ICON IP, Inc. v. rip 60 on tv c/o Foster Mark a/k/a rip workout llc c/o Guzman Everardo
Claim Number: FA1110001413120
Complainant is ICON IP, Inc. (“Complainant”), represented by R. Parrish Freeman of Workman Nydegger, Utah, USA. Respondent is rip 60 on tv c/o Foster Mark a/k/a rip workout llc c/o Guzman Everardo (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rip60sale.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd. d/b/a 55hl.com, and <rip60workout.org>, registered with Bizcn.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the National Arbitration Forum received payment on October 26, 2011. The Complaint was submitted in both English and Chinese.
On October 27, 2011, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rip60workout.org> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 October 27, 2011, Jiangsu Bangning Science & Technology Co. Ltd. d/b/a 55hl.com confirmed by e-mail to the National Arbitration Forum that the <rip60sale.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. d/b/a 55hl.com and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd. d/b/a 55hl.com has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd. d/b/a 55hl.com 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 November 2, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 22, 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@rip60sale.com, postmaster@rip60workout.org. Also on November 2, 2011, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rip60sale.com> and <rip60workout.org> domain names are confusingly similar to Complainant’s RIP:60 mark.
2. Respondent does not have any rights or legitimate interests in the <rip60sale.com> and <rip60workout.org> domain names.
3. Respondent registered and used the <rip60sale.com> and <rip60workout.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ICON IP, Inc., is an international provider of exercise and fitness equipment and fitness training programs. Complainant has used the RIP:60 mark in conjunction with a service designed to improve an individuals overall fitness level in a short period of time since 2010. Complainant has extensively advertised and promoted this system through web-based and television campaigns, spending over $1 million during that time. Individuals seeking out fitness services have come to associate the mark with Complainant’s products and services.
Respondent, rip 60 on tv c/o Foster Mark a/k/a rip workout llc c/o Guzman Everardo, registered the disputed domain names on March 2, 2011. The disputed domain names resolve to websites which offer counterfeit goods for sale, which appear to be Complainant’s legitimate goods, but are not.
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.
Preliminary Issue: Multiple Respondent’s
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has submitted sufficient evidence to establish that the entities in control of the disputed domain names are actually the same legal entity.
Under Policy ¶ 4(a)(i), Complainant must prove that it has rights in the RIP:60 mark in some fashion. Although the most common and simplest way to establish rights in a mark is to register it with a governmental trademark authority, previous panels have determined that a trademark registration is not necessary to establish rights in a mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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). The Panel finds that Complainant does not own a trademark registration with a governmental agency. Therefore, the Panel finds that Complainant’s failure to register that mark does not inhibit a finding that it has rights in the RIP:60 mark under Policy ¶ 4(a)(i); if it is able to establish its rights in the mark under the common law.
Complainant contends that it has created a secondary meaning in the RIP:60 mark as it relates to its business, thereby establishing its rights in the mark under the common law. Complainant submits evidence of the extensive advertising and promotional campaigns that have been launched under the RIP:60 mark. Complainant has used the mark in association with its fitness service and products. Complainant states that customers have come to associate the RIP:60 mark with this service and its related products in such a way as to create a secondary meaning in the mark, as associated with Complainant. Complainant also submits evidence that it has two pending trademark applications with the United States Patent and Trademark Office ("USPTO") for the RIP:60 mark (Ser. No. 85194310 filed December 9, 2010) and (Ser. No. 85194333 filed December 9, 2010). The Panel notes that Complainant identifies a first use in commerce date of November 10, 2010 within its trademark applications. The Panel finds that Complainant has established its rights in the RIP:60 mark under Policy ¶ 4(a)(i) through the creation of a secondary meaning for the mark as associated with its business. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant also contends that Respondent’s <rip60sale.com> and <rip60workout.org> domain names are confusingly similar to its RIP:60 mark.
The disputed domain names both include the majority of the mark, only omitting the colon between the terms. The disputed domain names include separately the generic term “sale,” the descriptive term “workout,” and the generic top-level domains, “.org” or “.com.” The Panel finds that both disputed domain names are confusingly similar to Complainant’s RIP:60 mark under Policy ¶ 4(a)(i) because both retain the distinctiveness of the Complainant’s mark without sufficient differentiation. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has made a prima facie case against Respondent indicating that it lacks rights or legitimate interests in the disputed domain name. The burden of proof under Policy ¶ 4(a)(ii) has now shifted to Respondent as a result of this finding. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has not filed Response in this matter which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain unless the evidence on record clearly undercuts such a finding. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will examine the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain names in accordance with the factors identified in Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent has submitted no evidence to refute Complainant’s arguments. Although the WHOIS information for the disputed domain names includes information which may suggest that Respondent is associated with the domain names, there is no evidence on record indicating that this relationship existed prior to registering the names. Therefore, 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 argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain names resolve to websites offering products for sale. The products offered appear to be manufactured and distributed by Complainant; however, Complainant has not authorized Respondent to sell its goods nor has it provided goods for Respondent to sell. Therefore, the products sold from the website are counterfeit. The Panel finds that this use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011) (“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent is disrupting its business by selling counterfeit versions of Complainant’s goods. Respondent’s disputed domain names resolve to a website that appears to offer Complainant’s goods for sale, but in actuality, the goods offered are counterfeit. Previous panels have determined that this use does in fact disrupt a complainant’s business. See Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name). The Panel finds that Respondent’s disputed domain names disrupt Complainant’s business under Policy ¶ 4(b)(iii), providing affirmative evidence of bad faith registration and use.
Complainant also alleges that Respondent is attempting to capitalize on the confusion of Internet users by offering counterfeit goods from its websites. Respondent’s disputed domain names resolve to a website offering counterfeit versions of Complainant’s products for sale. The sale of ostensibly identical goods has the effect of confusing Internet users as to Complainant’s actual endorsement of the products sold from the websites. Complainant has not authorized Respondent to sell any versions of its goods. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services)
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rip60sale.com> and <rip60workout.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 2, 2011
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