The Complainant is Tracy Anderson Mind and Body LLC of Studio City, California, United States of America (“USA”), , represented by Morrison Cohen LLP, USA.
The Respondent is Domain Asset Holdings, LLC of Orem, Utah, USA, represented by Erika L. Hengst, Esq., USA. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Tierranet Inc. d/b/a Domaindiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 17, 2013, the Center transmitted by email to Tierranet Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2013, Tierranet Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which matched the named Respondent and contact information in the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The Response was filed with the Center on May 12, 2013 and Respondent elected to have this dispute decided by a three-member Administrative Panel (the “Panel”).
The duly appointed members of the Panel include Richard W. Page, The Hon. Neil Brown Q.C., and Maxim H. Waldbaum (presiding) on May 29, 2013. 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 Disputed Domain Name is registered with Tierranet Inc d/b/a Domaindiscover, first registered on January 9, 2009. The registration expires on January 9, 2014.
Complainant has the following trademark applications and registrations:
Tracy Anderson Method, U.S. registration number 4072973, filed on November 3, 2010 and registered on December 20, 2011.
Tracy Anderson Method, common law trademark usage asserted by the Complainant. 5. Parties’ Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant, a Delaware limited liability company and intellectual property rights holder for the individual Tracy Anderson, a professional trainer and creator of diet regimes and compilations of fitness training systems, techniques and methods, holds United States trademark registration for standard-character marks based on Tracy Anderson’s personal name, “Tracy Anderson Method,” which is used in connection with the diet and fitness regimes that she designs as well as for the website “.” This mark is used for diet, fitness and training DVDs and books under Tracy Anderson’s name as well as several fitness studios which are all part of her well-known fitness industry brand in the United States. Prior to official registration of the trademark, Complainant exercised common law trademark usage as evidenced by several news articles which pre-date Respondent’s purchasing of the Disputed Domain Name and which discuss Complainant and Complainant’s business. Complainant’s Annex 6 is the Federal Registration Certificate for “Tracy Anderson Method” and lists the date of first use as August 1, 2007. Tracy Anderson has been a personal trainer and dietary consultant to several high profile celebrities including Madonna and Gwyneth Paltrow.
Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name and that Respondent is neither affiliated with Complainant nor licensed to use Complainant’s trademarks.
Complainant alleges that Respondent’s business is to register and sell domain names and that Respondent is offering the Disputed Domain Name for sale with the intention of selling to Complainant or a competitor of Complainant at an inflated price in exploitation of Complainant’s high profile status. Complainant submits a printed webpage with Respondent’s sale prices for the Disputed Domain Name and several other domain names using “Anderson” which shows that the Disputed Domain Name is offered for USD 200,000 while other domain names are offered for no more than USD 40,000, and several are listed around USD 20,000.
Complainant alleges that while Respondent’s site contains no substantive content other than for the sale of the Disputed Domain Name, it does include several advertising links which provide Respondent with economic benefit through the unauthorized use of Complainant’s intellectual property. Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant alleges that, for these reasons, Respondent’s registration and use of the Disputed Domain Name is in bad faith. B. Respondent
Respondent is a limited liability company in the business of owning, developing, and selling domain names. It offers the Disputed Domain Name for sale on its website as well as many other domain names using “Anderson.” Respondent alleges that the Disputed Domain Name is not identical or confusingly similar to Complainant’s marks because “Anderson” is the 12th most common surname in the United States and the name “Tracy Anderson” is common in New York, California, Florida, Texas, and Illinois.
Respondent alleges that it has rights to and legitimate interests in the Disputed Domain Name because it is in the legitimate business of offering domain names for sale and was unaware of Complainant at the time the Disputed Domain Name was registered. Respondent alleges that since there was no record of the Complainant’s domain name at the time Respondent purchased the Disputed Domain Name on January 9, 2009 and since Respondent was unaware of Complainant’s celebrity status at the time it purchased the Disputed Domain Name, Respondent’s registration and use of the Disputed Domain Name is not in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name “” is confusingly similar to Complainant’s trademark TRACY ANDERSON METHOD. The mere fact that “Anderson” and “Tracy Anderson” are common names in the United States is not sufficient to avoid confusion with Complainant’s trademark. B. Rights or Legitimate Interests
Complainant has presented evidence of its rights in the trademark TRACY ANDERSON METHOD referencing a federal registration in the United States and pre-existing usage sufficient to warrant common law trademark protection for purposes of the Policy.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademark.
Respondent alleges that Respondent’s use of Complainant’s trademark is permitted based on its legitimate business of offering domain names for sale.
The Panel finds that Respondent does not have a right to use Complainant’s trademark either and that, under the circumstances, it does not have a right or legitimate interest in the Disputed Domain Name. The claim that the Disputed Domain Name is merely offered as part of Respondent’s legitimate business in selling domain names is undermined by the exorbitant price for the Disputed Domain Name when compared with other domain names offered for sale by Respondent which also include “Anderson”, suggesting that Respondent is targeting the trademark of Complainant.
The Panel finds that Complainant has established this element. C. Registered and Used in Bad Faith
Complainant rightly points out that registration of domain names based upon celebrity or well-known individual’s names are registered or used in bad faith and are subject to transfer in certain circumstances under the Policy. In support of its argument, Complainant cites previous UDRP decisions including Ms. Barkha Dutt v. easyticket, Kapavarapu, Vas,WIPO Case No. D2009-1247 and Julie Brown v. Julie Brown Club,WIPO Case No. D2000-1628. Complainant has also supplied evidence of its registered trademark with a first use in commerce which predates the registration of the Disputed Domain Name, as well as publications featuring the Complainant which similarly predate the registration.
Respondent’s argument that it was unaware of Complainant’s existence or celebrity when it purchased the Disputed Domain Name cannot credibly account to the Panel for the fact that the Disputed Domain Name is offered at a price which is nearly ten times that of other domain names offered for sale by Respondent which also include “Anderson.”
On balance, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant in excess of its out-of-pocket costs.
Therefore, the Panel finds that Respondent’s registration and use of the Disputed Domain Name is in bad faith. 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.
Maxim H. Waldbaum
Presiding Panelist
Richard W. Page
Panelist
The Hon. Neil Brown Q.C.
Panelist
Date: June 26, 2013
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