DECISION

24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale

Claim Number: FA0308000187429

PARTIES

Complainant is 24 Hour Fitness USA, Inc., San Ramon, CA, USA (“Complainant”) represented by P. Landon Moreland of Manatt Phelps & Phillips LLP.  Respondent is 24HourNames.com – Quality Domains For Sale, Vleteren, Belgium (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 19, 2003; the Forum received a hard copy of the Complaint on August 20, 2003.

On August 20, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> are registered with Enom, Inc. and that the Respondent is the current registrant of the names.  Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 20, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@24hrsfitness.com, postmaster@24-hourfitness.com and postmaster@24hoursfitness.com by e-mail.

The Forum received a timely Response and determined it to be complete August 25, 2003.

Complainant filed an Additional Submission September 2, 2003; but that submission was not in compliance with Forum Supplemental Rule #7. In reaching its decision in this dispute, the Panel has not considered the Submission because it did not comply with the Rules.

On September 10, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. The domain names registered by Respondent, <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, are identical to a mark in which Complainant has legal rights.

2. Respondent has no rights to or legitimate interests in the domain names in issue that contain Complainant’s marks.

3. Respondent registered and used the domain names in bad faith.

B. Respondent makes the following points in response:

1. Respondent does not challenge that the domain names, <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com>, are identical to Complainant’s mark.

2. Respondent asserts that the domain names, respectively, were registered March 29, 2000, May 18, 2000 and July 27, 2000 and that these registrations predate the date on which Complainant received trademark protection for the 24 HOUR FITNESS mark, respectively November 30, 2000 and May 14, 2001.

3. The domain names in issue are generic.

4. It is within the course and scope of the business of Respondent to register such generic terms in varying combinations.

5. Complainant’s allegations of bad faith are without any basis in the evidence because Complainant cannot show bad faith where the domain names were registered before the trademark was granted.

C. Additional Submissions

The Panel did not consider Complainant’s Additional Submission, which did not comply with Forum Supplemental Rule #7.

FINDINGS

The Panel finds that Complainant’s Additional Submission was received within the time allotted for Additional Submissions pursuant to Forum Supplemental Rule #7, but payment for the submission was not received until allotted time elapsed. Complainant’s Additional Submission was deficient and the Panel disregarded it. Cf. Schott Glas and Nec/Schott Components Corp. v. Necschott, D2001-0127 (WIPO March 14, 2001) (choosing not to consider the Response in light of formal deficiencies).

Complainant established in this proceeding that it has rights to and interests in the trademark, 24 HOUR FITNESS, through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office as early as January 20, 1998 (U.S. Reg. No. 2,130,895), with rights in that mark dating back to its filing date of March 2, 1995. Complainant has also established common-law rights in the mark through widespread and continuous use of the mark in commerce for nearly two decades.

Complainant established as well that the disputed domain names are confusingly similar to Complainant’s mark.  Respondent did not challenge confusing similarity.

Respondent asserts that the Complainant did not obtain protected trademark status for the 24 Hour Fitness mark until some months after the Respondent registered the disputed domain names in 2000.  It is true that one of Complainant’s trademarks on 24 HOUR FITNESS was granted in November of 2000.  However, Complainant established common law rights in the name by showing that it had been in business under that name for almost a score of years. Complainant also proved that it had a trademark registration that was valid as early as March of 1995.  The fact that Respondent used the exact combination of terms suggests that Respondent knew of Complainant’s operations.

Respondent also asserted that Complainant cannot show bad faith because Respondent registered the disputed domain names before the November 2000 date on which Complainant obtained trademark protection.  Notwithstanding, Respondent did not show any valid business operation under the 24 HOUR FITNESS name, did not show any right to the use of the name, and did not show that Respondent is commonly known by the 24 HOUR FITNESS name.

Respondent also asserted the generic nature of 24, hour and fitness, but did not address Complainant’s 20-year use of the three terms together. 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the 24 HOUR FITNESS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office as early as January 20, 1998 (U.S. Reg. No. 2,130,895, filed on March 2, 1995), as well as through widespread and continuous use of the mark in commerce for nearly two decades. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

The Panel notes that as Complainant’s rights in its sucessfully registered marks date back to the date that it originally filed for those marks with the U.S. Patent and Trademark Office, it has sufficiently proven that its rights in the 24 HOUR FITNESS mark predate Respondent’s registration of the disputed domain names. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office).

Complainant showed that the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names are confusingly similar to the 24 HOUR FITNESS mark. Respondent’s abbreviation of the word HOURS, its addition of a hyphen to Complainant’s mark, and its pluralization of the word HOURS are each insignificant alterations to the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).

The Panel finds that Complainant met the requirements of ICANN Policy ¶ 4(a)(i); the domain names in issue are confusingly similar to a mark in which Complainant has rights.

Rights to and Legitimate Interests

Complainant argues that Respondent’s willingness to offer its domain name registrations for sale, each infringing on Complainant’s 24 HOUR FITNESS mark, indicates a lack of rights or legitimate interests in the disputed domain names. Respondent maintains that it has not actually offered its domain name registrations for sale, but instead lists them to gain link popularity.  This is not sufficient to rebut Complainant’s claim that Respondent is attempting to sell its domain name registrations, especially in light of the fact that Respondent’s last name designation is: “Domain Names for Sale.”  In this case, Respondent would be selling domain names that contain in their entirety Complainant’s protected mark and Respondent has brought forth no proof to establish any right in Respondent to use Complainant’s protected mark in that manner. As Respondent did not show that it has any right to sell a domain name containing Complainant’s well-known mark, Respondent did not demonstrate a bona fide use or give a plausible explanation of planned use that would give rise to rights or legitimate interests in the disputed domain name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Complainant urges that Respondent’s use of the disputed domain names to redirect Internet users to an Internet search results web page that contains advertisements and links to competitors of Complainant further evidences Respondent’s lack of rights or legitimate interests in the disputed domain names. Respondent contends that it is in the business of registering a portfolio of generic domain names and that it then develops those domain names to generate search results based on the nature of the domain name in question. Respondent urges that this is a “bona fide” business that evidences rights or legitimate interests in the disputed domain names.  Absent Respondent’s use of Complainant’s well-known business name, Respondent might be able to obtain rights in strictly generic terms registered in this manner. However, as Respondent’s “business” misappropriates the goodwill Complainant has built up around the 24 HOUR FITNESS mark, such use cannot be considered to be either “bona fide” or a “legitimate noncommercial or fair use.” See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Complainant contends that Respondent is not commonly known by the disputed domain names, as Respondent is not operating a business at the domain names.  Further, Complainant urges that Respondent does not have a license to use Complainant’s 24 HOUR FITNESS mark as additional evidence that Respondent lacks rights to or legitimate interests in its domain names. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Furthermore, the facts permit an inference that Respondent had actual notice of Complainant’s rights in the 24 HOUR FITNESS mark when it registered the disputed domain names.  Although the three words standing alone might be generic, Respondent used the three together in the same manner that Complainant has used them in its area of commerce for twenty years. Respondent did not show a legitimate interest in maintaining its domain name registrations by showing a generic listing. Cf. Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”).

Complainant met the requirements of ICANN Policy ¶ 4(a)(ii) by demonstrating that Respondent does not have rights to or legitimate interests in the disputed domain names and Respondent has failed to counter these allegations with proof that Respondent has such rights.

Registration and Use in Bad Faith

Complainant argues that Respondent’s registration of several domain names that infringe on Complainant’s 24 HOUR FITNESS mark and subsequent attempt to sell the domain name registrations evidence bad faith use and registration pursuant to Policy ¶ 4(b)(i). Respondent claims that it is not really attempting to sell its domain name registrations, in an attempt to rebut Complainant’s assertion that Respondent registered the domain names with the primary intent of selling its registrations to Complainant or a competitor of Complainant. The Panel finds this argument unconvincing, and concludes that Respondent’s attempts to sell domain name registrations that incorporate Complainant’s registered 24 HOUR FITNESS mark falls within the ambit of Policy ¶ 4(b)(i). See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Furthermore, Respondent’s registration of the disputed domain names with actual or constructive knowledge of Complainant’s rights in the registered 24 HOUR FITNESS mark, and its subsequent use of those domain names to redirect Internet users to a web page that advertises the services of Complainant’s competitors, evidences bad faith registration and use of the disputed domain names. Although Respondent maintains that it did not know of Complainant’s rights in the 24 HOUR FITNESS mark prior to registering the generic disputed domain names, and that it acted in good faith when it registered the domain names, the evidence is to the contrary. The proof before the Panel shows that, contrary to Respondent’s assertion, Complainant’s registered rights in the 24 HOUR FITNESS mark predated Respondent’s registration of the disputed domain names, as did its common-law rights in that mark. Thus, Respondent’s claim that it could not have registered the disputed domain names in bad faith based on the allegation that Respondent’s registrations predated Complainant’s rights in the relevant mark fails. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Complainant met the requirements of ICANN Policy ¶ 4(a)(iii) to show bad faith registration and use of the disputed domain names.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist
Dated: September 26, 2003.

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