Generic Top Level Domain Name (gTLD) Decisions

DECISION

24 Hour Fitness USA, Inc. v. Advanced Directory Inc. NV

Claim Number: FA0308000187426

PARTIES

Complainant is 24 Hour Fitness USA, Inc., San Ramon, CA (“Complainant”) represented by P. Landon Moreland of Manatt Phelps & Phillips LLP. Respondent is Advanced Directory Inc. NV, Vleteren, Belgium (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <24hrfitness.com> registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Robert T. Pfeuffer, Senior District Judge as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2003; the Forum received a hard copy of the Complaint on August 20, 2003.

On August 20, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <24hrfitness.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 15, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@24hrfitness.com by e-mail.

A timely Response was received and determined to be complete on September 3, 2003.

On September 8, 2003, a timely and complete Additional Submission was received from Complainant.

On September 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge, as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it is well known under the name 24 HOUR FITNESS and that it owns a trademark registration with the United States Patent and Trademark Office for the 24 HOUR FITNESS mark under Reg. No. 2,130,895 registered on January 20, 1998, in relation to health club services.  It contends that Respondent’s use of the name <24hrfitness.com> as its domain name is confusingly similar to Complainant’s 24 HOUR FITNESS mark.  It is further contended by Complainant that Respondent has offered the domain name in dispute for sale on a commercial domain-name selling website.  It further asserts that Respondent has linked the <24hrfitness.com> domain name to an Internet service results website, which contains advertisements and links to Complainant’s competitors.  Complainant further contends that Respondent is not known by <24hrfitness.com> and that Respondent was not authorized by Complainant to use the 24 HOUR FITNESS mark.

B. Respondent

Respondent maintains that the <24hrfitness.com> domain name was registered on September 28, 1999 and argues that the domain name was registered before Complainant had acquired its federally registered trademark rights in the 24 HOUR FITNESS mark.   Respondent further maintains that it has rights and legitimate interests in the disputed domain name because it claims to register domain names that have common generic terms.  Respondent maintains that it has not registered the name in bad faith nor used it in bad faith in any manner because it insists that it is not in the business of selling domain names but rather lists its domain names for sale only for link popularity in order to increase the traffic of individual domain names.  It further contends that it had no knowledge of Complainant’s business when the <24hrfitness.com> domain name was registered on September 28, 1999.

C. Additional Submissions

Complainant filed a timely and complete additional submission with the National Arbitration Forum on September 8, 2003, which has been fully considered and found useful by the Panel.  The additional submission was found by the Panel to be significant.

FINDINGS

The Panel finds that Respondent registered the domain name <24hrfitness.com> after Complainant had perfected its trademark in the name 24 HOUR FITNESS and that the domain name in dispute is identical or confusingly similar to the trademark held by Complainant.  The Panel further finds that Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name and that its registration and use has been in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)  the 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.

Identical and/or Confusingly Similar

The evidence presented by Complainant of its registration with the USPTO establishes its right in the mark 24 HOUR FITNESS with regard to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Panel finds that the Respondent has failed to carry its burden of refuting this presumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

The Panel further finds that Respondent in registering the <24hrfitness.com> domain name has omitted the letters “o” and “u” from the mark but further finds that this omission does not sufficiently distinguish the domain name from the mark under Policy ¶4(a)(i).  See Minn. State Lottery v. Mendez, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Modern Props., Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (stating that “[n]otwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning”).

Rights or Legitimate Interests

The Panel finds that Respondent has in fact offered for sale the domain name <24hrfitness.com> because it maintains a website exclusively dealing in the commercial sale of domain names.  Simply holding and offering a domain name for sale is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be “misleadingly” diverted to other sites).

The Panel finds that Respondent has linked the <24hrfitness.com> domain name to an Internet search website that contains advertisements and links to Complainant’s competitors.  This use of the domain name does not suggest rights to or legitimate interests in the domain name.  See Winmark Corp. d/b/a Play It Again Sports v. In the Zone a/k/a Giant Sports Factory, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant’s site to a competing website).

There is no evidence to show that Respondent is commonly known by the <24hrfitness.com> name or parts thereof and Complainant has not authorized Respondent to use the 24 HOUR FITNESS mark according to the evidence submitted.  Respondent has offered nothing to indicate that it has such permission.  It is therefore found by the Panel that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith

A review of the evidence convinces the Panel that Respondent registered the disputed domain name primarily for the purpose of selling the domain name but not necessarily to Complainant.  The sale has been offered to all the world through its website at a substantial profit as there is no evidence to indicate that the amount Respondent is asking for the domain name is anywhere near its out-of-pocket costs.  Further, there is no evidence to show that Respondent has in any way made use of the domain name except to offer it for sale to the buying public. 

While Respondent insists that it is not in the business of selling domain names, the Panel finds that the evidence suggests otherwise.  Respondent’s use of a domain name to increase the traffic to Respondent’s site is found by the Panel as Respondent’s attempt to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark.  This is found to be evidence of registration and use in bad faith pursuant to Policy ¶4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <24hrfitness.com> domain name be TRANSFERRED from Respondent to Complainant.

                  ROBERT T. PFEUFFER, Senior District Judge, Panelist

Dated:  September 26, 2003

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