Complainant is Fitness International, LLC of California, United States of America ("USA"), represented by Neal & McDevitt, USA.
Respondent is Yoyo.Email of Michigan, USA, represented by Giovanni Laporta, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2015. The Response was filed with the Center on March 4, 2015. On March 13, 2015, the Panel received an unsolicited supplemental filing from Complainant.
On March 15 and March 24, 2015, the Panel received unsolicited supplemental filings from Respondent.
The Center appointed Ms. Leytes as the sole panelist in this matter on March 13, 2015. 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 is the owner of several trademark registrations that contain the wording "LA Fitness," including, inter alia, a standard character trademark for LA FITNESS, U.S. Registration No. 2,326,358, in International Class 041 for "health club services" (collectively, the "LA FITNESS Marks"). Complainant has used LA FITNESS in connection with health club services throughout the USA since at least as early as 1989. In addition, Complainant has registered and owns numerous domain names that incorporate the LA FITNESS Marks on various generic Top Level Domains ("gTLDs"). Complainant's official company website in the USA is "".
According to the verification information provided by the Registrar, the disputed domain name was registered on July 21, 2014. It is currently inactive, resolving to a blank page. The disputed domain name is one of a large number of domain names registered by Respondent in the ".email" gTLD space that incorporates a third-party trademark. 5. Parties' Contentions A. Complainant
Complainant alleges that the disputed domain name fully incorporates and is identical to its well-known LA FITNESS Marks. Complainant states that the addition of a gTLD, such as ".email", does not serve to eliminate confusing similarity and cites to a number of UDRP decisions that support this position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that while the disputed domain name is confusingly similar to its LA FITNESS Marks, Respondent is not listed as the owner of any trademark in the USA containing the wording "LA Fitness." Complainant's trademark rights in the LA FITNESS Marks predate the registration date of the disputed domain name by 25 years and Complainant has not authorized, licensed or otherwise permitted Respondent's registration and use of the disputed domain name. Nor is there evidence that Respondent has been commonly known by the disputed domain name, even if Respondent has acquired trademark or service mark rights. Further, Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Complainant cites to a prior UDRP decision that lists numerous UDRP proceedings against Respondent regarding domain names incorporating third party trademarks that Respondent registered in the .email gTLD space and that Respondent ultimately lost. The Black & Decker Corporation v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-1891.
Complainant alleges that Respondent registered Complainant's well-known LA FITNESS Marks in bad faith, to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's LA FITNESS Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Further, Complainant submits that while it has registered its trademarks in an extensive list of domain names, it is not possible for it to register every variation of its trademarks and that Respondent's decision to register the LA FITNESS Marks in the ".email" gTLD space is additional evidence of its bad faith. B. Respondent
Respondent alleges that it has registered the disputed domain name in good faith and for a legitimate business purpose, namely to certify the delivery of emails, in such a manner that the disputed domain name will not be seen by the general public. The key to Respondent's email delivery service is that it will operate autonomously from Complainant so that it may be advertised as an "independent certified email service" and this is proof that Respondent lacks any bad faith intent to deceive. Respondent states that, pursuant to paragraph 4(c) of the Policy, "by providing the free use of its domains and limiting the use of the domain name to route and capture email meta data [it] is making a legitimate fair use of its domain name portfolio with no intent to profit from the Complainant and that [it] has certainly never intended to deceive or attract Internet users for commercial gain by 'intentionally creating' confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Registrant web site or location or of a product or service on the Registrant web site or service on the Registrant's web site or location." Respondent acknowledges that not all of the details of its business plan with regards to the disputed domain name and other domain names it has registered in the ".email" gTLD have been made public.
In support of its assertions that it is acting in good faith, Respondent states that on August 1, 2014, it applied for a Community Trade Mark for YOYO.EMAIL in the European Union in International Classes 035, 038 (for telecommunication services), 42 (for computer services) and 45 (for domain name registration services).
Respondent states that Respondent's CEO, Giovanni Laporta, is a respected inventor who has been granted some 22 patents and a businessman with a proven track record in the development of innovative ideas.
Respondent also submits that it received a favorable judgment entered by the U.S. District Court of Arizona on November 5, 2014 in Case No. CV-14-01922-PHX-JJT (the "Arizona Judgment") in connection with Respondent's registration of , which states that its business model does not violate the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) et seq., the Lanham Act, 15 U.S.C. § 1051 et seq., the UDRP, or other law. 6. Discussion and Findings
First, the Panel notes that neither party's supplemental filings addressed new law or facts. Because the supplemental filings did not add anything that would have any impact on its decision, the Panel declines to give consideration to the supplemental filings. See, Arla Foods amba v. G. La Porta / ,WIPO Case No. D2014-0855, and the cases cited therein. However, the Panel expressly notes that had it taken the supplemental filings into account, they would not have changed any aspect of the Panel's decision.
Also, the Panel has not given particular weight to the Arizona Judgment. The Arizona Judgment appears to have been given by the mutual consent of the parties in that proceeding, of whom Respondent was one, but Complainant was not. The Arizona Judgment appears also to be related to and not to the disputed domain name. Therefore, the Arizona Judgment is specific to the facts and circumstances of that proceeding and unrelated to this proceeding. See paragraph 18(a) of the Rules.
Under paragraph 4(a) of the Policy, a complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the well-known mark LA FITNESS. The Panel further finds that the disputed domain name is confusingly similar to Complainant's LA FITNESS trademark. The disputed domain name incorporates Complainant's trademark in its entirety with the addition of the new gTLD ".email." The top level domain is generally disregarded when making a determination regarding confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 1.2 and the cases cited therein. This is also true of terms incorporated in the generic top level portion of a domain name registered on a new gTLD, including the ".email" gTLD. See, e.g., Arla Foods amba v. Giovanni Laporta, Y Ltd,WIPO Case No. D2014-0724 (citing Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206 and Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by Complainant. B. Rights or Legitimate Interests
To prevail, Complainant must make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may be used to show a respondent's rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The prima facie case presented by Complainant is sufficient to shift the burden of production to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Respondent relies principally on paragraphs 4(c)(i) and 4(c)(iii) of the Policy in support of its claim that it has rights or legitimate interests in the disputed domain name.
Respondent claims that it has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services pursuant to paragraph 4(c)(i) of the Policy – namely, its "independent certified email service." However the Panel does not accept Respondent's contention that its intent to make bona fide use of the disputed domain name is the same as demonstrable preparations to make such use. Respondent has simply not provided sufficient evidence of what preparations it has made, other than purchasing the disputed domain name and other domain names incorporating third party marks in the ".email" gTLD. The Panel adopts the reasoning of the panel in Arla Foods amba v. G. La Porta / ,WIPO Case No. D2014-0855 on this point: "Respondent has merely asserted but not explained why it is required to use as a technical link behind the scenes in order to provide its services; this assertion alone is plainly insufficient to demonstrate rights or legitimate interests under the Policy." For this reason, the Panel concludes that Respondent has failed to demonstrate its rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy.
Respondent also claims that its intent is to make a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy because it will not charge Complainant for its "independent certified email service." It is clear from Respondent's statements that it does intend for its "independent certified email service" to be a profitable commercial undertaking. Nor has Respondent introduced any evidence that the intended use would constitute fair use. Therefore, the Panel concludes that Respondent has failed to demonstrate its rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may be used to show evidence of a respondent's bad faith registration and use:
(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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's 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 respondent's web site or location or of a product or service on respondent's web site or location.
The Panel finds that Complainant has demonstrated that Respondent registered and is using the disputed domain name in bad faith. As previous panels have held, absent a thorough explanation, Respondent's registration and passive holding of a domain name including a well-known third party trademark constitutes bad faith registration and use. See, e.g., Compagnie de Saint-Gobain v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-2156 (citing Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). While Respondent is free to treat the details of its business plan as a trade secret, its decision to do so limits this Panel's ability to make a determination that Respondent's proposed use constitutes good faith use. Respondent's strongly worded allegations that its intended use will be in good faith do not amount to actual evidence.
As further evidence of Respondent's bad faith is the fact that Respondent has prevented Complainant and numerous other trademark owners from reflecting their trademarks in the ".email" gTLD space under paragraph 4(b)(ii) of the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by Complainant. 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 Complainant.
Dina Leytes
Sole Panelist
Date: April 6, 2015
Full & Egal Universal Law Academy