Stamina Products, Inc. v. 21562719 Ont Ltd
Claim Number: FA1112001420326
Complainant is Stamina Products, Inc. (“Complainant”), represented by Laura C. Gustafson of Pillsbury Winthrop Shaw Pittman, LLP, California, USA. Respondent is 21562719 Ont Ltd (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aeropilates.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2011; the National Arbitration Forum received payment on December 16, 2011.
On December 18, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <aeropilates.com> domain name is registered with Fabulous.com Pty Ltd. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@aeropilates.com. Also on December 19, 2011, the 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 January 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aeropilates.com> domain name is identical to Complainant’s AEROPILATES mark.
2. Respondent does not have any rights or legitimate interests in the <aeropilates.com> domain name.
3. Respondent registered and used the <aeropilates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Stamina Products, Inc., uses its AEROPILATES mark in connection with its exercise and fitness equipment. Complainant owns a trademark registration for its AEROPILATES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,865,703 registered July 20, 2004).
Respondent, 21562719 Ont Ltd, registered the <aeropilates.com> domain name January 3, 2006. The disputed domain name resolves to a website hosting hyperlinks to Complainant’s competitors in the exercise and fitness equipment industry.
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.
According to Complainant, it owns rights in the AEROPILATES mark under Policy ¶ 4(a)(i). In support of this assertion, Complainant provides the Panel with a copy of its trademark registration with the USPTO for its AEROPILATES mark (Reg. No. 2,865,703 registered July 20, 2004). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found the complainant demonstrated rights in its mark by providing evidence of its trademark registrations with the USPTO. Therefore, the Panel concludes that Complainant’s trademark registration demonstrates rights in the AEROPILATES mark for the purposes of Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <aeropilates.com> domain name is identical to Complainant’s AEROPILATES mark. After comparing Complainant’s mark and the disputed domain name, the Panel notes that the disputed domain name differs from Complainant’s mark only by the addition of the generic top-level domain (“gTLD”) “.com.” In Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007), and Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001), the panels determined that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because top-level domains are required in any domain name. For this reason, the Panel holds that Respondent’s <aeropilates.com> domain name is identical to Complainant’s AEROPILATES mark under Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aeropilates.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <aeropilates.com> domain name. Complainant contends that it never authorized Respondent to use Complainant’s AEROPILATES mark. The WHOIS information identifies “21562719 Ont Ltd” as the registrant of the disputed domain name. The Panel examined the WHOIS information and determines that it is not similar to the <aeropilates.com> domain name. Respondent did not respond to this case and therefore did not present any evidence that it is commonly known by the disputed domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels concluded that a respondent was not commonly known by a disputed domain name if the WHOIS information and the evidence in the record did not indicate such a fact. The only evidence in the record in this case is Complainant’s assertion that it did not authorize Respondent to use its mark and the WHOIS information. Based on this evidence and UDRP precedent, the Panel finds Respondent is not commonly known by the <aeropilates.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant avers that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s <aeropilates.com> domain name resolves to a website that contains hyperlinks to Complainant’s competitors in the fitness and exercise equipment industry. Complainant further claims that one of the hyperlinks resolves to the <qvc.com> domain name that sells Complainant’s own products. Complainant provided the Panel with a screenshot of the resolving website. After examining the screen shot, the Panel notes that Complainant’s description of Respondent’s use is accurate. In ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), the panel found that the hosting of competing hyperlinks did not establish rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii). Thus, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <aeropilates.com> domain name.
The Panel determines Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and uses the <aeropilates.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business with hyperlinks advertising competitors in the exercise and fitness industry. Complainant claims that Respondent’s registration and use of the disputed domain name diverts potential customers from Complainant to Complainant’s competitors. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels found the respondents registered and used the disputed domain names in bad faith when the disputed domain names resolved to websites hosting competing hyperlinks. Accordingly, the Panel finds Respondent guilty of Policy ¶ 4(b)(iii) bad faith registration and use.
Complainant contends that Respondent also registered and uses the <aeropilates.com> domain name in bad faith because Respondent attempts to create confusion as to Complainant’s sponsorship of the disputed domain name and attempts to profit from that confusion. Complainant argues that Respondent commercially benefits from the <aeropilates.com> domain name by receiving click-through fees from the aforementioned hyperlinks. Complainant claims that Respondent registered the disputed domain name for the purpose of creating confusion as to Complainant’s “sponsorship, affiliation, or endorsement of Respondent’s website and the location of a product or service on Respondent’s [website].” In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), and BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panels concluded that the registration and use of an identical or confusingly similar disputed domain name to host competing hyperlinks, from which the respondent received click-through fees, evidenced a respondent’s bad faith. Consequently, the Panel concludes that Respondent registered and uses the <aeropilates.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel determines Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aeropilates.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page