WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F45 Training Pty Ltd, Functional 45 Training Limited, F 45 Training Asia Private Limited, F45 Training Inc. and F45 Training Canada Limited v. Oleksandr Shapoval
Case No. D2017-1592
1. The Parties
The Complainants are F45 Training Pty Ltd of Paddington, New South Wales, Australia, Functional 45 Training Limited of Bray, Ireland, F 45 Training Asia Private Limited of Singapore, Singapore, F45 Training Inc. of Manhattan Beach, California, United States of America ("United States"), F45 Training Canada Limited of Saint John, Canada, represented by Marshall IP Pty Ltd t/a Marshall Legal, Australia.
The Respondent is Oleksandr Shapoval of Kharkov, Ukraine.
2. The Domain Name and Registrar
The disputed domain name, <f45.com> (the "Domain Name"), is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 16, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 15, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants are all associated companies, being under the control of the first above-named Complainant, F45 Training Pty Ltd., or under common control with that company. The additional Complainants have been added as complainants, because they all own relevant trade mark rights in respect of the F45 trade mark.
However, for the purposes of this decision the additional Complainants add nothing and since it is the first above-named Complainant, which has been put forward as the recipient of the Domain Name in the event that this Complaint succeeds, the Panel proceeds as if the first above-named Complainant is the sole complainant.
The unchallenged evidence of the Complainant is that its business commenced in Australia in or around 2012 and that the company was incorporated in Australia on March 7, 2013. Its business comprises the operation (and licensing of others to operate) fitness studios in Australia and internationally under the name "f45". With its associated companies the Complainant now has a portfolio of nearly 700 fitness studios spread around Australia, New Zealand, the United States, Mexico, Canada, the United Kingdom of Great Britain and Northern Ireland ("UK"), in mainland Europe, the United Arab Emirates, India, Malaysia, the Philippines and Hong Kong, China.
The Complainant is the registered proprietor of several trade mark registrations of or including the F45 name including Australian Registration No. 1647083, dated September 16, 2014 F45 in class 25 for apparel (clothing, footwear, headgear).
The Complainant operates a website connected to, amongst others,the domain names <f45training.com> and <f45training.com.au>.
It is not known precisely when the Respondent acquired the Domain Name. According to a DomainTools.com report submitted in evidence by the Complainant it appears that the Domain Name was first registered in March 4,1998, and that from at least 2004 until September 2015 it was used for a website of a United States-based photographer. It was then held in the name of a privacy service until a date between March 20, 2017 and May 20, 2017, when it first appeared in the name of the Respondent.
In the absence of any response from the Respondent, the Panel accepts it as more likely than not that the Respondent acquired the Domain Name on a date between March 20, 2017 and May 20, 2017.
No active use appears to have been made of the Domain Name by the Respondent.
On May 19, 2017 the Complainant emailed the Respondent explaining that it was the trade mark owner and enquiring whether the Domain Name was for sale. On May 21, 2017 the Respondent replied saying: "I can sell domain name F45.COM for $15000." The Complainant followed up on May 22, 2017 saying "Can we negotiate the price and lower to $12500?". If there was a response from the Respondent, it is not in the case papers.
On May 31, 2017 the Complainant emailed again saying "Hope you are well. Just following up. Have you received escrow request to accept a deal for $15000 (as per your conditions)? If you have any questions we can schedule a call and discuss."
On June 13, 2017 the Complainant emailed again saying "Have you received my last email? Please, let me know asap if you are keen to hand over the domain for $15000."
The Respondent responded on June 15, 2017 with a long email explaining a difficulty he was having accessing his account with the Registrar, who was not communicating with him. "At this moment I do not know what to do and how to get back access to my domains." He went on to say that he understood that he needed to instruct a lawyer to help him resolve the issue, but did not have enough money to do so. He then suggested that the Complainant could bring a complaint under the Policy; he would not participate in the process; and on winning the case and obtaining transfer of the Domain Name, the Complainant could pay him $10,000. His email concluded as follows:
"I know all this may look weird, but that's all I can offer so far, until I return access to my account at Name.com. I ready to provide my documents (ID, passport), sign any contracts and I will accept any help in this matter. If you have any other ideas on this topic or questions please ask, I will reply within 24 hours. P.S. Again, please forgive me for the long response and for the level of my English."
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing its decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name".
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant's F45 registered trade mark and the ".com" generic Top Level Domain ("gTLD") identifier. It being permissible for panels to ignore the gTLD identifier where, as here, it serves no purpose other than the technical one, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant has gone to some lengths to try and find out whether or not the Respondent has any rights in respect of the Domain Name, but has not been able to find evidence of any such rights. No use, commercial or otherwise, has been made of the Domain Name by the Respondent and the Respondent is not commonly known by the Domain Name. The Respondent has a case to answer.
On the evidence before the Panel, the Respondent is a domainer, albeit on a very small scale appearing to hold only 15 domain names and while it is certainly possible for domainers to establish rights or legitimate interests in respect of their domain names, to do so they need to produce some explanation for their holding of those names and their plans for them.
Here there appears to have been little or no substantive use of those names and no use at all of the Domain Name. There is nothing in the case papers to indicate for what purpose the Respondent acquired the Domain Name, which, as indicated, is identical to the Complainant's F45 registered trade mark. In the absence of any explanation from the Respondent the Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant cites from section 3.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") contending that the Domain Name should be considered as having been registered in bad faith in light of (i) "the respondent's likely knowledge of the complainant's rights"; (ii) the distinctiveness of the complainant's mark; (iii) a pattern of abusive registrations by the respondent."
Respondent's likely knowledge of the Complainant's rights.
In support of the claim that the Respondent is likely to have had knowledge of the Complainant's trade mark the Complainant states: "Given the rapid expansion of the Complainant's franchise throughout the world (with at least 698 franchise locations in 13 countries including the USA and UK) the Respondent cannot credibly claim that he was unaware of the Complainants' pre-existing rights in the F45 Brand and the Domain Name."
None of those locations is in the Ukraine and only two are in mainland Europe. Despite the fact that there are 25 franchise locations in the UK where the Panel resides, the Panel was unaware of the Complainant's brand prior to receiving the papers in this case. The Panel is of the view that the Complainant has overstated the extent of the fame of its brand. It may well be that among those interested in fitness centres the Complainant is well-known in those countries where it has a substantial number of them, but the Panel has nothing before him entitling him to conclude that the Respondent must have been aware of the Complainant when acquiring the Domain Name.
The Complainant points out, probably correctly, that if the Respondent had carried out a search engine search against "f45", the Complainant would feature in the results. Certainly it does in the UK and while the Panel has no idea what the result would have been if carried out from the Ukraine, the Panel is prepared to assume in the Complainant's favour that the Complainant would have featured in the results. The Complainant continues:
"The fact that the Respondent chose to register a domain name on a top-level domain (.com), the pre-eminent commercial domain in the world, and not his local ".ua" domain for the Ukraine further adds to the overwhelming inference that the Respondent registered the Domain Name in bad faith and for the predominant purpose of attracting an offer of purchase from the Complainant[s] which have a legitimate right to the Domain Name."
The Domain Name was a pre-existing domain name when the Respondent acquired it from the previous owner, so this is not a case where the Respondent created the domain name in the ".com" gTLD. The ".com" gTLD is certainly "the pre-eminent commercial domain in the world", but arguing that that choice of domain leads to an overwhelming inference of bad faith is, in the view of the Panel, way over the top.
When the Respondent acquired the Domain Name he is likely to have been aware that a previous owner, a photographer, had used it legitimately for several years, "f45" being a reference to a feature on the camera. Why should it be assumed that the Respondent acquired the Domain Name to target the Complainant? Is "f45" necessarily a reference to the Complainant? The Panel is not satisfied that it is. There must be innumerable uses to which the name"f45" could be put without infringing the Complainant's trade mark rights.
The Complainant refers to the representations and warranties given to the Registrar by the Respondent to the effect that "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party." (Paragraph 2 of the Policy). For the Complainant to pray in aid this provision the Complainant has to be able to satisfy the Panel that the Domain Name is not likely to be used for a non-infringing purpose. Where a respondent has made no use at all of the disputed domain name, this is not always easy and, as indicated above, there are, in the view of the Panel, any number of legitimate uses that could be made of the Domain Name without violating the Complainant's rights.
Distinctiveness of the Complainant's mark
The Panel is ready to accept that in some countries (particularly those where the Complainant has fitness centres) the Complainant's mark will be distinctive of fitness centres, but the distinctiveness is likely to be relatively narrow in extent. Is the distinctiveness of the Complainant's trade mark broad enough to cover the use of the name by a photographer, for example, or for a pharmaceutical company? The Panel very much doubts it. On the other hand, there are some trade marks, which are so very well-known internationally that almost any unauthorized commercial use of them is likely to be risky. COCA-COLA is one such mark. In the view of the Panel, the Complainant's F45 trade mark is far from being in that category.
Pattern of abusive registrations
The Complainant points to the other domain names owned by the Respondent and argues that they support the contention that the Respondent acquired the Domain Name for the purpose of selling it to the Complainant at a profit.
The Complainant has identified a total of 15 domain names held in the name of the Respondent. Of those 15:
- 7 lead nowhere with a webpage reading "This site can't be reached". They are <alexandr.net>, <ayti-lizynh.com.ua>, <datatect.com>, <domainfeature.com>, <funkup.com>, <tvmusic.com> and the Domain Name.
- 3 others, <bbiz.com>, <jmbi.com> and <wiyc.com> lead to parking pages featuring "Related Links" and a statement at the bottom reading "This domain may be for sale."
- Another, <posting.info>, resolves to pages offering Poster website development software, but featuring no address. It appears to be an inactive site.
- Another, <abcmusic.com>, resolves to a page featuring various links including music download links. A visitor to the site in the UK is taken to some UK-related sites, such as that of a London singing teacher. The Complainant relies upon the fact that ABC is the acronym for the Australian public broadcaster, Australian Broadcasting Corporation, which amongst other things broadcasts music.
- Another, <rmedicare.com>, resolves to pages of a United States-based healthcare clinic which uses the name Foundation for Medical Education and Research, a name of the Mayo Clinic, which on the evidence of the Complainant has a facility nearby. The Complainant relies upon the fact that "Medicare" is the name of Australia's public health insurance scheme.
- Another, <terrastone.com>, resolves to a Terrastone website ("WELCOME TO THE TERRASTONE ONLINE TECHNICAL MANUAL") showing offices in the United States, Australia, the Middle East and Mexico. The Complainant produces evidence to show that the Australian company identified at the Australian office address was de-registered in 2007.
- Another, <themezzz.com>, resolves to a website concerned so-called 'Drupal' themes with content management software used for building websites
Having recited the above domain names the Complaint continues:
"These various domain name registrations demonstrate a pattern of registration of domain names for sale and in some instances evidence exists of an attempt to divert Internet traffic away from legitimate brand owners. There is also a distinct Australian nexus to this conduct by the Respondent, which is relevant in circumstances where Australia is the place the F45 Brand was created, first launched and developed."
In fact, 7 of them (including the Domain Name) lead nowhere. The next 3, a potential pattern in the sense that all resolve to a page indicating that they may be for sale is not a pattern which (a) includes the Domain Name and (b) appears to target any identified trade mark owners. They comprise acronyms, but the Panel could find nothing in the "Related Links" to indicate that those links were trading off third party businesses using those acronyms. As to the remaining 5, none are obviously Australian-related, although 3 feature names, which are or have been used in Australia. There are no doubt ABC Musics in a number of different countries. To the Panel's knowledge there is an ABC Music in London having no connection with the Australian Broadcasting Corporation. The <rmedicare.com> site appears to be a United States-directed site. The fact that Medicare is also used in Australia is likely to be coincidental. The fact that this website may be infringing the rights of the Mayo Clinic is not, of itself, of any assistance to the Complainant in the absence of any information as to the circumstances under which that domain name was acquired by the Respondent. The Australian address on the "www.terrastone.com" website is the address of a company which according to the Complainant was de-registered in 2007, 10 years before the Domain Name was acquired by the Respondent.
Whether the dates of these 15 domain names might have helped to indicate a pattern, the Panel does not know as no information of that kind was supplied with the Complaint.
The Panel is not satisfied that the Complainant's evidence is sufficient to indicate that the Domain Name is part of a pattern of any kind whether targeting Australian businesses or of domain names for sale to third party trade mark owners.
However, that is not the end of the matter as the Respondent indicated in correspondence with the Complainant that he was prepared to sell the Domain Name to the Complainant for a five figure sum. The correspondence is set out in some detail in section 4 above. Is this sufficient to indicate a bad faith intention at the time of acquisition of the Domain Name to sell the Domain Name at a significant profit within the meaning of paragraph 4(b)(i) of the Policy?
It is, in the view of the Panel, a most unusual correspondence and the Panel would have benefitted from an explanation from the Complainant as to the Complainant's approach to that correspondence. The Complaint deals with it as follows:
On 19 May 2017, Complainants sent an email to the email address listed in the WhoIs details for the Domain Name, […]@gmail.com, enquiring if the "domain is for sale" and "If yes, please reply me with price and conditions asap".
Within 2 days the Respondent replied "I can sell domain F45.COM for $15,000". The correspondence with the Respondent and the Lead Complainant is attached as Annex 16 and represents the entire communication between the Lead Complainant and the Respondent to date.
There was no discussion or claim to legitimate use or ownership of the Domain Name by the Respondent. The response of the Respondent showed a clear, unequivocal and single purpose, and that was to agree to sell the Domain Name, the only issue being how much the Lead Complainant would agree to pay.
We do not know how much the Respondent was charged for the registration and if he has any other out of pocket expenses directly related to the Domain Name. However, given that there has been no apparent preparations to use the Domain Name and there is seemingly no offering of goods or services by the Respondent or any other steps taken to commercialize any goods or services in relation to, or by reference to, the Domain Name, there exists a strong basis for the inference that US$15,000 is well in excess of the Respondents out of pocket expenses directly related to the Domain Name.
The correspondence starts in perfectly orthodox fashion with an enquiry from the Complainant as to whether the Domain Name is for sale. The response comes back to the effect that it is for sale for $15,000, a large sum, but perhaps not outrageous for a 3-digit domain name and particularly where the putative purchaser has disclosed that it is the proprietor of an F45 trade mark i.e. a purchaser for whom the Domain Name has a special value.
If the Complainant regarded the Respondent as a cybersquatter at that stage, one might have expected the Complaint to have been launched on receipt of that response. No, the Complainant then went back with an offer of $12,500 for the Domain Name, which in the Panel's experience may perhaps be a not unreasonable sum for a 3-digit domain name, but nonetheless an astonishing sum to offer a cybersquatter. It did not end there. On not hearing from the Respondent for some days, the Complainant reverted to the sum of $15,000 originally nominated by the Respondent.
In the view of the Panel this is not the behaviour of a trade mark owner believing that it is dealing with a cybersquatter.
The Respondent comes back with a most unusual suggestion. He apologises for the delay and says that his account with the Registrar has been locked. He cannot get any answers from the Registrar. He is stymied. He suggests that the Complainant launch a complaint under the UDRP, to which he will not respond and on transfer being ordered he will accept $10,000 from the Complainant. If the Complainant responded to that suggestion, it is not included in the annexes to the Complaint.
The Complainant then launches this Complaint. Is it a response to the Respondent's suggestion or entirely independent of that suggestion? It is an obvious question, but the Complaint is silent on the matter. The Panel simply does not know.
In the above quoted passage from the Complaint the Complainant comments in relation to the email communications between the parties: "There was no discussion or claim to legitimate use or ownership of the Domain Name by the Respondent." Equally, at no stage was there ever any allegation by the Complainant that the Respondent's use / ownership of the Domain Name was not legitimate and, in the view of the Panel, the Complainant's approach to the matter gave the Respondent no reason to believe that an explanation was called for. Indeed, in indicating that he would not respond to the Complaint, the Respondent was making it clear that the Complainant would have a clear run. He would not be raising any defences that may have been open to him.
The Complainant has failed to satisfy the Panel that the Domain Name has been registered and is being used in bad faith.
E. Reverse Domain Name Hijacking ("RDNH")
"Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. At the same time, the mere fact of a respondent default would not by itself preclude an RDNH finding as this ultimately turns on the complainant's conduct. In either event, following some early cases to the contrary, panels have more recently clarified that, for an RDNH finding to be made, it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH."
The Panel is faced with two possible scenarios. One is that the Complaint is a complaint independent of any arrangement arrived at with the Respondent. The other is that the Complainant is in effect following the Respondent's "suggested" course of action (see above).
If the latter is the case (and while the Panel is in no position to make a finding to that effect), while this proceeding may be a misguided use of the Policy, it is not in an attempt to deprive the Respondent of a domain name, which he seems to be willing to transfer, albeit on terms (i.e. subsequent payment to him of $10,000). If on the other hand it is a straightforward complaint filed independently of the Respondent's suggestion, it is a complaint, which failed under the third element and while there were weaknesses to it, the Panel is not in a position to conclude that it was filed in bad faith; it is possible that the evidence obtained subsequent to the email exchanges with the Respondent persuaded the Complainant that it had a reasonable chance of succeeding in the Complaint.
The Panel repeats that it would have been helpful to have had some explanation for the Complainant's approach to the email correspondence with the Respondent.
For the foregoing reasons, the Complaint is denied.
Date: September 23, 2017