The Complainant is Total Gym Global Corp., United States of America (“United States”), represented by Procopio, Cory, Hargreaves & Savitch, LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 16, 2020. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020. The Center appointed Daniel Kraus as the sole panelist in this matter on January 8, 2021. 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 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 worldwide since 1998. Complainant’s TOTALGYM-related trademarks (“TOTALGYM Marks”) cover numerous jurisdictions, including, Kuwait, the European Community, United Kingdom, Israel, United Arab Emirates, Saudi Arabia, Russian Federation, China, and New Zealand (see in particular International registration numbers 1410578 and 1415070 registered respectively on May 21, 2018 and June 22, 2018). Complainant also owns numerous domain names which contain the TOTALGYM Mark, such as Respondent is Domains By Proxy, LLC, United States/ Carolina Rodrigues, Fundacion Comercio Electronico, Panama. The disputed domain name 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 the Complainant’s contentions. 6. 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 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, 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 letters “tv”. This does not eliminate 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). Complainant’s mark is clearly recognizable within the disputed domain name. The addition of the descriptive term “tv” as a suffix to Complainant’s mark does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. 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. These circumstances are: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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 of production 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 (WIPO Overview 3.0, section 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, D2009-0610; 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. 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 in the disputed domain name (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 27, 2019, 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 that resolves from the disputed domain name features links to fitness-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 that would rebut Complainant’s prima facie case. 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 the United States. 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 sponsored-link advertisements for directly competing services. 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, WhoisGuardService.com,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 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 Daniel Kraus
Sole Panelist
Date: January 22, 2021
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