WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fitness International, LLC v. Brandon Daniels
Case No. D2014-1460
1. The Parties
Complainant is Fitness International, LLC of Irvine, California, United States of America, represented by Neal & McDevitt, LLC, United States.
Respondent is Brandon Daniels of West Hollywood, California, United States.
2. The Domain Name and Registrar
The disputed domain name is <la-fitnessgym.com>, which is registered with GoDaddy.com, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on August 25, 2014. On August 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On August 26, 2014, the Registrar transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant, providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 22, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on September 29, 2014. 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
Complainant provides health club services in the United States. It owns several United States federal trademark registrations for the mark LA FITNESS for those services, the earliest of which was registered in 1993.
Respondent acquired the domain name in March 2014. The domain name was used with web pages that contained general articles on fitness along with links and content associated with other social media outlets, such as “Facebook” and “YouTube” and invitations to follow on an array of social media platforms, such as “Facebook”, “Google plus”, “Twitter”, “LinkedIn”, “Pinterest”, etc. Respondent did not respond to an April 2014 cease and desist letter sent by Complainant’s in-house counsel. The domain name is currently parked.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant owns numerous United States federal trademark registerations for the mark LA FITNESS used for health club services. Complainant also owns a number of “lafitness” domain names, including those consisting of “lafitness” followed by such terms as “bootcamp”, “healthclubs”, and “programs”.
The domain name is confusingly similar to Complainant’s mark because it includes the entire mark LA FITNESS. Use of the term “gym” at the end of the name does not eliminate the confusing similarity because the dominant element is Complainant’s mark.
2. Rights or Legitimate Interests
Respondent has no rights or legitimate interests with respect to the domain name at issue.
Respondent is not listed as an owner of any United States trademark containing a formative of the term “lafitness”.
There is no evidence that Respondent, as an individual, business or other organization, has been commonly known by the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name.
Complainant has not authorized, licensed, or permitted Respondent to register or use the domain name or its LA FITNESS marks.
3. Registered and Used in Bad Faith
Complainant’s LA FITNESS mark is well-known in connection with health club services due to its extensive advertising and promotion.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
Respondent is familiar with Complainant and its well-known trademarks. There are numerous references to health and fitness items on the website associated with the domain name. Further, the address listing on the website is the address of a “Crunch” gym rather than a facility owned by Respondent. Respondent is clearly providing fraudulent information on the website.
Given the numerous “lafitness” domain names owned by Complainant, it is clear that Respondent went to considerable effort to register a variation that had not already been registered by Complainant.
Based on these facts, Respondent registered and is using the domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to the domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect to it; and
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the mark LA FITNESS by virtue of the evidence of its United States federal trademark registrations.
The domain name is not identical to Complainant’s mark. Instead, it consists of a hyphenated form of Complainant’s mark followed by the term “gym”, followed by the generic Top-Level domain “.com”.
The Panel is of the view that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the domain name incorporates the mark in its entirety. The addition of the hyphen is minor and the addition of “gym” serves a generic or descriptive function that, in the Panel’s view, does nothing to distinguish the domain name from Complainant’s LA FITNESS marks, and is closely related to the health club services that Complainant offers. Indeed, in the Panel’s view, the term reinforces the preceding term “la-fitness” as the dominant part of the domain name and seems to emphasizes its function as a trademark.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy: It does not appear that Respondent is commonly known by the domain name. Respondent is an individual named Brandon Daniels and there is at least some evidence that the business at the address associated with the domain name is a competing gym. Respondent is not making a fair use of the domain name. Complainant’s evidence that Respondent’s use is not a noncommercial use is somewhat thin; the printed webpages related to the domain name do not appear to offer any goods or services for sale and instead contain blog-like posts on general fitness topics. On balance, however, in light of Complainant’s rights, which date back many years, the Panel finds that Complainant has met its burden of making a prima facie showing that the use of the domain name is not a legitimate one. Respondent chose not to submit any evidence or make any argument to the contrary.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its LA FITNESS marks long predate the registration of the domain name. The content of the website associated with the domain name suggests that Respondent knew of Complainant and its mark and adopted the domain name with Complainant in mind. Further, the address associated with the domain name appears to be the address of a competing gym. Under the facts and circumstances presented here, including Respondent’s failure to respond, the Panel concludes that Respondent registered and is using the domain name in bad faith.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <la-fitnessgym.com> be transferred to Complainant.
Debra J. Stanek
Date: October 13, 2014