The Complainant is L.A. Fitness International, LLC of Irvine, United States of America (“United States”), represented by Neal & McDevitt, United States.
The Respondent is Carlo Magallon, Sambulging of Tagum, Davao Del Norte, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2012. On February 23, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 23, 2012, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2012.
The Center appointed Fabrizio Bedarida as panelists in this matter on March 21, 2012. 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 in this administrative proceeding is L.A. Fitness International, LLC. The Complainant has proved to own several United States registrations for the LA FITNESS trademark and numerous domain names (nearly one hundred) corresponding and or containing the LA FITNESS trademark. The Complainant uses its LA FITNESS mark in connection with health club services and athletic sporting goods.
The Complainant’s trademark registrations for the trademark LA FITNESS, registered since November 1993, long predate the disputed domain name registration.
According to the publicly available WhoIs database, the Respondent registered the disputed domain name on January 2, 2012. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) The disputed domain name is confusingly similar to the LA FITNESS trademark.
2) The Respondent has used the LA FITNESS trademark in the disputed domain name to cause confusion among Internet users between the Respondent’s website and the Complainant’s trademarks and website.
3) The addition of the term “prices” to the LA FITNESS trademark does nothing to differentiate the domain name from the registered LA FITNESS trademark.
4) The LA FITNESS trademarks are extensively used and enjoy widespread recognition.
5) The Respondent has no rights or legitimate interests in the disputed domain name.
6) The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the LA FITNESS trademark in a domain name or in any other manner.
7) The use of the generic term “prices”, along with the LA FITNESS trademark leads the consumer to think that the contents displayed on the web site “www.” is sponsored or endorsed by the Complainant. Thus increasing confusion on the part of the consumer.
8) The Respondent has never been known by the disputed domain name and has no legitimate interest in the LA FITNESS trademark or in the name “La Fitness”.
9) The disputed domain name is being used in bad faith for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s LA FITNESS trademark. Such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
10) The disputed domain name was registered in bad faith because it is inconceivable that the Respondent was unaware of the Complainant’s rights in the LA FITNESS trademark at the time of registration.
11) On the website “www.” there are numerous references to health club related services, including services from the Complainant’s competitors.
12) The Respondent potentially derives revenue from “click-through” from confused web users looking for an LA FITNESS website or information about the Complainant.
13) Given the numerous domain names owned by the Complainant, it appears that the Respondent went “to the trouble of devising another variation not contemplated by the Complainant”. Such an effort is to be seen as evidence of bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the LA FITNESS trademark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that, “the addition of the term ‘prices’ to the LA FITNESS trademark does not lessen the confusing similarity between the disputed domain name and Complainant’s marks”.
This Panel agrees with the Complainant’s contention and previous UDRP decisions that the addition of a generic term to a trademark is not sufficient to avoid confusing similarity.
Supporting this, for example, is Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988, where the panel wrote that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark (e.g., Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai,WIPO Case No. D2010-0144).
The prefixes and suffixes incorporated in the Disputed Domain Names are descriptive words which are not distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Uvelov,WIPO Case No. D2002-0521).”
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
ii) that the respondent is commonly known by the disputed domain name, even if the respondent has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as the name “La Fitness” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for non commercial activities. Finally, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the Complainant’s trademark registrations, the numerous domain names, the extensive use and promotion on the Internet on the one hand, and on the other, the Respondent’s use of the disputed domain name to offer links to a variety of other websites, seemingly including sites of the Complainant’s competitors and to offer and suggest how to get the best La Fitness deals, shows that the Respondent must have known of the Complainant’s products and activities and intentionally intended to create an association with the Complainant and its business. Therefore, in the absence of contrary evidence, the Panel finds:
1) that the Respondent, for the contents displayed on his website, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that, due to the many domain name registrations held by the Complainant, the Respondent’s choice to register the disputed domain name cannot be casual but had to be intentional. In fact, it is the Panel’s opinion that it is highly unlikely that while registering the disputed domain name the Respondent did not discover any of the nearly hundred domain names of the Complainant. This is further inference that the Respondent knew of the Complainant when registering the disputed domain name;
3) that the above described use of the disputed domain name i.e., to divert Internet traffic to the Respondent’s website where there are also products allegedly sold by the Complainant’s competitors, also supports an inference of bad faith use;
4) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: March 23, 2012
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