Complainant is L.A. Fitness International, LLC of Irvine, California, United States of America, represented by Neal & McDevitt, United States of America.
Respondent is Isaac Goldstein of Hong Kong, SAR of China, represented by Albert and Benjamin Goldstein, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with My.CO Gateway. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2010. On August 16, 2010, the Center transmitted by email to My.CO Gateway. a request for registrar verification in connection with the Domain Name. On August 17, 2010, My.CO Gateway 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 August 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2010. The Response was filed with the Center on August 23, 2010.
On August 27, 2010 Complainant filed a reply to the Respondent’s response. Given the circumstances of this case, in particular Complainant’s request that the Response should be disregarded, the Panel has decided to consider this supplemental filling.
The Center appointed Clive L. Elliott as the sole panelist in this matter on September 2, 2010. 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 the laws of the state of California with its principal place of business at Irvine, California. It is the owner of a number of trademark and service mark registrations for its LA FITNESS mark.
According to the publicly available WhoIs database, the Domain Name was registered by Isaac Goldstein on July 20, 2010. 5. Parties’ Contentions A. Complainant
Complainant states that LA FITNESS, and various formatives thereof, is the trademark that the Complainant uses in connection with its health club services and athletic sporting goods and that although it has been the registered owner of the LA FITNESS trademark since 1993, the trademark has been in use since as early as 1988. Complainant also states that it is the registered owner of numerous domain names, all of which reproduce the term “lafitness”.
Complainant contends that, through its extensive efforts of advertising, promoting and displaying the LA FITNESS marks it is recognised as one of the United States leading providers of health club services and is well-known in the health club services industry and the athletic sporting goods industry.
Complainant asserts that the Domain Name is confusingly similar to its LA FITNESS trademark and domain name as the Domain Name reproduces entirely the Complainant’s marks. Complainant also states that the addition of “.co” does nothing to lessen the likelihood of confusion and contends that “.co” and/or similar gTLDs or ccTLDs are an irrelevant distinction. Complainant submits that a consumer looking for its website “www.m” might omit the “m” from “.com” and in doing so would end up on the page associated with Respondent’s Domain Name because of an unintentional and inadvertent typing error.
Complainant contends that Respondent has no right or legitimate interest with respect to its use of the Domain Name as it is not listed as an owner of any United States trademark containing a formative of LA FITNESS, nor has Respondent applied for or owns any United States trademark registrations, and Complainant believes that there is no evidence that Respondent is commonly known by the Domain Name. Complainant therefore suggests that as Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name, it is a clear attempt to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s trademarks and has therefore registered the Domain Name in bad faith. B. Respondent
A response to the Complaint was received on August 23, 2010 from Albert and Benjamin Goldstein representing Respondent. Respondent sets out various examples of other websites containing the name of a city followed by the word “fitness” and contends that because there are many domain names containing “city/” this proves that the nature of the Domain Name is a generic and not a unique one.
Respondent argues that they have as much right to show people about Fitness in L.A. (or Los Angeles) as opposed to a gym that operates under the term LA Fitness. Respondent also contends that it wishes to set the precedent of “.co” domain name disputes to not just simply award every “.com” owner their generic “.co” as well. C. Complainant’s response
Complainant filed a reply to the response received from Respondent. It questions the validity of Albert and Benjamin Goldstein’s response on behalf of Respondent, pointing out that they have failed to explain their interest in the proceeding and the Domain Name. Complainant suggests that their response should thus be disregarded.
Complainant notes that Albert and Benjamin Goldstein have attempted to allege that the Domain Name is generic but fails to acknowledge that Complainant owns the LA FITNESS marks and registrations. Complainant also notes that they fail to provide any evidence that Respondent has a right or legitimate interest in the Domain Name and that they have not refuted that the Domain Name was registered in bad faith. Instead, Complainant submits, Albert and Benjamin Goldstein illustrate the high level of value they hold for the Domain Name and suggests that this is additional evidence of bad faith.
Complainant also disputes the response that the term LA Fitness is no different than other “city/” domain names as Complainant states it owns incontestable trademark registrations for the LA FITNESS marks and operates a nationwide network of health clubs under the name. Complainant reiterates that the Domain Name registration is confusingly similar to its LA FITNESS marks and registration, that Respondent has no rights or legitimate interest in and to the Domain Name, and that Respondent has registered and used the Domain Name in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
It is apparent that Complainant has used the LA FITNESS trademark on or in relation to its health club services and athletic sporting goods and obtained registration of the trademark. It appears that such rights in the LA FITNESS trademark go back to either 1988 if the assertion of first use is accepted or 1993 if the date of registration of the trademark is accepted. Complainant is also the registrant of various domain names, which reproduce the term “lafitness”.
The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark and comprises a combination of the trademark and the suffix “. co”. It does so on the basis that the similarities are obvious and that the suffix does not outweigh the identity of the remaining components.
Moreover, the Panel also accepts the argument that a consumer looking for Complainant’s website “www.m” might omit the “m” from “.com” and in doing so ends up on the page associated with Respondent’s Domain Name because of an unintentional and inadvertent typing error.
The Panel therefore finds that Complainant has protectable rights under the Policy and that the first element of the Policy has been met. B. Rights or Legitimate Interests
As noted above, a response to the Complaint was received from Albert and Benjamin Goldstein who purport to represent Respondent. Complainant disputes Albert and Benjamin Goldstein standing to represent Respondent. However, for the reasons apparent below, this issue does not need to be resolved. The Panel is prepared to accept, for present purposes, but without deciding the issue, that Albert and Benjamin Goldstein do have authority and standing. They argue that various other websites contain the name of a city followed by the word “fitness” and that the Domain Name is generic and not unique. This argument does need to be given some weight. It is not however determinative. It does not mean that just because Complainant’s trademark has some descriptive and/or geographical significance that Complainant lacks rights or legitimate interests in its trademark and that Respondent in turn has an entitlement to register and use the Domain Name.
Of relevance, Respondent provides no explanation as to why it chose the Domain Name having no apparent connection with Los Angeles or fitness apart from the rather nebulous assertion that Respondent wishes to show people about Fitness in L.A.
Accordingly, on balance, the Panel concludes that this ground is made out. C. Registered and Used in Bad Faith
For the reasons set out above it is reasonable to infer that Respondent was aware of the existence of Complainant’s trademark, particularly given his purported interest in wishing to show people about Fitness in L.A. Complainant asserts that it has a long-standing and widespread business and reputation in the fitness area in the United States. On this basis, on balance, the Panel infers that Respondent had knowledge of the existence of Complainant’s trademark. Even though there is no evidence of actual use of the Domain Name by Respondent as yet, the passive holding of the Domain Name is sufficient to meet the standard required under the Policy.
Accordingly, this third limb of the Policy is also established by Complainant, not by a large margin, but nevertheless to a sufficient degree. 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 domain name be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: September 15, 2010
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