Fitness Anywhere LLC v. Jack Chiang
Claim Number: FA1107001396861
Complainant is Fitness Anywhere LLC (“Complainant”), represented by Omid A. Mantashi, California, USA. Respondent is Jack Chiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info>, registered with Godaddy.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 4, 2011; the National Arbitration Forum received payment on July 4, 2011.
On July 6, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.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 July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@besttrxbuy.info, postmaster@besttrxfitness.info, postmaster@besttrxworkout.info, postmaster@freetrxbuy.info, postmaster@freetrxfitness.info, postmaster@freetrxworkout.info, postmaster@newtrxbuy.info, postmaster@newtrxworkout.info, postmaster@thetrxbuy.info, postmaster@thetrxfitness.info, postmaster@thetrxworkout.info, postmaster@trxbuyonline.info, postmaster@trxbuys.info, postmaster@trxbuyshop.info, postmaster@trxbuysite.info, postmaster@trxbuystore.info, postmaster@trxbuytoday.info, postmaster@trxcheapsale.com, postmaster@trxfitnessnow.info, postmaster@trxfitnesstoday.info, postmaster@trxsalestore.com, postmaster@trxstorenow.info, postmaster@trxstoretoday.info, postmaster@trxworkoutnow.info, postmaster@trxworkoutonline.info, postmaster@trxworkoutshop.info, postmaster@trxworkoutstore.info, and postmaster@trxworkouttoday.info. Also on July 12, 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 August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names are confusingly similar to Complainant’s TRX mark.
2. Respondent does not have any rights or legitimate interests in the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names.
3. Respondent registered and used the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere LLC, is the owner of the TRX mark and has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,202,696 registered January 23, 2007) for its TRX mark. The TRX mark is used in connection with the sale of fitness equipment and instructional services.
Respondent, Jack Chiang, registered the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxfitness.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names on June 23, 2011. Respondent registered the <trxcheapsale.com> and <trxsalestore.com> domain names on June 30, 2011. Complainant alleges the disputed domain names resolve to websites which either sell counterfeit goods or engage in phishing schemes, however the Panel finds the Complainant has not supported these allegations for most of the domain names.
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 contends that it has established rights in the TRX mark because it has registered the TRX mark with the USPTO (e.g., Reg. No. 3,202,696 registered January 23, 2007). The Panel finds that Complainant has sufficiently established rights in the TRX mark for the purposes of Policy ¶ 4(a)(i). See 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.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant further contends that Respondent’s disputed domain names are confusingly similar to its TRX mark. Each of the disputed domain names has descriptive or generic terms, or a combination of both. The addition of such terms cannot free a respondent of a finding of confusing similarity. See
Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Additionally, each of the disputed domain names is finished with the generic top-level domain (“gTLD”) “.info” or “.com.” This is similarly insubstantial in a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s TRX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant contends that Respondent does not have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case in support of this claim. Complainant, having made a prima facie case, has shifted the burden to Respondent to disprove the allegations Complainant has made. 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)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Given Respondent’s failure to submit an answer, the Panel takes as true all of the Complainant’s allegations. This is supported by past panels’ findings in Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) and Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
Complainant has asserted that the Respondent is not commonly known by the disputed domain name. Cases such as Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) and Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) guide the Panel to the WHOIS listing for the disputed domain names and the information Complainant has provided to make a determination as to whether Respondent is commonly known by the disputed domain name. Complainant contends that Respondent is unauthorized to use the TRX mark. The WHOIS information for the disputed domain names lists “Jack Chiang” as the domain name registrant. Nothing suggests from these sources that Respondent is commonly known by the disputed domain name, and so the Panel finds that Respondent is not pursuant to Policy ¶ 4(c)(ii).
Past panels have found that the use of a disputed domain name to sell counterfeit goods is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”). Complainant has alleged that some of the disputed domain names resolve to websites which sell counterfeit goods. While the Panel would wish for actual evidence on this point, the UDRP permits inferences with respect to Policy ¶ 4(a)(ii). As such, the Panel finds that Policy ¶¶ 4(c)(i) and 4(c)(iii) have not been met because Respondent’s use of some of the domain names is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use.
Complainant contends that some of the disputed domain names are engaging in a phishing scheme to acquire personal information from Internet users who happen upon Respondent’s websites. Panels have previously found that the use of a website for phishing purposes is further evidence of a respondent’s lack of rights and legitimate interests. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Complainant has suggested, in a prima facie manner, that Respondent is not making, with these disputed domain names, a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The evidence presented by Complainant includes several screen shots of Respondent’s <thetrxfitness.info> domain name. Complainant’s evidence shows that the <thetrxfitness.info> domain name is being used as a forum and blog website that features various articles on an assortment of topics. Further, it appears that the resolving website contains several third-party links to various websites. Without more from Complainant or Respondent, the Panel infers that Respondent profits from such use of the confusingly similar domain name, thereby allowing a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
However, Complainant has merely presented arguments and accusations as to the other disputed domain names without supplying the Panel with actual evidence of such use. Without evidence of Respondent’s bad faith registration AND use the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(iii) as to the remaining domain names. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied as to the <thetrxfitness.info> domain name. Further, the Panel finds that Complainant has failed to satisfy its burden under Policy ¶ 4(a)(iii) as to the remaining disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <thetrxfitness.info> domain name.
Accordingly, it is Ordered that the <thetrxfitness.info> domain name be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE as to the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info> and <trxworkouttoday.info> domain names.
Accordingly, it is Ordered that the <besttrxbuy.info>, <besttrxfitness.info>, <besttrxworkout.info>, <freetrxbuy.info>, <freetrxfitness.info>, <freetrxworkout.info>, <newtrxbuy.info>, <newtrxworkout.info>, <thetrxbuy.info>, <thetrxworkout.info>, <trxbuyonline.info>, <trxbuys.info>, <trxbuyshop.info>, <trxbuysite.info>, <trxbuystore.info>, <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info> and <trxworkouttoday.info> domain names REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: August 9, 2011
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