ICON IP, Inc. v. sdfgdgf dgffg
Claim Number: FA1112001420679
Complainant is ICON IP, Inc. (“Complainant”), represented by R. Parrish Freeman, Jr. of Workman Nydegger, Utah, USA. Respondent is sdfgdgf dgffg (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rip60.us>, registered with GoDaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2011; the Forum received a hard copy of the Complaint on December 29, 2011.
On December 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rip60.us> domain name is registered with GoDaddy.com, Inc. and that 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 29, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 18, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <rip60.us> domain name is confusingly similar to Complainant’s RIP:60 mark.
2. Respondent does not have any rights or legitimate interests in the <rip60.us> domain name.
3. Respondent registered and used the <rip60.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ICON IP, Inc., uses its RIP:60 mark in association with manually operated exercise equipment and pre-recorded DVDs featuring fitness instruction. Complainant owns two applications for trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RIP:60 mark:
App. No. 85,194,310 filed December 9, 2010 &
App. No. 85,194,333 filed December 9, 2010.
Respondent, sdfgdgf dgffg, registered the <rip60.us> domain name on June 7, 2011. Respondent’s disputed domain name resolves to a website that sells counterfeit versions of Complainant’s DVDs and fitness products and the DVDs of Complainant’s competitors.
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(f), 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant does not own a trademark registration with a national trademark agency for its RIP:60 mark. However, the Panel determines that a trademark registration is not required for Complainant to demonstrate rights in its RIP:60 mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the UDRP does not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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 UDRP ¶ 4(a)(i)).
Complainant claims that it began using the RIP:60 mark in November of 2010. Complainant uses its RIP:60 mark in connection with manually operated exercise equipment and pre-recorded DVDs of fitness instruction. Complainant provides evidence of its applications for trademark registrations with the USPTO for its RIP:60 mark:
App. No. 85,194,310 filed December 9, 2010 &
App. No. 85,194,333 filed December 9, 2010.
Complainant provides a copy of its official website, found at the <rip60.com> domain name, and also provides screen shots of Complainant’s other websites, such as <proform.com> and <nordictrack.com>, that sell Complainant’s products. Complainant asserts that it uses television and Internet infomercials to market its products under the RIP:60 mark and that MMA champion George St. Pierre and celebrity fitness trainer Jillian Michaels are featured in the commercials. Complainant also notes that a previous UDRP panel found that Complainant owned common law rights in the RIP:60 mark. See ICON IP, Inc. v. rip 60 on tv, FA 1413120 (Nat. Arb. Forum Dec. 2, 2011). Based on the evidence Complainant presented, the Panel concludes that Complainant’s RIP:60 has acquired secondary meaning through continuous and extensive use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”). Thus, the Panel holds that Complainant owns common law rights in its RIP:60 mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <rip60.us> domain name differs from Complainant’s RIP:60 mark by the removal of the colon and the addition of the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that both alterations to Complainant’s mark fail to remove the disputed domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). 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 Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007)(holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <rip60.us> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests once Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <rip60.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent did not respond to this case and did not provide any evidence that it is commonly known by the <rip60.us> domain name. Complainant argues that Respondent is not authorized or licensed to use Complainant’s RIP:60 mark. The WHOIS information lists “sdfgdgf dgffg” as the registrant of the disputed domain name, which the Panel determines is not similar to the disputed domain name. Consequently, the Panel holds that Respondent is not commonly known by the <rip60.us> domain name for the purposes of Policy ¶ 4(c)(iii). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <rip60.us> domain name to resolve to a website that sells counterfeit versions of Complainant’s DVD and fitness products and the products of Complainant’s competitors, such as “P90X” and “Insanity.” Based on this competing use, the Panel determines that Respondent makes neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the <rip60.us> domain name. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i).”); 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).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Respondent’s <rip60.us> domain name resolves to a website selling counterfeit versions of Complainant’s RIP:60 fitness products and DVDs. At the resolving website, Respondent also sells the DVDs of Complainant’s competitors. By using the confusingly similar disputed domain name, Respondent diverts Internets users searching for Complainant to a competing website that sells counterfeit and competing products. The Panel determines that such a use disrupts Complainant’s business. Thus, the Panel holds that Respondent both registered and uses the <rip60.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel presumes that Respondent registered the <rip60.us> domain name because of its confusing similarity to Complainant’s RIP:60 mark. By registering a confusingly similar domain name, Respondent takes advantage of increased Internet traffic to its resolving website because Internet users will access the resolving website thinking that Complainant is affiliated with the resolving website based on the disputed domain name. Respondent likely commercially benefits from the sale of the counterfeit and competing products on its resolving website. Therefore, the Panel determines that Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name. For this reason, the Panel finds Respondent both registered and uses the <rip60.us> domain name in bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to [UDRP] ¶ 4(b)(iv)”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the RIP:60 mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use under the UDRP, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds Respondent had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rip60.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 8, 2012
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