Elite Investment Portfolio, LLC v Elite Fitness Systems Inc. / Dave Tate
Claim Number: FA1106001391677
Complainant is Elite Investment Portfolio, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Elite Fitness Systems Inc. / Dave Tate (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <elitefitnesssystems.com> and <elitefts.com>, registered with eNom, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2011; the National Arbitration Forum received payment on June 2, 2011.
On June 2, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <elitefitnesssystems.com> and <elitefts.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2011 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@elitefitnesssystems.com and postmaster@elitefts.com. Also on June 9, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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" 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 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 <elitefitnesssystems.com> and <elitefts.com> domain names are confusingly similar to Complainant’s ELITE FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <elitefitnesssystems.com> and <elitefts.com> domain names.
3. Respondent registered and used the <elitefitnesssystems.com> and <elitefts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Elite Investment Portfolio, LLC, furnishes services and goods to individuals in the bodybuilding and exercise fields. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ELITE FITNESS mark (e.g., Reg. No. 2,374,799 filed April 5, 1999; issued August 8, 2000). Complainant uses the mark in conjunction with its web-based body building and fitness services.
Respondent, Elite Fitness Systems Inc. / Dave Tate, registered the <elitefitnesssystems.com> domain name on July 27, 2000 and the <elitefts.com> domain name on November 4, 2000. The disputed domain names resolve to a website offering services which compete with Complainant’s own offerings.
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.
Complainant contends that it has established its rights in the ELITE FITNESS mark by filing and obtaining trademark registrations for the mark with the USPTO (e.g., Reg. No. 2,374,799 filed April 5, 1999; issued August 8, 2000). Previous panels have determined that registering a mark with the USPTO provides the registrant with defendable rights in the mark under the UDRP. 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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel agrees and finds that Complainant has established rights in its ELITE FITNESS mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s disputed domain names are confusingly similar to its own ELITE FITNESS mark. The <elitefitnesssystems.com> domain name includes the entire mark with the generic term “systems” while adding the generic top-level domain (“gTLD”) “.com” and removing the space from the mark. The <elitefts.com> domain name includes the first term of the mark and an abbreviation, “fts,” of the term fitness. The disputed domain name also includes the gTLD “.com.” The Panel finds that the changes made to the two domain names fail to differentiate them from Complainant’s own ELITE FITNESS mark making them confusingly similar under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds Complainant has made its prima facie case showing Respondent’s lack of rights and legitimate interests in the disputed domain names which shifts the burden to Respondent to prove its rights or legitimate interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file a Response in this matter which allows the Panel to assume Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the entire record to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain names according to the factors listed in Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain names. Respondent has offered no evidence to suggest a relationship between it and the disputed domain names. The WHOIS information identifies the registrant as “Elite Fitness Systems Inc. / Dave Tate.” Although this information suggests a connection to the disputed domain names, without more to show that this relationship existed prior to the registration of the disputed domain name the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant also claims that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to a website which offers service and product offerings which directly compete with Complainant’s offerings in the fitness industry. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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 finds that Policy ¶ 4(a)(ii) has been established.
Complainant asserts Respondent’s disputed domain names disrupt its business constituting bad faith registration and use. Respondent’s disputed domain names resolve to a site offering body building and fitness information and services which compete with Complainant’s own offerings under its ELITE FITNESS mark. The Panel finds that using the disputed domain names to offering competing services provides affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent is gaining commercially from the confusingly similar domain names constituting bad faith registration and use. The disputed domain names resolve to a website which offers services that compete with Complainant’s fitness business. Respondent presumably receives revenue from the sale of these services. The Panel finds that resolving the disputed domain names to a site which offers competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elitefitnesssystems.com> and <elitefts.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2011
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