Complainant is TapouT, LLC of New York, New York, United States of America (“United States”) represented by Bridgette Fitzpatrick, United States.
Respondent is Mark Kozlowski of Las Vegas, Nevada, United States, self-represented. 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 August 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2016. The Response was filed with the Center on September 7, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on September 13, 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
Complainant is a limited liability company organized under Delaware law. Complainant manufactures clothing and accessories and maintains its internationally popular fitness brand relating to mixed martial arts and affiliated with World Wrestling Entertainment, Inc. (WWE). Complainant owns a number of United States Trademark Registrations for TAPOUT (just word mark) (Registration No. 4,026,444) (registered September 13, 2011), (Registration No. 3,848,359) (registered September 14, 2010) and (Registration No. 3,848,390) (registered September 14 2010); TAPOUT (Stylized) (Registration No. 4,347,032) (registered June 4, 2013), (Registration No. 3,930,056) (registered March 8, 2011), (Registration No. 3,848,358) (registered September 14, 2010), (Registration No. 3,848,391) (registered September 14, 2010), and (Registration No. 3,707,049) (registered November 3, 2009); and TAPOUT VIRTUAL TRAINING CENTER (Registration No. 4,040,640) (registered October 18, 2011). The TAPOUT marks cover a wide range of clothing, personal accessories, and mixed martial arts accessories. The TAPOUT VIRTUAL TRAINING CENTER mark covers online mixed martial arts training. Complainant first commercialized the TAPOUT mark in 2001.
Complainant also owns the domain names: , , , and . The earliest of these registrations is from 1999. Complainant uses these websites to advertise, sell merchandise, and point to other authorized sellers of TAPOUT products. , in particular, lists licensed fitness centers.
Respondent operates a fitness center by the name “Tapout Training Center” in Los Angeles, California, United States. Respondent registered the disputed domain name on January 2, 2010. Respondent uses the website to sell merchandise and promote its fitness center. Respondent was a licensee of Complainant’s TAPOUT brand apparently authorized to register the disputed domain name (see discussion herein), but the license agreement appears to have terminated in October 2014. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its above-referenced trademarks. In particular, it alleges that adding the geographic signifier “la” to the end of its word mark does not eliminate that confusion.
It further alleges that Respondent has no rights or legitimate interests in the domain name since the license agreement under which Respondent formerly used the disputed domain name has terminated.
Finally, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Complainant cites the prior licensing agreement to show that respondent was aware of Complainant’s brand and intended to capitalize on the popularity of Complainant’s mark. Complainant argues that Respondent’s use of the disputed domain name to sell unauthorized trademarked goods with the Complainant’s mark further demonstrates bad faith use. B. Respondent
Respondent alleges that he dealt with the original owners of Tapout and received what he refers to as a “no questions asked” authorization to use the TAPOUT brand as he opened up his Los Angeles fitness center. Respondent alleges he should have rights that carry over as the previous corporate owner of Complainant’s rights allowed him to use the disputed domain name. Respondent’s legal arguments are unclear, but he seems to claim both a legitimate interest in the disputed domain name and good faith use thereof based on the original authorization. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s TAPOUT mark.
The addition of “la” is insufficient to distinguish the disputed domain name from Complainant’s mark. “la” serves as a geographic identifier, and Internet users are likely to get confused, believing the website is connected with a regional subdivision of Complainant or a regional licensee of its mark. See Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628 (“They could easily conclude that [] had something to do with the Complainant’s United States, German and United Kingdom operations. Geographical destinations can be irrelevant to users of the Internet”).
Even though Respondent’s use of the disputed domain name was directed, in part, at promoting a fitness center and Complainant’s mark covers fitness accessories, this taken distinction between the parties’ goods or services does not obviate confusion, particularly inasmuch as the goods or services in question are both related to fitness. See Banconsumer Services, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367 (“the question of identity and confusing similarity is evaluated solely based on a comparison between the complainant’s trademark and the alphanumeric string constituting the domain name at issue.”). In this case, Respondent’s use of an internationally popular fitness brand of clothing and accessories for a fitness gym is certainly confusing. This point is further driven home by Complainant’s licensing its mark to numerous fitness centers. B. Rights or Legitimate Interests
The Panel also finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has not offered evidence of relevant rights or interests.
Respondent’s claim that the prior license grants it rights in the disputed domain name of unlimited duration is unsupported by the record. To put this in terms the Parties may appreciate, allowing a licensed user of a mark to keep the domain name after the license terminates would be as unreasonable as allowing a wrestler to continue to fight after tapping out.
Similarly, Respondent seems to have a potential claim, under UDRP Paragraph 4(c)(ii), to legitimate use of a domain name including a mark by which his fitness center is commonly known. However, the “commonly known” determination applies to the time of registration and presupposes a legitimate interest. See Neteller plc v. Prostoprom,WIPO Case No. D2007-1713 (“the better interpretation of Paragraph 4(c)(ii) is that…[respondent] must have been commonly known by the at-issue domain at the time of registration.”). At the time of registration, the term “Tapout” was not associated with Respondent but was associated with Complainant as the licensing agreement highlights. Moreover, Respondent is not known as “tapoutla” but as “Tapout Training Center”. Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel does not find bad faith in Respondent’s registration and use of the disputed domain name.
UDRP Paragraph 4(b) requires bad faith in both the registration and use of the disputed domain name. See Jerome Stevens Pharmaceuticals, Inc. Watson Pharmaceuticals,WIPO Case No. D2003-1029 (“The Policy specifically requires bad faith registration and use and the duality of these requirements cannot be ignored. This is especially true in light of the likely legitimate use, at the outset, of the registration and the implied acquiescence and knowledge by Complainant thereto.”). Respondent registered the disputed domain name with apparent authorization from Complainant’s predecessor under a prima facie valid licensing agreement. Therefore, there is at least a question as to Respondent’s bad faith in the registration, and bad faith in use need not be addressed.
While there is probably a valid question as to whether Respondent’s business name infringes Complainant’s trademark rights and cannot therefore be the basis for a legitimate good faith registration, given the Parties’ prior licensing arrangement, this is an issue involving contractual and trademark claims better addressed via mediation or in the courts. In either event, Complainant has not made out its burden under the Policy on the record before the Panel. 7. Decision
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Sole Panelist
Date: September 27, 2016
Full & Egal Universal Law Academy