national arbitration forum

 

DECISION

 

24 Hour Fitness USA, Inc. v  EMKAYDesign d/b/a rob king

Claim Number:  FA0512000606124

 

PARTIES

Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Laura M. Franco, of Manatt, Phelps & Phillips LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA 94304.  Respondent is EMKAYDesign d/b/a rob king (“Respondent”), 124 Shad Road, Bloomingdale, GA 31302.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <24hourfamilyfitnesscenter.com>, registered with Register.com, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.

 

On December 8, 2005, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <24hourfamilyfitnesscenter.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@24hourfamilyfitnesscenter.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <24hourfamilyfitnesscenter.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS and FAMILY FITNESS CENTERS marks.

 

2.      Respondent does not have any rights or legitimate interests in the <24hourfamilyfitnesscenter.com> domain name.

 

3.      Respondent registered and used the <24hourfamilyfitnesscenter.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, 24 Hour Fitness, Inc., began as a one-club operation in 1983 and has since become a privately owned and operated health and fitness chain, ranging in facilities from its 6,000 – 10,000 square foot Express Clubs to its 100.000+ square feel Ultra-Sport Clubs.  Complainant has more than three million members and 300 clubs in the United states and three countries in Asia.  Complainant also sells a wide variety of health and fitness related merchandise under its 24 HOUR FITNESS mark, including nutrition and exercise books and merchandise, clothing, socks, and head gear, as well as accessories, gym bags, and backpacks.

 

Complainant first registered its 24 HOUR FITNESS mark on January 20, 1998 (Reg. No. 2,130,895) with the U.S. Patent and Trademark Office (“USPTO”).  Complainant first registered its FAMILY FITNESS CENTERS mark on October 1, 1991 (Reg. No. 1,659,143) with the USPTO.

 

Respondent, EMKAYDesign, registered the <24hourfamilyfitnesscenter.com> domain name on November 5, 2004.  The website associated with the <24hourfamilyfitnesscenter.com> domain name is a parking page provided by the Registrar.  The parking page includes fitness related links, such as “Family Fitness,” “Bally Total Fitness,” “Curves Women’s Fitness,” “Fitness Boot Camp,” as well as other “popular category” links categorized as “Travel,” “Financial Planning,” and “Business and Finance.”

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant provides evidence of its USPTO registrations to establish its rights in the 24 HOUR FITNESS and FAMILY FITNESS CENTERS marks.  The Panel accepts these submissions and finds that Complainant has established that it has rights in these marks pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The Panel finds that Respondent’s <24hourfamilyfitnesscenter.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS and FITNESS CENTER marks.  The Panel holds that Respondent has merely concatenated Complainant’s two marks and eliminated the spaces between words.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The website associated with the <24hourfamilyfitnesscenter.com> domain name displays links to Complainant’s competitors as well as unrelated third party links.  The Panel finds that appropriating another’s trademark to link to competitors and other third party links is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy)

 

The Panel finds that there is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The website associated with Respondent’s domain name provides links to Complainant’s competitors.  Although the website appears to be a registrar-created parking page, in light of the absence of a Response the Panel finds that Respondent is responsible for the content associated with its <24hourfamilyfitnesscenter.com> domain name.  The Panel finds that appropriating another’s mark to provide links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The Panel also infers that the links at the website associated with the disputed domain name generate click-through fees.  Respondent has not responded to refute that it is the recipient of these fees.  Therefore, the Panel finds that Respondent is appropriating a domain name that is confusingly similar to Complainant’s mark for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

 

 

 

 

 

 

 

 

 

 

 

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 <24hourfamilyfitnesscenter.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

John J. Upchurch, Panelist

Dated:  January 16, 2006