TRX.com: A 1999 domain was lost via the UDRP process!

The domain name TRX.com was registered in 1999; Fitness Anywhere LLC filed a UDRP to usurp this aged, valuable LLL .com.

Citing rights to the TRX mark since “at least 2005,” the Complainant alleged that TRX.com was acquired by the Respondent much later, in 2021 or 2022. WHOIS records indicate that the contact information was changed to random letters.

The domain TRX.com was a corporate asset acquired by SAP Concur in 2013. It is not clear if it was subsequently sold to the Respondent in a private transaction; in 2021, TRX.com was listed for sale at Dan with an asking price of 1.2 million euro.

The Respondent’s lack of a response to the UDRP was definitely a factor in the sole panelist’s decision. David E. Sorkin, Panelist at Forum (NAF) ordered TRX.com to be transferred to the Complainant.

Fitness Anywhere LLC v. au tuu

Claim Number: FA2210002016615

PARTIES

Complainant is Fitness Anywhere LLC (“Complainant”), United States, represented by Alain Villeneuve, United States. Respondent is au tuu (“Respondent”), Iceland.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 18, 2022; Forum received payment on October 18, 2022.

On October 19, 2022, GoDaddy.com, LLC confirmed by email to Forum that the domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On October 19, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trx.com. Also on October 19, 2022, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

On November 9, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant provides fitness equipment and related products and services under the TRX mark. Complainant has used the TRX mark in this manner since at least as early as 2005, and claims that it has become famous worldwide. Complainant also asserts that there is “no real other TRX use around the world that has any genuine traction.” Complainant owns longstanding registrations for TRX in standard character form in jurisdictions around the world, including the United States and the European Union.

The disputed domain name is registered in the name of a privacy registration service on behalf of Respondent. The domain name was initially registered in March 1999. It appears to have been registered to entities other than Respondent until 2020 or early 2021, at which time it was transferred to a different registrar and registered in the name of a privacy registration service; Complainant contends that Respondent acquired the domain name at this time. It was subsequently advertised for sale (on the website to which the domain name resolves) for €1.2 million and later for an unspecified price. Complainant states that Respondent is not commonly known by the domain name, has no connection or affiliation with Complainant, and is not licensed or otherwise authorized to use Complainant’s mark.

Complainant contends on the above grounds that the disputed domain name is identical to its TRX mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of 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 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; and

(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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to “produce clear evidence to support its subjective allegations”).

Identical and/or Confusingly Similar

The disputed domain name corresponds to Complainant’s registered TRX trademark, with the “.com” top-level domain appended thereto. The top-level domain is normally disregarded for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Rewe Touristik Hotels & Investment GmbH v. Gee Whiz Domains Privacy Services & Gregory Ricks, D2008-1342 (WIPO Oct. 29, 2008) (finding confusingly similar to LTI). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

The disputed domain name corresponds to Complainant’s registered mark, and its sole apparent use (since its apparent acquisition by Respondent) has been for a website promoting the domain name itself for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., United Services Automobile Association v. Cyan Yo, FA 1931638 (Forum Mar. 15, 2021) (finding lack of rights or interests in similar circumstances); TechSmith Corp. v. Vildan Erdogan, FA 1803825 (Forum Sept. 25, 2018) (same).

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.”

Respondent has failed to participate in this proceeding, leaving the Panel to draw its own inferences regarding Respondent’s conduct and intentions. In addition to the facts already recited above, the Panel notes that the domain registration information provided by Respondent is incomplete and possibly fictitious; for example, it includes “Iceland” as both the street address and the city, along with what is likely an invalid postal code. Respondent’s asking price of €1.2 million for the domain name is relevant but not determinative, as such a price could plausibly have been based on either its trademark-related value or its value as a three-letter “.com” domain name.

Under the circumstances, and based upon the information available to the Panel, the Panel considers it to be more likely than not that Respondent knew of Complainant and its mark when Respondent acquired the disputed domain name; that Respondent acquired the name with the intent to sell it at a profit to Complainant or a competitor thereof; and that Respondent is using the domain name for that purpose. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

DECISION

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

Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.

David E. Sorkin, Panelist

Dated: November 11, 2022

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