24 Hour Fitness USA, Inc. v. Byung Kim / 24hourfitnessparamus
Claim Number: FA1806001793620
Complainant is 24 Hour Fitness USA, Inc. ("Complainant"), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Byung Kim / 24hourfitnessparamus ("Respondent"), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <24hourfitnessparamus.com>, registered with Tucows Domains 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2018; the Forum received payment on June 25, 2018.
On June 26, 2018, Tucows Domains Inc. confirmed by email to the Forum that the <24hourfitnessparamus.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@24hourfitnessparamus.com. Also on June 29, 2018, 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.
A timely Response was received and determined to be complete on July 18, 2018.
On July 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a chain of more than 400 health and fitness facilities in the United States, with a membership of nearly 4 million people. Complainant uses the 24 HOUR FITNESS mark for its facilities and for health and fitness merchandise sold in these facilities and through Complainant's website, <24hourfitness.com>. Complainant and a predecessor in interest have used the 24 HOUR FITNESS mark and variations thereof since 1996. Complainant owns several U.S. trademark registrations for the mark, including some in standard character form; Complainant also claims common-law rights in the mark.
Respondent is the registrant of the disputed domain name <24hourfitnessparamus.com>, originally registered in May 2015. Prior to the filing of the Complaint in this proceeding, the registration was held in the name of a domain registration privacy service, Contact Privacy Inc.; the registrar lifted the privacy shield upon receiving notice of the proceeding. The domain name resolves to an "under construction" page. Complainant states that Respondent is not affiliated with Complainant, is not commonly known by the domain name, has not been licensed or otherwise permitted to use Complainant's 24 HOUR FITNESS mark.
Complainant contends on the above grounds that the disputed domain name <24hourfitnessparamus.com> is confusingly similar to its 24 HOUR FITNESS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that he was employed as a personal trainer at Complainant's Paramus, New Jersey, facility from about May through August of 2015; that in connection with that employment, he was expected to market his services to potential clients; and that he registered the disputed domain name at that time with the approval of the facility's managers and used it for an email address to communicate with potential clients, with the knowledge and participation of the managers and other trainers. Respondent further states that he never used the email address for any other purpose; that he stopped using it after leaving his employment; and that he did not renew the registration after the first year. He states that he no longer owns the address.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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.
The disputed domain name <24hourfitnessparamus.com> incorporates Complainant's registered 24 HOUR FITNESS trademark, omitting the spaces, adding the geographic term "Paramus," and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., CrossFit, Inc. v. Results Plus Personal Training Inc, FA 1498576 (Forum June 28, 2013) (finding <crossfitpaterson.com>, <crossfitclifton.com>, and similar domain names confusingly similar to CROSSFIT); 24 Hour Fitness USA, Inc. v. Hollywood Gym Inc. c/o Amilia Kochkomian, FA 912194 (Forum Mar. 19, 2007) (finding <24hourfitnesscenter.com> confusingly similar to 24 HOUR FITNESS). The Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it does not appear to be in active use. Respondent disavows ownership of the domain name.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has not come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
In light of Respondent's claim that he does not own the disputed domain name and did not renew the registration, the Panel infers that some other person or entity may have assumed control over the domain name. Absent evidence to the contrary, the Panel considers it reasonable to infer under the circumstances presented here that this unidentified person or entity acquired the domain name with the intent to offer it for sale to Complainant or a competitor thereof, or to disrupt Complainant's business, or to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's mark; and that the domain name registration is being maintained and renewed for that purpose. The Panel therefore finds that the disputed domain name was registered or acquired and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24hourfitnessparamus.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 24, 2018
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