 HOUR FITNESS mark
when the disputed domain name was registered. Moreover, Complainant submitted
consistent evidence that the trademark 24 HOUR FITNESS constitutes a well-known trademark. The Panel finds that the Respondent must have been aware of the Complainant’s
rights in the mark.
Respondent registered the disputed domain
names, which reflects typing mistakes of Complainant’s known trademark. It has
been held by several NAF Panels that typosquatting itself is evidence of bad
faith.
At the time the Complaint was filed and at
the time of this Decision, the disputed domain name resolved to a page that
offered visitors pay-per-click links to sites of other
companies, including Complainant’s competitors. See Staples, Inc., Staples The Office Superstore, Inc., Staples
Contract and & Commercial, Inc. v. John Morgan, D2004-0537 (WIPO Sept. 20, 2004) (“the Panel is
persuaded that Respondent’s registration and use of the disputed domain name
for re-directing Internet users, particularly customers and potential customers
of Complainants, from Complainants’ website to the website of OfficeMax, a
company which directly competes with Complainants, constitutes bad faith and
use. Prior WIPO UDRP decisions also support this conclusion.”); see also Edmunds.com, Inc. v. Ult. Search, Inc., D2001-1319 (WIPO
Feb. 1, 2002) (“registration and use of a domain name to redirect Internet
users to websites of competing organizations constitutes bad faith registration
and use under the Policy.”).
Accordingly, the Panel finds that the
Complainant has made out bad faith registration and use of the domain name by
the Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24houfitness.com> domain name be TRANSFERRED
from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: May 10, 2010
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