WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
24 Hour Fitness USA, Inc. v. Legal Services
Case No. DBIZ2002-00190
1. The Parties
The Complainant in this administrative proceeding is 24 Hour Fitness USA, Inc., formerly 24 Hour Fitness, Inc., formerly H. E. C. Investments, Inc., a California corporation, having a principal place of business at 5020 Franklin Drive, Pleasanton, CA 94588, United States of America.
The Registrant of the domain name and Respondent in this administrative proceeding is Legal Services whose address is 2201 Fern Street, 2C Apt. A, New Orleans, Louisiana 70118, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <24hourfitness.biz> which is registered with Registrar Intercosmos Media Group, Inc., doing business as Directnic.com, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
Complainant has standing to file a Start-up Trademark Opposition Policy ("STOP") Complaint, as it timely filed the required intellectual property (IP) claim form with the Registry Operator, NeuLevel. Complainant initiated this proceeding under the STOP by filing a Complaint which was received by the WIPO Arbitration and Mediation Center ("WIPO") on April 27, 2002. After notifying Complainant of a deficiency and receiving a modified Complaint, WIPO verified that the Complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules"). Complainant paid the requisite filing fees.
On June 10, 2002, WIPO transmitted notification of the Complaint and commencement of the proceeding to Respondent setting forth a deadline of June 30, 2002, for the Response. A Notification of Respondent Default was sent by WIPO to Respondent and Complainant on July 11, 2002. No Response or other document has been received by WIPO or the Panel from the Respondent since the Notification of Default. This Panel, therefore, finds that Respondent failed to submit a Response. As a result, Respondent is in default and, under Rules 5 and 14, this Panel shall "proceed to a decision on the Complaint." Accordingly, this Panel shall proceed to a decision based on the allegations in the Complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.
On July 24, 2002, WIPO sent to the parties a Notification of Appointment of Administrative Panel in which Roderick M. Thompson was appointed to serve as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to WIPO. The Projected Decision Date, as determined by WIPO and transmitted to the parties on July 24, 2002, is August 7, 2002.
4. Factual Background
Complainant provided evidence of U.S. registrations for the mark 24 HOUR FITNESS in connection with fitness related merchandise and health club services. Complainant has used the 24 HOUR FITNESS mark in connection with health club services and fitness related merchandise continuously since 1996.
As of the commencement of this proceeding, Respondent had made no use of the disputed domain name in connection with an active website.
5. Partiesí Contentions
Complainant alleges that the disputed domain name is identical to the 24 HOUR FITNESS mark in which it has rights.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, this conclusion is suggested by Respondentís name: "Legal Services." Additionally, based on an investigation conducted by Complainant, Complainant claims that Legal Services is a fictitious identity adopted for the sole purpose of registering the disputed domain name. According to the investigation report there is no business by the name of Legal Services at the address listed in the .biz Whois database. Further, there is no business by the name of Legal Services at the address provided in the registration information. The only business listing found at that address is a business called "Ingridís Beauty Salon." Likewise, the telephone number listed in the .biz Whois database is the number for an individual named "Sigmund Solares" who claims that he is not affiliated with Respondent. In fact, according to Complainant, Sigmund Solares is a principal in and primary contact for the Registrar of Respondentís domain name. Based on the above, Complainant asserts that Respondent has taken active steps to conceal its true identity and provided false contact details in connection with its domain name registration. Complainant concludes that the use of false and misleading contact information suggests that the domain name was registered for improper purposes.
Complainant also asserts that the fact that its trademark has a strong reputation and is widely known is further support of Respondentís bad faith. Finally, Complainant notes that the administrative, billing and technical contacts for the registration is Joseph Tambert whose e-mail address is listed as "email@example.com". Complainant states that the website at <homeville.com> is a pornographic website. Thus, Complainant claims that a risk exists that Complainantís valuable and well-known trademark and service mark will be associated with a pornographic site and will be tarnished as a result.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
The STOP is the set of rules applying to the resolution of domain name disputes involving IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz generic top level domain ("gTLD"), of the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The STOP is similar, but not identical to, to the Uniform Domain Name Dispute Resolution Policy ("UDRP") that has been applied by Administrative Panels in determining numerous disputes.
Pursuant to paragraph 4(a) of the STOP, in order to establish the right to transfer of the disputed domain name from Respondents, Complainant must demonstrate each of the following:
(i) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
B. Application of Paragraph 4(a) to the Facts
I. Identical to Trademark
Complainant has submitted evidence of U.S. trademark rights in the mark 24 HOUR FITNESS. The only difference between the mark and the domain name is the elimination of spaces and the addition of the .biz gTLD. The addition of the .biz gTLD is irrelevant in determining whether a domain name and mark are identical. A different finding would necessitate that only holders of trademarks that include .biz in the mark would be able to successfully avail themselves of the STOP. Likewise, because a functional domain name cannot have spaces, pure identity would require that the STOP only successfully apply to marks consisting of a single word. Taking into account the technical requirements of the domain name system, it is reasonable to interpret the STOP so that a domain name is considered identical to a mark where the only difference between the two is the removal of spaces between words in a multiple word mark and the addition of the gTLD. The Panel finds, therefore, that the <24hourfitness.biz> domain name is identical to the 24 HOUR FITNESS mark in which Complainant has rights.
II. Respondentís Rights and Legitimate Interests in the Domain Name
Complainant has alleged that Respondent does not have any rights or legitimate interest in the domain name. There is no evidence of any legitimate rationale for Respondentís inclusion of the 24 HOUR FITNESS mark in a domain name. Respondent does not appear to be commonly known by an associated name and does not appear to use an associated name in connection with an identifiable business. Respondent is in default and has failed to provide any evidence of rights or legitimate interest in the name. Thus the Panel finds that Respondent does not have any right or legitimate interest in the domain name.
III. Registration or use in bad faith
Paragraph 4(a)(iii) of the STOP requires that the Complainant show that the domain name has been registered or used in bad faith.
Complainant indicates that Respondent should have known about Complainantís rights in the mark since the mark would have shown up in any basic trademark search. In addition, Respondent should have had actual knowledge of Complainantís mark prior to registering the domain name even without conducting any trademark searches. It is the STOP of NeuLevel that a domain name applicant receive a conflict notice in any situation where there is an IP claimant as part of the "Round Robin" process. After receiving such notice, the domain name registrant (Respondent here) must decide whether to proceed with the application despite having been notified of a third partyís intellectual property rights. If the applicant does nothing, the application is deemed cancelled. Thus, Respondent presumably had actual notice of Complainantís trademark rights prior to electing to proceed with the domain name registration. Despite this knowledge, Respondent proceeded with the registration and has not provided any explanation or justification regarding its decision to do so.
Under section 14 of the STOP, where Respondent is in default, the Panel shall draw such inferences as are appropriate from the materials supplied to WIPO. Complainant has shown that Respondent registered a well-known trademark as a domain name and used a fictitious business name and false and misleading contact information in order to hide its true identity. Complainant also notes that the billing, administrative and technical contact for the domain name is Joseph Tambert whose e-mail address is "firstname.lastname@example.org" and that the website at <homeville.com> is pornographic. Complainant did not provide any documentation regarding the nature of the website and the Panel notes that the <homeville.com> domain name no longer leads to an active website and instead merely states that it is "under construction," with a link to the DirectNIC, identified as the registrar for <homeville.com>. However, this Panel finds that even without considering the possible association of the domain name with pornography, Complainant has made sufficient showing that there is no reason other than a bad faith desire to benefit from the well-known trademark held by Complainant for Respondent to have registered the name and provided false contact information. In the absence of any explanation from Respondent, this Panel is directed by Rule 14 to "proceed to a decision on the Complaint." Thus this Panel accepts Complainantís allegation of bad faith.
This Panel decides that Complainant has shown that Respondent has no legitimate interest in the domain name, that the domain name was registered in bad faith, and that the domain name is identical to a trademark in which Complainant has rights. Accordingly, pursuant to paragraph 4(i) of the STOP, this Panel requires that the registration of the domain name <24hourfitness.biz> be transferred to Complainant.
Roderick M. Thompson
Dated: August 7, 2002