Fitness Anywhere, Inc. v.
Mode Athletics
Claim Number: FA1004001320667
PARTIES
Complainant is Fitness Anywhere, Inc. (“Complainant”), represented by Omid
A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com>,
registered with GoDaddy.com, Inc.
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.
Prof. Darryl C. Wilson, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 22, 2010.
On April 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>,
<buytrxsuspensiontrainer.com>, <trxworkout.com> <trxworkouts.com>,
and <modetrx.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is
the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent
is bound by the GoDaddy.com, Inc.
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 27, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 17, 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@trxsuspensiontraining.com, postmaster@trxsuspensiontrainer.com,
postmaster@buytrxsuspensiontrainer.com, postmaster@trxworkout.com, postmaster@trxworkouts.com,
and postmaster@modetrx.com. Also
on April 27, 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 timely Response was received and determined to be complete on April 29, 2010.
On May 7, 2010 pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Prof. Darryl C. Wilson, Esq. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that Respondent’s domain names wholly incorporate
marks that Complainant has registered or has established common law rights
thereto thus making the domain names identical or confusingly similar to
Complainant’s marks. Complainant further contends that Respondent lacks rights
or legitimate interests in the disputed domains and that Respondent has engaged
in the bad faith registration and use of the domain names at issue.
B. Respondent
Respondent contends that although the Complainant has provided proof “that
they have trademarks involved with the disputed domain names” the issue of the
Respondent’s rights and legitimate interests is “murky at best”. Respondent
further alleges that the Complainant provided no proof that that Respondent
registered the disputed domains in bad faith or is using them in bad faith.
Respondent states that Complainant’s allegations regarding the prospective sale
of the disputed domain names and other assertions of Respondents misdeeds are
baseless and that the registration of the disputed domains was without any
intent to prevent the Complainant from registering the domains or otherwise
disrupt the Complainant’s business.
FINDINGS
Complainant, Fitness Anywhere, Inc., is a
consumer products company that sells goods in the physical wellness market.
Complainant is the owner of trade and service marks registered in the
Respondent, Mode Athletics is a sole
proprietorship run by an individual who is also in the business of selling
exercise equipment. Respondent’s owner is a prior Affiliate with Complainant.
During or near the time that Respondent was an Affiliate, he registered the
domain names <trxsuspensiontraining.com>,
<trxsuspensiontrainer.com>, <buytrxsuspensiontrainer.com>,
<trxworkouts.com>, <trxworkout.com>, and <modetrx.com> in order to market and sell Complainant’s
exercise equipment. Respondent did not receive seek or receive any express authorization
to secure the above domain names, and Respondent continued to use the domain
names after Respondent discontinued his affiliation with the Complainant albeit
for the principal purpose of selling the exercise equipment of Complainant’s
competitors since Respondent was no longer authorized to sell Complainant’s
goods as an Affiliate. Respondent states that he no longer has plans for <modetrx.com> or <buytrxsuspensiontrainer.com>
and does not have any desire to retain ownership of those domains.
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.
Complainant has rights in the TRX and SUSPENSION
TRAINING marks by virtue of trademark registrations with national
authorities. Complainant has trademark
registrations for the TRX mark with both the United States Patent and Trademark
Office (“USPTO”) (e.g., Reg. No.
3,202,696 issued Jan. 23, 2007) and the Canadian Intellectual Property Office
(“CIPO”) (e.g., Reg. No. 726,445
issued Oct. 21, 2008). Complainant also
has trademark registrations for the SUSPENSION TRAINING mark with the USPTO (e.g., Reg. No. 3,255,161 issued June 26,
2007) and the CIPO (e.g., Reg. No.
726,444 issued Oct. 21, 2008). These
trademark registrations with the USPTO and the CIPO sufficiently prove
Complainant’s rights in the TRX and SUSPENSION TRAINING marks according to
Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb.
Forum Apr. 26, 2006) (finding that the complainant had established rights in
the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)).
Complainant contends that it has common law rights in
the SUSPENSION TRAINER mark. A trademark
registration is not necessary for the purposes of Policy ¶ 4(a)(i) when there
is evidence of continuous use and the establishment of secondary meaning that
show common law rights in the mark. See Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark); see also
Respondent’s <trxsuspensiontraining.com>
disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION
TRAINING marks because it combines Complainant’s marks and merely adds the
generic top-level domain “.com.” The
combination of Complainant’s marks and the addition of a gTLD do not overcome a
findng of confusing similarity under Policy ¶ 4(a)(i). See
Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see
also Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s <trxsuspensiontrainer.com>
disputed domain name is also confusingly similar to Complainant’s TRX and
SUSPENSION TRAINER marks for the same reasons noted above.
Respondent’s <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>,
and <modetrx.com> domain names
are confusingly similar to Complainant’s TRX mark. Each of the disputed domain names combines
Complainant’s TRX registered mark or SUSPENSION TRAINER common law mark with a
descriptive term or terms and adds the gTLD “.com.” The Panel finds that the addition of a
descriptive term or terms and the addition of a gTLD create confusing
similarity between the disputed domain names and Complainant’s TRX and
SUSPENSION TRAINER marks. See Arthur
Guinness Son & Co. (
The Complainant
has proven this element.
Respondent is not commonly known by any of the disputed domain names. Complainant correctly notes that the WHOIS information for the disputed domain names lists the registrant for each name as “Mode Athletics.” Complainant also alleges that Respondent is not authorized to use Complainant’s mark as he was a member of Complainant’s affiliate program from May 19, 2008 until October 16, 2009 and agreed not to use any of Complainant’s mark in any registered domain names. Respondent argues that he is commonly known by the disputed domain names because he has numerous YouTube videos about the TRX suspension trainer, mentions Complainant’s TRX product in each video and refers Internet viewers to the <trxsuspensiontrainer.com> disputed domain name in each video. Respondent contends that at least 125,000 people have seen his TRX YouTube videos and therefore associate Respondent with the <trxsuspensiontrainer.com> disputed domain name, illustrating that he is commonly known by the domain name. The failure of the WHOIS information and other information in the record to indicate that Respondent is commonly known by the disputed domain names and the lack of authorization by Complainant to use Complainant’s marks supports a finding that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests in the disputed domain names. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent fails to provide evidence substantiating the alleged number of viewers or regarding how and why viewers got to the sites to which the domain names resolve and the videos are parked. It is highly likely that if Respondent was advertising Complainant’s products, viewers would associate the videos and domains with the Complainant instead of thinking that the Complainant is also known as “Mode Athletics”. Respondent fails to discern the difference between mere exposure and the establishment of defendable rights.
Complainant argues that Respondent uses the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names to redirect Complainant’s intending customers to Respondent’s own website which offers competing goods. Complainant asserts that this use of the disputed domain names creates confusion among Internet users as to the affiliation of Respondent’s resolving website and allows Respondent to commercially profit from its use of Complainant’s marks. Respondent acknowledges that as a result of difficulties between the parties in regards to Complainant’s affiliate program that Respondent has moved on to marketing a competing product. Respondent asserts that it is using adequate disclaimers with the sites to prevent confusion as Respondent works further on developing its own Internet marketing plan. However, Respondent fails to address the initial interest confusion inherent in the circumstances under which Respondent is operating. The Panel finds that using Complainant’s mark in the <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed domain names which offer competing goods for Respondent’s commercial gain 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 G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Respondent’s effort at characterizing the current use as acceptable is unpersuasive in light of the circumstances under which the domain names were procured.
The presence of a disclaimer does not mitigate
confusion and does not grant Respondent rights and legitimate interests in the <trxsuspensiontrainer.com>
and <trxsuspensiontraining.com>
disputed domain names. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a
disclaimer does not, and could not, accompany the domain name, then the “domain
name attracts the consumer’s initial interest and the consumer is misdirected
long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of
a disclaimer, when the domain name consists of the complainant’s well-known
trademark, does not counter the expectation of Internet users that the domain
name is sponsored by the complainant). Respondent’s registration of the disputed
domain names in breach of the terms of the affiliate agreement further supports
a finding that Respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii). See Cricket Commc’ns, Inc. v. Oliver, FA
954005 (Nat. Arb. Forum May 29, 2007) (concluding that the
respondent had no rights or legitimate interests in disputed domain names
containing the complainant’s marks even though it was a part of the
complainant’s affiliate program, as the affiliate agreement expressly stated
that affiliates could not register domain names containing the CRICKET mark); see also Sports
Complainant also
asserts that Respondent is not making an active use of the <buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>, and <modetrx.com> disputed domain names
as they do not resolve to any website. Respondent
indicates that he no longer claims two of those disputed domains but that he is
planning to use the others in the future. The Panel finds Respondent’s failure
to make active use of the <buytrxsuspensiontrainer.com>,
<trxworkout.com>, <trxworkouts.com>, and <modetrx.com> disputed domain names is
contrary to supporting a claim of a bona
fide offering of goods or services or a legitimate noncommercial or fair
use according to Policy ¶¶ 4(c)(i) or 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).
The Complainant has proven this element.
Complainant alleges that Respondent’s registration
of the disputed domain names is indicative of a pattern by Respondent to
prevent Complainant from effectively reflecting its marks in commerce and in
Complainant’s own domain names.
Complainant asserts that Respondent’s pattern of registering disputed
domain names incorporating Complainant’s marks creates confusion with
Complainant’s existing trademarks. The
Panel finds that Respondent’s activities illustrate a pattern of preventing
Complainant from adequately reflecting its marks and reveal bad faith
registration and use pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb.
Forum Sept. 8, 2000) (finding that one instance of registration of several
infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana,
FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is
in violation of Policy ¶ 4(b)(ii) because Respondent
registered the disputed domain names to prevent Complainant from reflecting its
YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>,
<ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>,
<ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>,
<ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>]
domain names herein constitutes a pattern of registering trademark-related
domain names in bad faith.”).
Complainant contends that Respondent’s <trxsuspensiontrainer.com> and <trxsuspensiontraining.com> disputed
domain names disrupt Complainant’s business because the disputed domain names direct
Internet users seeking Complainant and Complainant’s products away from
Complainant to Respondent’s website(s) where competing goods are offered, which
in turn creates confusion regarding the relationship between Complainant and
Respondent. Respondent does not dispute that his domains and websites are
competing with Complainant but asserts that his initial registration of the
domains was in good faith as a member of Complainant’s affiliate program and therefore
registered with the purpose of promoting Complainant’s goods. Respondent seems
to believe that the initial circumstances surrounding the registration of the
disputed domains somehow carry over as continuing rights in the present despite
the dissolution of the original relationship between the parties. The Panel
finds that Respondent’s use of the <trxsuspensiontrainer.com>
and <trxsuspensiontraining.com>
domain names disrupts Complainant’s business and demonstrates bad faith
registration and use according to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA
795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent
registered and used the <sportlivescore.com> domain name in order to
disrupt the complainant’s business under the LIVESCORE mark because the
respondent was maintaining a website in direct competition with the
complainant); see also Instron Corp. v. Kaner, FA 768859
(Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and
used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by
using the disputed domain names to operate websites that compete with the
complainant’s business).
Respondent had both
actual and constructive knowledge of Complainant’s marks prior to Respondent’s
registration of the disputed domain names. Complainant’s marks were registered
and Respondent’s attention was drawn to these registered marks when Respondent
was required to sign the agreement restricting Respondent’s use of
Complainant’s marks to participate in the Affiliate program. See
Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding
bad faith where the method by which the respondent acquired the disputed domain
names indicated that the respondent was well aware that the domain names
incorporated marks in which the complainant had rights); see also Yahoo! Inc. v.
Respondent’s failure to use some of the disputed domains with an active website, as well as Respondent’s relatively minor examples of disclaimer usage on the sites that are active, also fails to dispel the conclusion that Respondent’s use and registration was in bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the
ICANN Policy, the Panel concludes that the Complainant’s requested relief shall
be GRANTED
Accordingly, it is Ordered that the <trxsuspensiontraining.com>, <trxsuspensiontrainer.com>,
<buytrxsuspensiontrainer.com>, <trxworkout.com>, <trxworkouts.com>,
and <modetrx.com>
domain names be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: May 20, 2010
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