24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For Sale
Claim Number: FA0308000187429
PARTIES
Complainant
is 24 Hour Fitness USA, Inc., San
Ramon, CA, USA (“Complainant”) represented by P. Landon Moreland of Manatt Phelps & Phillips LLP. Respondent is 24HourNames.com – Quality Domains For Sale, Vleteren, Belgium
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, registered with Enom, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 19, 2003; the Forum received a hard copy of the
Complaint on August 20, 2003.
On
August 20, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> are registered with Enom, Inc. and that
the Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound
by the Enom, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
August 20, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
9, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@24hrsfitness.com, postmaster@24-hourfitness.com and
postmaster@24hoursfitness.com by e-mail.
The
Forum received a timely Response and determined it to be complete August 25,
2003.
Complainant
filed an Additional Submission September 2, 2003; but that submission was not
in compliance with Forum Supplemental Rule #7. In reaching its decision in this
dispute, the Panel has not considered the Submission because it did not comply
with the Rules.
On September 10, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. The domain names registered by
Respondent, <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, are identical to a mark in which
Complainant has legal rights.
2. Respondent has no rights to or legitimate
interests in the domain names in issue that contain Complainant’s marks.
3. Respondent registered and used the domain
names in bad faith.
B. Respondent makes the following points in
response:
1. Respondent does not challenge that the
domain names, <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, are identical to Complainant’s mark.
2. Respondent asserts that the domain names,
respectively, were registered March 29, 2000, May 18, 2000 and July 27, 2000
and that these registrations predate the date on which Complainant received
trademark protection for the 24 HOUR FITNESS mark, respectively November 30,
2000 and May 14, 2001.
3. The domain names in issue are generic.
4. It is within the course and scope of the
business of Respondent to register such generic terms in varying combinations.
5. Complainant’s allegations of bad faith
are without any basis in the evidence because Complainant cannot show bad faith
where the domain names were registered before the trademark was granted.
C. Additional Submissions
The
Panel did not consider Complainant’s Additional Submission, which did not
comply with Forum Supplemental Rule #7.
FINDINGS
The
Panel finds that Complainant’s Additional Submission was received within the
time allotted for Additional Submissions pursuant to Forum Supplemental Rule
#7, but payment for the submission was not received until allotted time
elapsed. Complainant’s Additional Submission was deficient and the Panel
disregarded it. Cf. Schott Glas and Nec/Schott Components Corp. v. Necschott,
D2001-0127 (WIPO March 14, 2001) (choosing not to consider the Response in
light of formal deficiencies).
Complainant established in this
proceeding that it has rights to and interests in the trademark, 24 HOUR FITNESS, through registration of the
mark on the Principal Register of the U.S. Patent and Trademark Office as early
as January 20, 1998 (U.S. Reg. No. 2,130,895), with rights in that mark dating
back to its filing date of March 2, 1995. Complainant has also established
common-law rights in the mark through widespread and continuous use of the mark
in commerce for nearly two decades.
Complainant
established as well that the disputed domain names are confusingly similar to
Complainant’s mark. Respondent did not
challenge confusing similarity.
Respondent
asserts that the Complainant did not obtain protected trademark status for the
24 Hour Fitness mark until some months after the Respondent registered the
disputed domain names in 2000. It is
true that one of Complainant’s trademarks on 24 HOUR FITNESS was granted in
November of 2000. However, Complainant
established common law rights in the name by showing that it had been in
business under that name for almost a score of years. Complainant also proved
that it had a trademark registration that was valid as early as March of
1995. The fact that Respondent used the
exact combination of terms suggests that Respondent knew of Complainant’s
operations.
Respondent also
asserted that Complainant cannot show bad faith because Respondent registered
the disputed domain names before the November 2000 date on which Complainant
obtained trademark protection.
Notwithstanding, Respondent did not show any valid business operation
under the 24 HOUR FITNESS name, did not show any right to the use of the name,
and did not show that Respondent is commonly known by the 24 HOUR FITNESS name.
Respondent also
asserted the generic nature of 24, hour and fitness, but did not address Complainant’s
20-year use of the three terms together.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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;
(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.
Complainant established in this proceeding that it
has rights in the 24 HOUR FITNESS mark through registration of the mark on the
Principal Register of the U.S. Patent and Trademark Office as early as January
20, 1998 (U.S. Reg. No. 2,130,895, filed on March 2, 1995), as well as through
widespread and continuous use of the mark in commerce for nearly two decades. See
Janus
Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’ but only that
Complainant has a bona fide basis for making the Complaint in the first place).
The Panel notes that as Complainant’s
rights in its sucessfully registered marks date back to the date that it
originally filed for those marks with the U.S. Patent and Trademark Office, it
has sufficiently proven that its rights in the 24 HOUR FITNESS mark predate
Respondent’s registration of the disputed domain names. See FDNY Fire Safety
Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003)
(finding that Complainant’s rights in the FDNY mark relate back to the date
that its successful trademark registration was filed with the U.S. Patent and
Trademark Office).
Complainant
showed that the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>
domain names are confusingly similar to the 24 HOUR FITNESS mark. Respondent’s
abbreviation of the word HOURS, its addition of a hyphen to Complainant’s mark,
and its pluralization of the word HOURS are each insignificant alterations to
the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001)
(finding the domain name <ms-office-2000.com> to be confusingly similar
even though the mark MICROSOFT is abbreviated); see also Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Cream Pie
Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that
“the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does
not prevent the likelihood of confusion caused by the use of the remaining
identical mark. The domain name <creampies.com> is similar in sound,
appearance, and connotation”).
The Panel finds that Complainant met the requirements of
ICANN Policy ¶ 4(a)(i); the domain names in issue are confusingly similar to a
mark in which Complainant has rights.
Rights to and Legitimate
Interests
Complainant
argues that Respondent’s willingness to offer its domain name registrations for
sale, each infringing on Complainant’s 24 HOUR FITNESS mark, indicates a lack
of rights or legitimate interests in the disputed domain names. Respondent
maintains that it has not actually offered its domain name registrations for
sale, but instead lists them to gain link popularity. This is not sufficient to rebut Complainant’s claim that
Respondent is attempting to sell its domain name registrations, especially in
light of the fact that Respondent’s last name designation is: “Domain Names for
Sale.” In this case, Respondent would
be selling domain names that contain in their entirety Complainant’s protected
mark and Respondent has brought forth no proof to establish any right in
Respondent to use Complainant’s protected mark in that manner. As Respondent
did not show that it has any right to sell a domain name containing
Complainant’s well-known mark, Respondent did not demonstrate a bona fide use
or give a plausible explanation of planned use that would give rise to rights
or legitimate interests in the disputed domain name. See
J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights
or legitimate interests do not exist when one has made no use of the websites
that are located at the domain names at issue, other than to sell the domain
names for profit); see also Wal-Mart
Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use).
Complainant urges that Respondent’s use
of the disputed domain names to redirect Internet users to an Internet search
results web page that contains advertisements and links to competitors of
Complainant further evidences Respondent’s lack of rights or legitimate
interests in the disputed domain names. Respondent
contends that it is in the business of registering a portfolio of generic
domain names and that it then develops those domain names to generate search
results based on the nature of the domain name in question. Respondent urges
that this is a “bona fide” business that evidences rights or legitimate
interests in the disputed domain names.
Absent Respondent’s use of Complainant’s well-known business name,
Respondent might be able to obtain rights in strictly generic terms registered
in this manner. However, as Respondent’s “business” misappropriates the
goodwill Complainant has built up around the 24 HOUR FITNESS mark, such use
cannot be considered to be either “bona fide” or a “legitimate noncommercial or
fair use.” See Ameritrade Holdings Corp. v. Polanski, FA 102715
(Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with Complainant, was not a bona fide offering of goods or services); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
Complainant
contends that Respondent is not commonly known by the disputed domain names, as
Respondent is not operating a business at the domain names. Further, Complainant urges that Respondent
does not have a license to use Complainant’s 24 HOUR FITNESS mark as additional
evidence that Respondent lacks rights to or legitimate interests in its domain
names. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Furthermore, the
facts permit an inference that Respondent had actual notice of Complainant’s
rights in the 24 HOUR FITNESS mark when it registered the disputed domain
names. Although the three words
standing alone might be generic, Respondent used the three together in the same
manner that Complainant has used them in its area of commerce for twenty years.
Respondent did not show a legitimate interest in maintaining its domain name
registrations by showing a generic listing. Cf.
Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000)
(stating that "[c]ommon words and descriptive terms are legitimately
subject to registration as domain names on a 'first-come, first-served'
basis"); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000)
(finding that “genericness, if established, will defeat a claim of trademark
rights, even in a mark which is the subject of an incontestable registration”).
Complainant met the requirements of ICANN Policy ¶
4(a)(ii) by demonstrating that Respondent does not have rights to or legitimate
interests in the disputed domain names and Respondent has failed to counter
these allegations with proof that Respondent has such rights.
Furthermore, Respondent’s registration of the disputed
domain names with actual or constructive knowledge of Complainant’s rights in
the registered 24 HOUR FITNESS mark, and its subsequent use of those domain
names to redirect Internet users to a web page that advertises the services of
Complainant’s competitors, evidences bad faith registration and use of the
disputed domain names. Although Respondent
maintains that it did not know of Complainant’s rights in the 24 HOUR FITNESS
mark prior to registering the generic disputed domain names, and that it acted
in good faith when it registered the domain names, the evidence is to the
contrary. The proof before the Panel shows that, contrary to Respondent’s
assertion, Complainant’s registered rights in the 24 HOUR FITNESS mark predated
Respondent’s registration of the disputed domain names, as did its common-law
rights in that mark. Thus, Respondent’s claim that it could not have registered
the disputed domain names in bad faith based on the allegation that
Respondent’s registrations predated Complainant’s rights in the relevant mark
fails. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Luck's
Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30,
2000) (finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Complainant met the requirements of ICANN Policy ¶
4(a)(iii) to show bad faith registration and use of the disputed domain names.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 26, 2003.
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