24 Hour Fitness USA, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1501001599649
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <results24hrfitness.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2015; the National Arbitration Forum received payment on January 16, 2015.
On January 17, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <results24hrfitness.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2015 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@results24hrfitness.com. Also on January 20, 2015, 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 February 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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 name be transferred from Respondent to Complainant.
Complainant
Complainant owns the 24 HOUR FITNESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,130,895, registered Jan., 20,1998). Complainant uses the 24 HOUR FITNESS mark in connection with health and fitness related products and services. The <results24hrfitness.com> domain name is confusingly similar to the 24 HOUR FITNESS mark. The domain name contains the Complainant’s mark, abbreviates the word “HOUR” to “hr,” inserts the generic term “results,” and adds a generic top-level domain “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for <results24hrfitness.com> does not reflect that Respondent is commonly known by the domain name. Complainant has never authorized Respondent to use the 24 HOUR FITNESS mark. Respondent’s lack of rights or legitimate interests in the <results24hrfitness.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a parked website that displays links that are unrelated to Complainant’s business. Many of the third-party links featured in Respondent’s website directly connect to Complainant’s competitors.
Respondent has engaged in bad faith registration and use of the <results24hrfitness.com> domain name. The disputed domain name is listed for sale at a price of $1,636, which indicates that Respondent has registered the domain name primarily for the purpose of selling the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, as the website features competing hyperlinks. Additionally, Respondent has used the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s 24 HOUR FITNESS mark. Respondent’s actions qualify as bad faith registration under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant owns the 24 HOUR FITNESS mark, along with various other related marks, through registration with the USPTO (e.g., Reg. No. 2,130,895, registered Jan. 20, 1998). Complainant uses the 24 HOUR FITNESS mark in connection with health and fitness related products and services. The Panel finds that Complainant’s valid registration of the 24 HOUR FITNESS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant claims the <results24hrfitness.com> domain name is confusingly similar to the 24 HOUR FITNESS mark. The domain name modifies Complainant’s mark by abbreviating the word “HOUR” to read “hr,” adds the generic term “results,” and adds a generic top-level domain “.com” to the domain name. Past panels have found confusing similarity between complainant’s registered mark and respondent’s abbreviated version of the mark. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)). Additionally, inserting a generic term does not adequately differentiate the disputed domain name from the registered mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Finally, panels have found that the addition of a gTLD is irrelevant when determining confusing similarity. See 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). The Panel therefore finds that the <results24hrfitness.com> domain name is confusingly similar to the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims that Respondent is not commonly known by the disputed domain name, as the WHOIS record for <results24hrfitness.com> does not reflect otherwise. The WHOIS record simply lists “Domain Admin” as the registrant of record. Complainant has never authorized Respondent to use the 24 HOUR FITNESS mark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends Respondent’s lack of rights or legitimate interests in the <results24hrfitness.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a parked website that displays third-party links, including many links that connect to Complainant’s competitors. The disputed domain name resolves to feature fitness-related links such as “In-Shape Health Clubs,” “Health Classes,” and “Become a Fitness Trainer.” Such actions sufficiently establish that Respondent’s website is not operated in connection with a bona fide offering of goods or services. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Lacking a bona fide offering of goods or services, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). Further, the Panel agrees that as Respondent’s offerings are presumably for financial gain, there can logically be no “noncommercial or fair use” under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues Respondent has engaged in bad faith registration and use of the <results24hrfitness.com> domain name. The disputed domain name is listed for sale at a price of $1,636, which suggests that Respondent has registered the domain name primarily for the purpose of selling the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Past panels have found such actions qualify as bad faith registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Complainant asserts Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, as the website features competing hyperlinks. Complainant claims that these actions disrupt Complainant’s business and thus constitute bad faith registration. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds bad faith registration under Policy ¶ 4(b)(iii).
Complainant contends Respondent has used the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s 24 HOUR FITNESS mark. The disputed domain name resolves to a website that features hyperlinks that connect to competing health and fitness services. Complainant argues that Respondent uses the <results24hrfitness.com> domain name for commercial gain and capitalizes on the substantial goodwill associated with Complainant’s registered mark. Thus, Complainant asserts that Respondent has engaged in bad faith registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel agrees that Respondent’s use demonstrates that Respondent seeks commercial gain through a likelihood of confusion with Complainant’s mark and offerings of similar services, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <results24hrfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 16, 2015
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