Fitness International, LLC v. JOSEPH DARPA / DARPA
Claim Number: FA1909001862097
Complainant is Fitness International, LLC (“Complainant”), represented by Kristin Kosinski of Cislo & Thomas LLP, California, USA. Respondent is JOSEPH DARPA / DARPA (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2019; the Forum received payment on September 13, 2019.
On September 16, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2019 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@lafitnessbricknj.com, postmaster@lafitnessnewjersey.com, postmaster@lafitnessnj.com, postmaster@lafitnessbrick.com. Also on September 20, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides fitness experiences through its state of the art equipment and cardio centers, group fitness classes, and specialty classes such as yoga, cycling and pilates. Complainant has rights in the LA FITNESS through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). Respondent’s <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names are confusingly similar to Complainant’s LA FITNESS mark as they incorporate the mark in its entirety, along with geographic terms “bricknj,” “newjersey,” “nj,” or “brick” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names. Respondent is not licensed or authorized to use Complainant’s LA FITNESS mark and is not commonly known by any of the disputed domain names. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain names resolve to websites that are blocked by a security filer and display information indicating a potential security risk.
Respondent registered and uses the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, endorsement or affiliation of Respondent’s website. Respondent also failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names were all registered on October 5, 2018.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the LA FITNESS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,806,464, registered Nov. 23, 1993). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the LA FITNESS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names are confusingly similar to the LA FITNESS mark, as the names incorporate the mark in its entirety, along with the geographic terms “bricknj,” “newjersey,” “nj,” or “brick”. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.) The Panel therefore determines that the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names are confusingly similar to the LA FITNESS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the LA FITNESS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. The WHOIS information of record identifies the registrant of the at-issue domain name as “JOSEPH DARPA / DARPA,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names.
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain names resolve to websites that are blocked by a security filter and display information indicating a potential security risk. Use of a disputed domain name that distributes malware is not a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant has provided screenshots of the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names resolving webpage that shows the webpage is not secure and that attackers could gather personal information. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, endorsement or affiliation of Respondent’s website. Use of a disputed domain name to disrupt a complainant’s business for commercial gain may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent uses the disputed domain names in connection with Complainant’s LA FITNESS mark to confuse internet users and potentially infect users’ computers with malware. Complainant further argues that this confusion is further increased by referencing geographic locations where Complainant has its fitness clubs. The Panel agrees, and finds that Respondent used the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <lafitnessbricknj.com>, <lafitnessnewjersey.com>, <lafitnessnj.com>, and <lafitnessbrick.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 21, 2019
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