Complainant is Total Gym Global Corp. of San Diego, California, United States of America, represented by Procopio Cory Hargreaves & Savitch, LLP, United States of America.
Respondent is Jianfeng Wu of Hefei, Anhui, China. 2. The Domain Name and Registrar
The disputed domain name is registered with MAFF Inc. (the “Registrar”). 3. Procedural History
Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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. On September 9, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. Complainant submitted a request for English to be the language of the proceeding on September 10, 2016. Respondent did not comment on the language of the proceeding by the specified due date.
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 in both English and Chinese, and the proceedings commenced on September 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 6, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on October 17, 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 A. Complainant
Complainant, Total Gym Global Corp. is a company incorporated in of San Diego, California, United States of America (“USA”). Founded in 1974, Complainant is one of the leading companies in the field of functional bodyweight training in the fitness industry.
Based on the information provided by Complainant, Complainant’s TOTAL GYM branded products are used in 14,000 physical therapy clinics, athletic training facilities, hospitals, universities, professional sports teams and health clubs, inspiring over 24 million workouts per year worldwide. Its products have been distributed in over 23 countries.
Complainant has exclusive rights in numerous trademarks comprising the term “totalgym” or “totalgymxls” worldwide since 1998. TOTALGYM-related trademarks (“TOTALGYM Marks”) cover many jurisdictions, including in Hong Kong, China (registration number 1999B11434 registered on April 17, 1998), and in China (registration number 1,941,646 registered on November 28, 2006). It also owns numerous domain names which contain the TOTALGYM Mark, such as and , which were registered on November 7, 1995 and October 29, 2013, respectively. B. Respondent
Respondent is Jianfeng Wu of Hefei, Anhui, China.
The disputed domain name was registered on May 10, 2016, which is long after the TOTALGYM Marks were registered. The disputed domain name resolves to a website which features links to gambling-related website. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s TOTALGYM Marks.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s registration and use of the disputed domain name were in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Complainant’s working language is English. The designation of Chinese as the language of the proceeding would impose a significant burden on Complainant by forcing it to incur substantial translation costs inordinate to the cost of normal proceedings. This would not be in accord with the interest of speed and low cost of proceedings under the UDRP.
b) Respondent has demonstrated an understanding of English through its employment of a USA-based web-hosting company to host its gambling website.
c) Respondent has registered over 8,000 domain names, most of which (if not all) incorporate English terms.
d) Respondent is apparently able to successfully navigate an English-speaking market by using a USA-based web-hosting company and domain names that incorporate English words.
e) The balance of hardships and fairness weighs strongly in Complainant’s favor and respectfully requests that the proceeding be conducted in English.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the Parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further provides:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes the English words “total” and “gym” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name was registered in Latin characters and particularly in English language, rather than in Chinese script; (b) the website resolved by the disputed domain name is a Chinese website, but it does contain English phrase or English brand names, such as “luck is here”, “bet victor”, and “opus gaming”; (c) the Center has notified Respondent of the proceeding in both Chinese and English; (d) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the TOTALGYM Marks acquired through registration. Based on the information provided by Complainant, the TOTALGYM Marks have been registered worldwide since 1998 (including registration in Hong Kong, China since 1998; and registration in China since 2006), and Complainant has a widespread reputation as one of the leading companies in the field of functional bodyweight training in the fitness industry.
The disputed domain name comprises the TOTALGYM Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of Latin characters “xl”. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
The addition of the descriptive term “xl” as a suffix to Complainant’s mark fails to distinguish to the Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Moreover, Complainant is one of the most prominent providers of functional bodyweight training in the fitness industry in the world (as mentioned above). Internet users who visit Respondent’s website are likely to be confused and may falsely believe that the disputed domain name is operated by Complainant for providing TOTALGYM-branded products or services.
Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the TOTALGYM Marks.
The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain names; or
(iii) legitimate noncommercial or fair use of the disputed domain names.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the TOTALGYM Marks globally since 1998. According to Complainant, Complainant is one of the leading companies in the field of functional bodyweight training in the fitness industry. Complainant’s TOTALGYM-branded products are used in 14,000 physical therapy clinics, athletic training facilities, hospitals, universities, professional sports teams and health clubs, inspiring over 24 million workouts per year worldwide.
Moreover, Respondent is not an authorized dealer of TOTALGYM-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services (which shall be elaborated further under the third element). Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “total gym” in its business operation or the use of the TOTALGYM Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the TOTALGYM Marks or to apply for or use any domain name incorporating the TOTALGYM Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on May 10, 2016, which is long after the TOTALGYM Marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s TOTALGYM Mark.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, the website resolved by the disputed domain name features links to gambling-related websites.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the TOTALGYM Marks with regard to its products or services. Complainant’s TOTALGYM-branded products are used in 14,000 physical therapy clinics, athletic training facilities, hospitals, universities, professional sports teams and health clubs across 23 countries. Complainant has registered its TOTALGYM Marks internationally, including China. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name.
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s TOTALGYM-branded products or services.
b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.
To establish an “intention for commercial gain” for the purpose of the Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).
Given the widespread reputation of the TOTALGYM Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the TOTALGYM Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website resolved by the disputed domain name is either Complainant’s site or the site of an official authorized agent of Complainant, which is not the case.
And, as mentioned above, Respondent uses the website resolved by the disputed domain name to provide links to gambling-related websites. The Panel finds that by linking the disputed domain name to websites from which Respondent may obtain “click-through” or other revenues, Respondent has intentionally attempted to attract Internet users to its website and other online locations, for commercial gain. (TPI Holdings, Inc. v. Private Registration, WhoisGuardS,WIPO Case No. D2014-1544).
The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy. 7. Decision
For all 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.
Yijun Tian
Sole Panelist
Dated: October 31, 2016
Full & Egal Universal Law Academy