National Arbitration Forum

 

DECISION

 

T.R. World Gym-IP, LLC v. William D'Addio

Claim Number: FA0704000956501

 

PARTIES

Complainant is T.R. World Gym-IP, LLC (“Complainant”), represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC, 55 South Commercial Street, Manchester, NH 03101.  Respondent is William D'Addio (“Respondent”), 2511 Boone Drive, Delray Beach, FL 33483.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <worldgyms.com>, registered with Network Solutions, 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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.

 

On April 10, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <worldgyms.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 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@worldgyms.com by e-mail.

 

A timely Response was received and determined to be complete on April 30, 2007.

 

An Additional Submission from Complainant was received in a timely manner on May 4, 2007, and determined to be complete pursuant to Supplemental Rule 7.

 

On May 10, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Since 1977, Complainant and its predecessors have continuously used the mark WORLD GYM on or in connection with gym and fitness center services and printed publications.  Complainant owns a number of U.S. trademark registrations, including Registration No. 1,791,584, for the WORLD GYM mark.[1]  See Complaint, Exhibit A.  Complainant also owns the domain name <worldgym.com>.  See Complaint, Exhibit B.  Complainant, currently, has over 230 club locations located in the U.S. and in nearly 20 other countries.

 

Complainant contends that the disputed domain name comprises the WORLD GYM mark in its entirety and is essentially identical in sound, appearance, and meaning to Complainant’s mark.

 

Complainant further maintains that Respondent does not own any rights in the WORLD GYM mark nor has a license to use the mark; has never been known by the term “World Gym;” and chose to use the WORLD GYM mark in an attempt to trade on the goodwill associated with such mark.  Complainant also argues that Respondent’s use of the disputed domain name is a commercial use and is not a fair use of the name.

 

Finally, Complainant indicates that the domain name <worldgyms.com> should be considered as having been registered and being used in bad faith because: (1) Respondent’s use of the disputed domain name is for the purpose of commercial gain in that, until very recently, Respondent offered to sell the domain name and included on its site the advertisement, “this Domain Name and Site are FOR SALE!!  You can own one of the most popular names and website in the fitness industry.  Contact whdphd@aol.com for more info!” (See Complaint, Exhibit D); (2) Respondent’s use of the disputed domain name is for the purpose of attracting, for commercial gain, Internet users with the intention of misleading or confusing consumers into thinking that the website originates with or is in some way associated with or connected with, sponsored, authorized or endorsed by Complainant; (3) Respondent’s registration of the domain name is primarily for the purpose of disrupting the business of Complainant; and (4) Respondent registered the domain name in order to prevent Complainant from registering and using the domain name for the purpose of disrupting the business of Complainant.

 

B. Respondent

 

Respondent notes that the disputed domain name has been owned and maintained by Respondent for approximately nine years, since June 22, 1998, and, at no time prior to March 8, 2007,[2] has Complainant complained about the registration of the domain name.   At no time, Respondent indicates, has it ever made any representation that it is a franchisee of Complainant or in anyway associated with Complainant. 

 

Although the domain name has been listed for sale, Respondent concedes, at no time has it made any representations indicating that the name grants any buyer the right to use the name for the purpose of hosting a website or doing anything that would interfere with Complainant’s business.  At the present time, Respondent notes, there are about 100 websites not owned by Complainant that include, with Complainant’s permission, the WORLD GYM mark within the body of the site.  “Therefore there is in fact a legitimate prospect for the sale of such domain that would in no way violate any trademarks or licensing restrictions the Complainant may enjoy or own, if such approval would be granted to a prospective buyer of the domain.”

 

Furthermore, Respondent declares, at Complainant’s insistence, all reference that the domain name was for sale was immediately removed from the site.  The site, Respondent points out, is currently in a “lockdown” status.  If such status is removed, Respondent declares, it would agree to display notification on the site indicating that the domain has no association with Complainant.

 

Respondent also argues that the disputed name, <worldgyms.com>, is comprised of two words – world and gyms – that are “extremely generic” in nature.  As such, Respondent argues, it and others may use the domain name without infringing on Complainant’s rights.

 

C.     Additional Submission

In its Additional Submission, Complainant takes issue with Respondent’s assertion that “at no time has the Respondent ever displayed any marks or logos associated with or owned by Complainant.”  Complainant asserts that, by displaying the domain name in content on the website and by referring to the domain name as “one of  the most popular names and websites in the industry,” Respondent has used the WORLD GYM mark and has offered the sale of the domain name by touting its being a “popular name.”

 

Complainant also notes that Respondent has not provided any details of the allegedly “approximately one hundred websites that are not owned by the Complainant yet still include the Complainant’s registered name within the body of such existing websites, and have been approved for such use by the Complainant.”

 

Complainant also challenges Respondent’s assertion that it has contacted Network Solutions to demand that “all reference to the sale of the domain name and any ‘under construction’ notification be removed.” 

 

With respect to Respondent’s assertion that Complainant’s WORLD GYM mark is composed of two generic terms, Complainant submitted a copy of the decision in World Gym Licensing, Ltd. v. Fitness World, Inc. et al., 47 F. Supp.2d 614 (D. Md. 1999).  See Exhibit G.  In that case, the district court held that the term “World” has no descriptive connotation in the fitness industry and that the WORLD GYM mark enjoys a wide latitude of protection.   

 

FINDINGS

The Panel finds that: (1) the domain name <worldgyms.com> is identical or confusingly similar to Complainant’s WORLD GYM mark; (2) that Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the disputed domain name, <worldgyms.com>, is identical or confusingly similar to the mark WORLD GYM.  The addition of the letter “s” and of the generic top-level domain “.com” is insufficient to distinguish the domain name from the mark.  See 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 Panel further concludes that, as a result of Complainant’s registrations for, and use of, the WORLD GYM mark, Complainant has rights in the mark.  In response to Respondent’s contention that Complainant’s mark consists of two generic terms, the Panel notes that Complainant’s registrations constitute prima facie evidence of the validity of the mark.  See 15 U.S.C. §1057(b).

 

Rights or Legitimate Interests

 

The evidence indicates that Respondent’s domain name resolves to a website featuring no substantive content other than the words “coming soon” and a picture of a person working out with gym equipment.  Under such circumstances, the Panel finds that Complainant has met its burden of establishing that Respondent is not using the domain name in connection with a bona fide offering of goods or services or in a noncommercial or fair manner.  There also is no evidence that Respondent is commonly known by the domain name.

 

The fact that Complainant may decide to license a prospective buyer of the website to use the disputed domain name does not confer upon Respondent rights or legitimate interests in the domain name.  Respondent is not so licensed or otherwise authorized by Complainant to use the disputed domain name.

 

The Panel therefore concludes that Complainant has established that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

The Panel concludes that the disputed domain name was registered and is being used in bad faith.  The evidence indicates that, up until recently, the domain name was offered for sale and that Respondent recognized that the domain name incorporates “one of the most popular names and website in the fitness industry.”  The evidence further indicates that the disputed site resolves to no substantive content.  Such activity and knowledge on the part of Respondent evinces registration and use in bad faith under paragraph 4(b)(i) of the Policy.  See Wembley Nat’l Stadium Ltd. V. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the respondent to sell the domain name from the outset); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. V. Clericalmedical.com, D2000-1288 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Respondent contends that it never indicated to any prospective purchaser that the purchase of the domain name would permit such purchaser to use the name in a manner that would interfere with Complainant’s business.  That may be true.  However, under the Policy, such fact is not relevant.  The applicable Policy only requires evidence that the domain name was registered primarily for the purpose of selling the domain name for consideration in excess of the documented out-of-pocket costs directly related to the domain name.  For the reasons set forth above, such evidence exists in this case.

 

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

 

 

 

Jeffrey M. Samuels, Panelist
Dated: May 22, 2007

 

 

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