RCB Fitness, LLC v. ANDY WOOD / TOWER ONE LTD
Claim Number: FA1610001698789
Complainant is RCB Fitness, LLC (“Complainant”), represented by Eric J. Wittenberg, Ohio, United States. Respondent is ANDY WOOD / TOWER ONE LTD (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iamathletics.com>, registered with eNom, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2016; the Forum received payment on October 19, 2016.
On October 19, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <iamathletics.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2016 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@iamathletics.com. Also on October 20, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on October 20, 2016.
On October 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds two trademark registrations for the I AM ATHLETICS mark with the United States Patent and Trademark Office (“USPTO”), which Complainant contends demonstrates its rights in the mark. Complainant asserts that the <iamathletics.com> domain name is identical to Complainant’s mark because it contains the I AM ATHLETICS mark.
According to Complainant, Respondent has no rights or legitimate interests in the domain name because Respondent holds no trademark rights in the United States or elsewhere and the I AM ATHLETICS mark has not been licensed to it.
Complainant contends that Respondent registered and is using the domain name in bad faith because Respondent has been advised the domain name infringes Complainant’s trademarks, yet Respondent has refused to cease and desist from using the domain name. Complainant further argues bad faith is evident by the fact that Complainant offered to purchase the domain name, and Respondent refused.
B. Respondent
Respondent claims it registered the domain name on July 1, 2015, approximately four weeks before Complainant filed its trademark applications with the USPTO. Consequently, Respondent has the first use of the domain name.
Respondent states that it works with TV broadcast organizations. It contends that it registered the domain name along with another sports-related domain name, <iambaseball.com>, with the intent to use the two domain names as social community platforms for sports.
According to Respondent, Rudy DeDemonicus approached Respondent by e-mail on September 6, 2016 with an offer to purchase the domain name for $400. Respondent declined this offer, suspecting it was a scam. On September 8, 2016, Mr. DeDemonicus identified his company as YRWorldwide.com, a domain brokering service, and on September 9, 2016, Respondent informed Mr. DeDemonicus that it would be open to selling the domain name, but for a significantly improved offer.
Respondent argues it has never received a cease and desist notification for the I AM ATHLETICS mark, and has never used the mark.
C. Additional Submissions
Respondent sent an e-mail to the Forum on October 20, 2016, which notes that Respondent purchased the domain name two weeks before Complainant’s company was incorporated.
Respondent registered the <iamathletics.com> domain name on July 1, 2015.
Complainant filed its trademark applications for the mark I AM ATHLETICS on July 22, 2015, and the marks were registered on June 28, 2016.
Complainant, or Complainant’s representative, offered to purchase the <iamathletics.com> domain name, and Respondent declined this offer.
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."
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 two trademark registrations for the I AM ATHLETICS mark with the USPTO. A complainant’s registration of a mark with the USPTO establishes the complainant’s rights in the mark under Policy ¶ 4(a)(i), even when a respondent lives or operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
A complainant’s rights date back to the filing date of the approved trademark application. See Thompson v. Zimmer, FA 190625 (Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). Therefore, the Panel finds that Complainant has established rights in the I AM ATHLETICS mark dating back to July 22, 2015.
Complainant argues that the <iamathletics.com> domain name is identical to Complainant’s mark because it contains precisely the I AM ATHLETICS mark. Although Respondent’s domain name eliminates the spaces between the words of Complainant’s mark and affixes the generic top-level domain (“gTLD”) “.com,” these changes do not serve to adequately distinguish a respondent’s domain name from a complainant’s mark per Policy ¶ 4(a)(i). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks). As such, the Panel concludes that Respondent’s domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) and finds that Complainant has met the first required element under the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant provides neither a specific explanation of how Respondent allegedly uses the domain name, nor evidence to support its assertion that Respondent’s use of the domain infringes the I AM ATHLETICS mark. Therefore, Complainant has failed to make out a prima facie case that Respondent lacks rights and legitimate interests in the domain name. Accordingly, the Panel finds that Complainant fails to meet the second required element under the policy.
In support of its assertions that Respondent registered and used the domain name in bad faith, Complainant argues that it offered to purchase the domain name, and Respondent refused. Respondent contends that while it refused Complainant’s initial offer, it expressed a willingness to sell the domain name for a significantly improved offer. A respondent’s rejection of a complainant’s nominal offer for the purchase of the domain name in lieu of greater consideration can indicate bad faith. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant). However, in light of the following considerations, the Panel finds this evidence insufficient to demonstrate bad faith in this instance.
Complainant contends that Respondent has refused to cease and desist from using the domain name and from infringing Complainant’s mark. However, Complainant has not provided any evidence to show that it sent Respondent a request to cease and desist, and Respondent denies that it received such a request. Therefore, Complainant’s allegation that Respondent has failed to comply with its demand to cease and desist does not support a finding of bad faith.
Respondent asserts that it registered the <iamathletics.com> domain name on July 1, 2015, which is consistent with information received from the domain name registrar. This date is several weeks before Complainant filed its trademark applications with the USPTO. Given this timeline, and because Complainant provides no evidence that it has common law rights in the I AM ATHLETICS mark, Respondent could not have registered the domain name in bad faith. See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common law rights in the mark were submitted to the panel). The Panel therefore finds that Complainant fails to meet the third required element under the policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <iamathletics.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: November 10, 2016
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