24 Hour Fitness USA, Inc. v. Hollywood Gym Inc. c/o Amilia Kochkomian
Claim Number: FA0702000912194
Complainant is 24 Hour Fitness USA, Inc. (“Complainant”), represented by Laura
M. Franco, of Manatt, Phelps & Phillips, LLP,
1001 Page Mill Road, Bldg. 2, Palo Alto, CA 94304. Respondent is Hollywood Gym Inc. c/o Amilia
Kochkomian (“Respondent”),
The domain name at issue is <24hourfitnesscenter.com>, registered with Register.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2007.
On February 6, 2007, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <24hourfitnesscenter.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 February 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2007 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@24hourfitnesscenter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <24hourfitnesscenter.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <24hourfitnesscenter.com> domain name.
3. Respondent registered and used the <24hourfitnesscenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 24 Hour Fitness USA, Inc., is one of the largest privately owned and operated health and fitness chains in the world. Complainant offers fitness services as well as health and fitness related goods. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the 24 HOUR FITNESS mark (e.g. Reg. No. 2,130,895 issued January 20, 1998). Complainant also holds multiple international registrations of its mark.
Respondent registered the <24hourfitnesscenter.com>
domain name on June 8, 2000. Before
Complainant submitted its claim, Respondent was using the disputed domain name
to redirect Internet users to Respondent’s website at the
<hollywoodgym.com> domain name.
Respondent’s website advertised health and fitness services in direct
competition with Complainant.
Specifically, Hollywood Gym is a health and fitness club located in
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.
Complainant holds USPTO registrations for the 24 HOUR FITNESS mark, as well as numerous international registrations of the mark, that predate Respondent’s registration of the <24hourfitnesscenter.com> domain name. The Panel finds that Respondent’s registrations establish its rights in the 24 HOUR FITNESS mark 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <24hourfitnesscenter.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS mark. The disputed domain name contains Complainant’s mark in its entirety without any alteration, which is strong evidence of confusing similarity. As the panel in Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) found, “the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” The disputed domain name addends the term “center” to Complainant’s mark but this does not distinguish the disputed domain name from Complainant’s mark, as the term is a common term in the health and fitness industry and is clearly in reference to Complainant’s business. The panel in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) found confusing similarity where the respondent’s domain name combined the complainant’s mark with a generic term that had an obvious relationship to the complainant’s business. Similarly, in Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum Mar. 13, 2000), the panel held that the addition of the term “hotel” to the complainant’s MARRIOTT mark in the respondent’s domain name <marriott-hotel.com> resulted in confusing similarity. Thus, the Panel finds that Respondent’s <24hourfitnesscenter.com> domain name is confusingly similar to Complainant’s 24 HOUR FITNESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. According to the panel in G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent is afforded the opportunity to submit a Response in order to provide the Panel with evidence and arguments in support of its rights or legitimate interests. In this case, Respondent has failed to avail itself of this opportunity. This Panel follows the panel in Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000), and finds that Respondent’s failure to respond leaves the Panel without any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. As such, the Panel views Respondent’s failure to respond as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. However, the Panel will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Prior to the commencement of this dispute, Respondent was using the <24hourfitnesscenter.com> domain name to redirect Internet users to Respondent’s website located at the <hollywoodgym.com> domain name. Respondent’s website offered health and fitness goods and services in direct competition with Complainant. Previous panels have declined to find that such use is either a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). For example, in DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) the panel stated that, “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.” Similarly, the panel in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), found that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services. The Panel finds that Respondent is not using the disputed domain name in a manner permitted under Policy ¶¶ 4(c)(i) or (iii).
Further, there is no available evidence that Respondent is commonly known by the <24hourfitnesscenter.com> domain name as contemplated by Policy ¶ 4(c)(ii). Respondent’s WHOIS information identifies Respondent as “Hollywood Gym,” a name that is not only unrelated to Complainant or the disputed domain name, but is, in fact, the name of one of Complainant’s competitors. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel stated the respondent’s WHOIS information could be used as evidence to demonstrate that the respondent is not commonly known by the disputed domain name. The panel in Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002), found that that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.” The Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
After receiving notification of this dispute, Respondent
stopped redirecting traffic from the dispute domain name to its
<hollywoodgym.com> domain name and currently there is no website located
at the disputed domain name. However,
there is no evidence that Respondent has engaged in any demonstrable
preparations to use the disputed domain name in connection with any other bona
fide offering of goods or services or legitimate noncommercial or fair
use. In Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000), the panel found no rights or legitimate interests where the respondent
failed to submit a response to the complaint and had made no use of the domain
name in question. Also,
the panel in State Fair of Texas v. State
Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000), concluded
that the respondent’s failure to develop the site demonstrated a lack of
legitimate interest in the domain name.
Thus, the Panel finds that Respondent’s failure to demonstrate any preparations
to use the disputed domain name is further evidence that Respondent lacks
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent used the <24hourfitnesscenter.com> domain name
to redirect Internet users to Respondent’s website located at the
<hollywoodgym.com> domain name.
Internet users seeking Complainant’s genuine health and fitness goods
and services were instead redirected to Respondent’s competing website,
potentially costing Complainant business.
The panel in Surface Prot. Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), found that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion. Similarly, in EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384
(Nat. Arb. Forum July 7, 2000), the panel found bad faith where the
respondent’s sites pass users through to the respondent’s competing
business. Thus, the Panel finds that
Respondent has evidence ofbad faith registration and use of the disputed domain
name pursuant to Policy ¶ 4(b)(iii).
Respondent’s <24hourfitnesscenter.com>
domain name is confusingly similar to Complainant’s 24 HOUR FITNESS
mark. Internet users seeking
Complainant’s genuine website may instead find themselves redirected to
Complainant’s website. Before the
commencement of this dispute, such redirected Internet users would find
themselves at Respondent’s competing website and may think that Respondent’s
health and fitness services were sponsored by or affiliated with
Complainant. Respondent was presumably
profiting from this confusion by poaching Complainant’s business. Currently, Respondent’s website does not
resolve to any content and redirected Internet users may be frustrated in their
attempt to access Complainant’s goods and services. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found bad faith registration and use,
stating that, “Respondent registered and used the <my-seasons.com> domain
name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and
(iv) because Respondent is using a domain name that is confusingly similar to
the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.” The panel in Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003), came to a
similar conclusion, asserting that, “as Respondent is using the domain name at
issue in direct competition with Complainant, and giving the impression of
being affiliated with or sponsored by Complainant, this circumstance qualifies
as bad faith registration and use of the domain name pursuant to Policy ¶
4(b)(iv).” Thus, the Panel finds that
Respondent has exhibited bad faith registration and use pursuant to Policy ¶
4(b)(iv).
The Panel is not limited to the circumstances outlined in Policy
¶¶ 4(b)(i)-(iv) in finding evidence of bad faith
registration and use. The
panel in Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002), determined that Policy ¶ 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith. Currently, the
disputed domain name does not resolve to any content and there is no evidence
that Respondent has engaged in demonstrable preparations for use. The panel in Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000), found that a failure to demonstrate
preparations for use could be
evidence of bad faith, stating that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount to the domain name
being used in bad faith. Similarly, in
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), the
panel found that merely holding an infringing domain name without active use
can constitute use in bad faith. Thus,
the Panel finds that Respondent’s current lack of preparations to use the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24hourfitnesscenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 19, 2007
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