WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fitness International, LLC v. Saad Rasheed / WhoisGuard Protected/WhoisGuard, Inc.
Case No. D2016-2303
1. The Parties
The Complainant is Fitness International, LLC of Irvine, California, United States of America, represented by Neal & McDevitt, United States of America.
The Respondents are Saad Rasheed of Khanewal, Punjab, Pakistan / WhoisGuard Protected/WhoisGuard, Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <lafitnesshours.com> (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 17, 2016
The Center verified that the Complaint together with the amendment to 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 November 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 19, 2016. 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 Complainant is a company incorporated under the laws of California. It does business under the name "LA Fitness".
The Complainant is the owner of various trademark registrations for the words LA FITNESS or L.A. FITNESS, for example U.S. Registered Trademark No. 1,806,464, for L.A. FITNESS, which issued on November 23, 1993 and U.S. Registered Trademark. No. 2,326,358 for LA FITNESS which issued on March 7, 2000. These trademarks are referred to in this decision as the LA FITNESS trademarks.
The Complainant also incorporates the LA FITNESS trademarks as well as variations thereof in the domain names and website content for its websites located at for example <lafitness.com>.
The Complainant has since 1988 provided health club and associated services under and by reference to the LA FITNESS trademark. It claims to be one of the leading providers of such services in the United States of America.
On July 2, 2016 the Respondents registered the Disputed Domain Name.
The Disputed Domain Name is used in relation to a webpage where links to various other health related products and services are provided. The website in question contains material which copies or imitates the look and feel of the Complainant's own website.
5. Parties' Contentions
The Complainant's case can be summarised as follows.
a) The Disputed Domain Name is confusingly similar to the LA FITNESS trademark as (i) it incorporates in their entirety Complainant's well-known and distinctive LA FITNESS trademark, and (ii) the combination thereof with generic terminology – the word "hours" - is insufficient to distinguish the Disputed Domain Name from the Complainant's trademark.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondents use the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant's LA FITNESS trademark in order to raise advertising revenue through the use of sponsored or click-through links and/or to sell products or services. It does so in a manner which suggest it is a genuine website operated by the Complainant and it is clearly designed to lure in people who are looking for information about the opening hours of the Complainant's health clubs.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (WhoisGuard Protected/WhoisGuard Inc.) appears to be a privacy or proxy registration service while the other Respondent, (Saad Rasheed) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in WIPO Overview 2.0 namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents failure to file any Response. While the Respondents' failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents' default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondents have no rights or legitimate interests in the Disputed Domain Name;
iii. the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the words "LA Fitness" or "L.A. Fitness".
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademarks. The Disputed Domain Name, as registered by the Respondents, incorporates the LA FITNESS trademark in its entirety. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the trivial differences in punctuation, and the addition of the generic word "hours". This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant's LA FITNESS trademark. The Panel agrees with the Complainant that the word "hours" simply suggests a connection with the Complainant in terms of being likely to be a source of information about the opening times of the Complainant's health clubs.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
The .com top-level domain is generally to be disregarded when considering identity between the Disputed Domain Name and the Complainant's trademark – see for example Herbalife International, Inc. v Herbalife.net, WIPO Case No. D2002-2343.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
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 organisation) 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the LA FITNESS trademark. The Complainant has prior rights in the LA FITNESS trademark which precede the Respondents' registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. The Panel infers that none exists. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the LA FITNESS trade mark, and the confusingly similar nature of the Disputed Domain Name to the LA FITNESS trade mark, the content of the website linked to the Disputed Domain Name which clearly is intended to give the impression it is a website operated by the Complainant, and the lack of any explanation from the Respondents as to why they registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondents selected the Disputed Domain Name independently and without knowledge of the Complainant or its services. The website operated by the Respondents at the Disputed Domain Name is clearly a commercial venture thorough which the Respondents seek to make money by in substance impersonating the Complainant. The Respondents' intention is clearly that actual or potential customers of the Complainant, seeking information about its opening times, will find their website and assume it is operated by the Complainant. The website operated by the Respondents at the Disputed Domain Name is clearly promoting a business which supplies health related products or services and the Panel has no doubt the Respondents were by use of the Disputed Domain Name seeking to suggest they had a connection with the Complainant in the course of trade, by suggesting that the associated website was part of the Complainant's own business, or was authorised by the Complainant. It is neither. As such the Respondents' behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <lafitnesshours.com> be transferred to the Complainant.
Nick J. Gardner
Date: January 2, 2017