Fitness Anywhere LLC v. Jack Chiang
Claim Number: FA1112001419195
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>, <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com>, 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 December 8, 2011; the National Arbitration Forum received payment on December 8, 2011.
On December 9, 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>, <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com> 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 December 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@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@trxsuspensionsale.info, postmaster@trxworkoutnow.info, postmaster@trxworkoutonline.info, postmaster@trxworkoutshop.info, postmaster@trxworkoutstore.info, postmaster@trxworkouttoday.info, and postmaster@workoutsuspension.com. Also on December 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 January 12, 2012, 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>, <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names are confusingly similar to Complainant’s TRX mark.
Respondent’s <workoutsuspension.com> domain name is confusingly similar to Complainant’s SUSPENSION TRAINING 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>, <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com> 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>, <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fitness Anywhere LLC, is a designer, manufacturer and distributor of fitness products that are designed to be used wherever a user may be. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the TRX mark (Reg. No. 3,202,696 registered January 23, 2007), FITNESS ANYWHERE (Reg. No. 2,975,844 registered July 26, 2005), and SUSPENSION TRAINING marks (Reg. No. 3,255,160 registered June 26, 2007).
Respondent, Jack Chiang, registered the disputed domain names between May 12, 2011 and July 27, 2011. Respondent’s <workoutsuspension.com> domain name resolves to a website that advertises and sells counterfeit versions of Complainant’s products. Respondent’s <trxworkoutonline.info> domain name redirects Internet users to an unrelated third-party website located at <abcstitch.com>. Respondent’s <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>, and <trxbuystore.info> domain names do not resolve to active websites. Respondent’s <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names resolve to parked websites featuring competing and unrelated third-party links.
Respondent has been the respondent in at least two prior UDRP cases involving Complainant and its trademarks where it was ordered to transfer the domain names at issue to Complainant. See Fitness Anywhere, Inc. v. Chiang, FA 1374816 (Nat. Arb. Forum March 29, 2011); see also Fitness Anywhere, Inc. v. Chiang, FA 1396861(Nat. Arb. Forum Aug. 9, 2011).
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 has submitted evidence that it owns trademark registrations with the USPTO for the TRX mark (Reg. No. 3,202,696 registered January 23, 2007), the FITNESS ANYWHERE mark (Reg. No. 2,975,844 registered July 26, 2005), and the SUSPENSION TRAINING mark (Reg. No. 3,255,160 registered June 26, 2007). Prior panels have determined such evidence is sufficient for a Complainant to establish rights in its mark, regardless of where Respondent is located. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel agrees with this precedent and finds that Complainant has established rights in TRX, FITNESS ANYWHERE, and SUSPENSION TRAINING marks under Policy ¶ 4(a)(i).
Complainant contends 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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names are confusingly similar to Complainant’s TRX mark. The Panel notes that each domain name contains Complainant’s TRX mark while adding one or more generic and descriptive terms and the generic top-level domain (“gTLD”) “.com” or “.info.” Prior panels have found that the addition of generic or descriptive terms is not sufficient to remove a disputed domain name from the realm of confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also 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). Further, prior panels have also determined that the gTLD of a domain name does not matter for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that the domain names identified above are confusingly similar to Complainant’s TRX mark under Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s <workoutsuspension.com> domain name is confusingly similar to Complainant’s SUSPENSION TRAINING mark. Complainant notes that the disputed domain name removes the TRAINING term from its mark while adding the descriptive term “workout” and the gTLD “.com.” The Panel finds that such changes to Complainant’s mark are not sufficient to create a domain name distinct from the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel thus concludes that Respondent’s <workoutsuspension.com> domain name is confusingly similar to Complainant’s SUSPENSION TRAINING mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in 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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complaint argues that Respondent is neither commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s marks. The WHOIS information identifies “Jack Chiang” as the registrant of all of the domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names. The Panel finds that without evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends and supplies evidence to show that Respondent’s <workoutsuspension.com> domain name resolves to a website that advertises and sells counterfeit versions of Complainant’s products. Complainant notes that it has never granted Respondent permission to use its marks or to sell its products. The Panel finds that Respondent’s use of the domain name to sell counterfeit goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that a respondent’s attempt to use a disputed domain name to sell counterfeit goods was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant next argues that Respondent’s <trxworkoutonline.info> domain name redirect’s Internet users to an unrelated third-party website located at <abcstitch.com>. Prior panels have determined that using a party’s trademark to redirect Internet users to an unrelated third-party website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel agrees and finds accordingly.
Complainant alleges that Respondent’s <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names resolve to parked websites featuring competing and unrelated third-party links. Prior panels have determined that such use of a confusingly similar domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel agrees and finds accordingly under Policy ¶¶ 4(c)(i) and (iii).
Lastly, Complainant asserts that Respondent’s <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>, and <trxbuystore.info> domain names do not resolve to active websites. The Panel finds that such non-use of confusingly similar domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent has been the respondent in at least two prior UDRP cases involving Complainant and its trademarks where it was ordered to transfer the domain names at issue to Complainant. See Fitness Anywhere, Inc. v. Chiang, FA 1374816 (Nat. Arb. Forum March 29, 2011); see also Fitness Anywhere, Inc. v. Chiang, FA 1396861(Nat. Arb. Forum Aug. 9, 2011). Further, Complainant notes that Respondent subsequently registered the 29 domain names that are subject to the instant proceeding. Complainant argues that Respondent’s bad faith pattern of registering domain names with its mark in them is evidence of bad faith in this instance. The Panel agrees, and finds that both Respondent’s prior adverse UDRP proceedings involving Complainant and its current registration of multiple infringing domain names are evidence of bad faith under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant contends and supplies evidence to show that Respondent’s <workoutsuspension.com> domain name resolves to a website that advertises and sells counterfeit versions of Complainant’s products. Complainant has not granted Respondent permission to use its mark in this way. The Panel finds that such use of a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii) as Respondent’s sale of counterfeit versions of Complainant’s goods competes with Complainant and disrupts Complainant’s business. See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name); see also Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”).
Further, Complainant has presented evidence indicating that the <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names resolve to parked websites featuring competing and unrelated third-party links. The Panel finds this use also disrupts Complainant’s business by diverting Complainant’s intending consumers to competitors, which is evidence of bad faith under Policy ¶ 4(b)(iii), as well. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent is using the <workoutsuspension.com> domain name to resolve to a website that markets and sells counterfeit products that are made to look like Complainant’s products. The Panel finds Respondent uses Complainant’s mark in the disputed domain name to attract consumers and create a likelihood of confusion as to the source of the products sold on the resolving website. The Panel also finds that Respondent presumably profits from the sale of these counterfeit products, which is evidence of bad faith under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent registered and uses the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use of the domain name under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services).
Further, Respondent is using the <trxbuytoday.info>, <trxcheapsale.com>, <trxfitnessnow.info>, <trxfitnesstoday.info>, <trxsalestore.com>, <trxstorenow.info>, <trxstoretoday.info>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, and <trxworkouttoday.info> domain names to resolve to parked websites featuring competing and unrelated third-party links. Respondent’s <trxworkoutonline.info> domain name redirects Internet users to an unrelated third-party website located at <abcstitch.com>. Presumably Respondent collects click-through or other fees from both the third-party pay-per-click links and the redirection to another domain name. Therefore, the Panel finds that such use of the confusingly similar domain names is evidence of bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Lastly, the Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining 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). Thus, the Panel may find bad faith beyond the parameters of Policy ¶ 4(b). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant asserts that Respondent’s <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>, and <trxbuystore.info> domain names do not resolve to active websites. Under Policy ¶ 4(a)(iii), such inactive use has been found to be evidence of bad faith registration and use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). The Panel agrees with this precedent and finds accordingly.
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 <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>, <trxsuspensionsale.info>, <trxworkoutnow.info>, <trxworkoutonline.info>, <trxworkoutshop.info>, <trxworkoutstore.info>, <trxworkouttoday.info>, and <workoutsuspension.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 13, 2012
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