Fitness Anywhere LLC v. Jianfang Cheng
Claim Number: FA1105001386521
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is Jianfang Cheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2011; the National Arbitration Forum received payment on May 2, 2011.
On May 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trxbestdeal.info, postmaster@trxbody.info, postmaster@trxbuying.info, postmaster@trxbuyzone.info, postmaster@trxbuyzones.info, postmaster@trxdeal.info, postmaster@trxfor.info, postmaster@trxget.info, postmaster@trxgetzone.info, postmaster@trxhoting.info, postmaster@trxmore.info, postmaster@trxoffer.info, postmaster@trxofferzone.info, postmaster@trxondeal.info, postmaster@trxonlines.info, postmaster@trxonsale.info, postmaster@trxonsales.info, postmaster@trxorders.info, postmaster@trxpro.info, postmaster@trxsave.info, postmaster@trxsaveup.info, postmaster@trxship.info, postmaster@trxshopping.info, postmaster@trxspecial.info, postmaster@trxsuite.info, postmaster@trxtrain.info, and postmaster@trxzone.info. Also on May 2, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info> domain names.
3. Respondent registered and used the <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere LLC, is a fitness company offering both products and services. Complainant owns multiple trademark registrations for the TRX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,202,696 issued January 23, 2007). Complainant uses the mark to promote and sell its fitness products.
Respondent, Jianfang Cheng, registered the disputed domain names starting on April 14, 2011 through April 23, 2011. The disputed domain names resolve to sites offering products alleged to be from Complainant bearing the TRX mark. Respondent presumably receives revenue from the sale of these goods.
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 asserts that it has rights in the TRX mark based upon a registration for that mark with the United States Patent and Trademark Office (“USPTO”). Complainant has provided affirmative evidence of its ownership of those registrations; therefore, the Panel finds that Complainant has established its rights in the TRX mark by registering that mark with the USPTO (e.g., Reg. No. 3,202,696 issued January 23, 2007). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also asserts that the disputed domain names are confusingly similar to its TRX mark. The disputed domain names all include the TRX mark in its entirety while adding descriptive and generic terms along with the generic top-level domain (“gTLD”) “.info.” The Panel finds that the addition of various terms along with a gTLD does not sufficiently differentiate the disputed domain name from Complainant’s TRX mark; therefore, the two are confusingly similar under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has met its prima facie burden in this case by making a showing, that the Panel finds sufficient, that Respondent lacks rights or legitimate interests in the disputed domain names. The onus now lies on Respondent to rebut the prima facie case and prove its rights or legitimate interests in the mark. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file any response in this matter which grants this Panel the discretionary power to assume that Respondent lacks rights or legitimate interests in the mark. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still examine the entire record to make a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according the factors listed in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. Respondent has offered no evidence to show that it is commonly known by the disputed domain names. The WHOIS information identifies the registrant as “Jianfeng Cheng.” Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommericial or fair use of the disputed domain name. Respondent’s disputed domain names resolve to sites offering products for sale which look like or mimic Complainant’s own products. Respondent is selling these goods in direct competition with Complainant’s own products. Therefore, the Panel finds that Respondent is not using the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and 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.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent’s disputed domain names disrupt its business. Respondent’s disputed domain names resolve to a site offering products which directly compete with Complainant’s own goods in the fitness equipment marketplace. Internet users seeking Complainant’s own goods may be diverted to this site and purchase goods from Respondent instead of Complainant. The Panel finds that that usage does disrupt Complainant’s business and is therefore evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant also alleges that Respondent has registered and is using the disputed domain names for its own commercial gain constituting bad faith regsitration and use. Respondent’s disputed domain names resolve to a site offering goods for sale which are the same as Complainant’s own goods. Respondent presumably gains commercially from the sale of these similar goods. Therefore, the Panel finds that Rspondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trxbestdeal.info>, <trxbody.info>, <trxbuying.info>, <trxbuyzone.info>, <trxbuyzones.info>, <trxdeal.info>, <trxfor.info>, <trxget.info>, <trxgetzone.info>, <trxhoting.info>, <trxmore.info>, <trxoffer.info>, <trxofferzone.info>, <trxondeal.info>, <trxonlines.info>, <trxonsale.info>, <trxonsales.info>, <trxorders.info>, <trxpro.info>, <trxsave.info>, <trxsaveup.info>, <trxship.info>, <trxshopping.info>, <trxspecial.info>, <trxsuite.info>, <trxtrain.info>, and <trxzone.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 15, 2011
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