CoachHubz.com UDRP: Despite victory, Respondent willing to change terrible brand choice

CoachHub GmbH, Germany, filed a UDRP against the domain CoachHubz.com. The Complainant offers digital coaching services worldwide, with over 3,500 business coaches located in 90 countries, including Australia where the Respondent resides.

The Respondent offers sports coaching services, spanning various athletic disciplines, and operates in a different sector from the Complainant.

The WIPO panelist agreed, ordering the domain to remain with the Respondent.

On a positive note, the Respondent’s unofficial response included willingness to change their freshly introduced brand and deliver the domain to the Complainant for a fee. It would be a smart choice as the disputed domain brand is hard on the eyes.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
CoachHub GmbH v. Mehdi Aardin
Case No. D2025-0095

1. The Parties

The Complainant is CoachHub GmbH, Germany, represented by JBB Rechtsanwalte Jaschinski Biere Brexl Partnerschaft mbB.

The Respondent is Mehdi Aardin, Australia.

2. The Domain Name and Registrar

The disputed domain name coachhubz.com (the “Disputed Domain Name”) is registered with Dreamscape Networks International Pte Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025. On January 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on January 13, 2025, providing the registrant and contact information disclosed by the Registrar.

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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2025. The Respondent sent email communications to the Center on several occasions in January 2025.

On January 14, 2025, following the Respondent’s second communication, the Center sent a Possible Settlement email to the Parties to which the Complainant responded on January 22, 2025, requesting Suspension of the proceeding to explore settlement options. The Center suspended the proceedings from January 22, 2025, to February 21, 2025. On January 23, 2025, the Complainant sent an email informing the Center that it was not possible to reach an agreement and thereby requesting that the proceeding be reinstituted. The Center reinstituted the proceeding on January 23, 2025. The Respondent sent a further communication to the Center on January 23, 2025, mentioning that: “…Just for the record.
We still are happy to change the use of the domain as another type of business as we see ourselves
as the rightful owner of the domain. …”

The Center appointed Nick J. Gardner as the sole panelist in this matter on February 19, 2025. 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

The Complainant describes itself as “a global talent development platform offering digital coaching services in relation to a variety of different subjects via its digital platform”. It was founded in 2018 with a principal place of business in Berlin. It offers digital coaching services worldwide, with over 3,500 business coaches located in 90 countries, including Australia. The company has more than 400 employees across Europe, North America, Asia and Australia. To date, the Complainant has received over 400 million Australian dollars in funding. Australia is one of the Complainant’s most established markets, where it operates (and has done since 2018) via its own subsidiary (CoachHub Pty. Ltd.) and with over 100 certified business and well-being coaches based in Australia. The Complainant has offices in Melbourne, with an on-the-ground team supporting the company’s Australian clients including MEGT, Fujitsu, Esprit, Babbel, ViacomCBS, Soundcloud, Vice Media, Electrolux, and KPMG.

The Complainant owns a range of registered trademarks for the term Coachhub including Australian registration no 2217172 registered on November 12, 2019. These trademarks are collectively referred to as the “COACHHUB trademark” in this decision.

The Complainant has placed in evidence a wide range of material in terms of press releases, presentations, press coverage and so on directed at establishing that the COACHHUB trademark is very well known in Australia. These are directed at the business and corporate community.

The Disputed Domain Name was registered on October 4, 2023. It resolves to a website (the “Respondent’s Website”). The Complainant has not filed any screenshots or other evidence as to the contents of this website but simply made a number of submissions about its contents (see below). The Panel exercising its general powers has visited the Respondent’s Website. Once the content is seen it shows that the Respondent’s Website provides a means for visitors to find and get in touch with sports coaches who have registered with the Respondent’s Website. The “about us” text on the Respondent’s Website reads as follows: “At CoachHubz, we’re passionate about connecting individuals to the power of personal training and transformative coaching. Founded on the principles of safety, convenience, and quality, our platform serves as a bridge linking certified trainers with clients eager to enhance their skills in a supportive and personalized environment. Whether you’re starting your fitness journey or looking to refine your abilities, CoachHubz is committed to bringing top-notch training right to your doorstep”. Text on the Respondent’s Website says that it has 250+ customers and 100+ trainers. The Respondent’s Website also indicates that it offers a downloadable app version of its service.

The Complainant sent a cease and desist letter to the Respondent on September 27, 2024, complaining about the Respondent’s Website and the Respondent’s downloadable app. On the same day the Respondent replied via email denying infringement (see below).

On October 10, 2024, the Respondent filed a trademark application no 2489668, with the Australian Trade Mark Office for the word “coachhubz” in relation to sports coaching services and sports coaching.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Name is confusingly similar to the COACHHUB Trademark. The Disputed Domain Name incorporates the trademark COACHHUB and combines it with the letter “z”. The addition of the letter “z’ is akin to adding the letter “s” to pluralize the trademark COACHHUB and is insufficient to distinguish the Disputed Domain Name from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the term “COACHHUB”. The Complainant says that there is no evidence of 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. The Respondent’s trademark application is younger than the Complainant’s trademark rights and therefore does not constitute a right nor a legitimate interest in respect of the Disputed Domain Name. The application is filed in the same classes as the Complainant’s trademarks and for identical to highly similar goods and services.

In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Disputed Domain Name “is being used in bad faith both for the sole purpose of creating the false impression that this is an official website of the Complainant” and “the Respondent is using the Complainant’s good reputation, trademarks and intellectual property for his own financial interest by profiting from visitors and potential customers who are seeking to visit the Complainant’s website” and “The Respondent gives the relevant Australian consumers the impression that his business has some affiliation or connection with or approval or license from the Complainant, when this is not the case”.

B. Respondent

No formal Response has been filed. However, the Respondent replied on October 10, 2024, to the Complainant’s cease and desist letter in the following terms:

“After a thorough review, we do not believe our use of “CoachHubz” conflicts with the trademarks held by CoachHub GmbH. I would like to explain why we are confident that there is no infringement, and therefore, we respectfully decline your request to cease our use of the name or transfer the domain.

1. Distinct Services: CoachHubz offers sports coaching services, spanning various athletic disciplines, and operates in a different sector from CoachHub GmbH, which provides business coaching. Given this distinct difference, there is no overlap in the scope of services.
2. Separate Audiences: Our target markets are very different. CoachHubz focuses on sports enthusiasts, athletes, and individuals seeking physical coaching, while CoachHub GmbH caters to corporate clients looking for business and leadership coaching. These differences in services and target audience significantly reduce any likelihood of confusion.
3. No Risk of Confusion: Although the names are somewhat similar, the additional “z” and the entirely different logos, branding, and market positioning prevent any reasonable confusion between our businesses. Our clients clearly recognize CoachHubz as a sports coaching platform.
4. Good Faith and Independent Development: We developed the CoachHubz name independently and with no intention to imitate CoachHub GmbH. The name is meant to reflect our unique focus on sports coaching, and our branding is distinct.

While we understand your concerns, based on the significant differences in both the services provided and the target markets, we believe there is no basis for trademark infringement. As such, we will continue to use the name “CoachHubz” for our sports coaching business.

We also want to wish CoachHub GmbH all the best in your continued growth and success. Should you wish to discuss this further, we remain open to a constructive dialogue”.

On January 14, 2025 the Respondent sent an email to the Center which read as follows: “We have already decided to change the business name considering we are very fresh and don’t have much of a customer base. As a result we will be selling the domain. I was wondering if the Coachhub team is interested in taking the ownership of the domain?”. On January 23, 2025 the Respondent sent a further email which read as follows: “Just for the Record. We still are happy to change the use of the domain as another type of business as we see ourselves as the rightful owner of the domain. We understand the similarity in the service and appreciate that. We have offered to the Coachhub owners to pay and purchase the domain from us however they have declined. We have the right to keep the domain under different type of business or sell it to someone who is interested in purchasing it for the right price”.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the Disputed Domain Name is identical or confusingly similar to that trademark.

The Complainant has established rights in the COACHUB trademark based on its registered trademarks for that term. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Thus, the Panel finds that the Complainant satisfied the threshold requirement of having rights in the COACHUB Mark.

The Panel further finds that the Disputed Domain Name is confusingly similar to the COACHHUB Mark insofar as COACHHUB is incorporated in its entirety in the Disputed Domain Name with the addition of the letter “z” which can be regarded as simply a stylised pluralization. Previous UDRP panels have consistently held that domain names are 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). It is established that, where a mark is recognizable within the disputed domain name, the disputed domain name is considered to be confusingly similar to the mark (see WIPO Overview 3.0” at section 1.7).

The addition of a generic Top-Level Domain (“gTLD”), such as “.com”, in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s COACHUB Mark.
Accordingly, the Panel finds that the Complainant has established 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 a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Having reviewed the contents of the Respondent’s Website the Panel concludes it is more likely than not that prior to any notice from the Complainant the Respondent was operating a bona fide business (albeit on a modest scale) which provided a facility which enabled individuals seeking a suitable sports coach to identify and get in touch with a sports coach who might suit their needs. There is nothing in the record to suggest the Respondent’s Website is pretextual. Contrary to the submissions advanced by the Complainant the Respondent’s Website contains nothing to suggest that it was “creating the false impression that this is an official website of the Complainant” or that it was seeking to divert customers from the Complainant to the Respondent. In this context the Panel notes that the Complainant’s business and the Respondent’s business are very different. The Complainant is offering “coaching” in the sense of helping individual employees develop and enhance their personal skills in a business related context, and the Complainant’s customers are in the main large corporate organisations. The Complainant’s website refers to the fact that it is trusted by 1,000+ global companies and identifies amongst others Coca Cola, booking.com and Virgin Atlantic as clients. It says that it is a “talent development platform, transforming organisations by measurable people development that unlocks employee development at scale”. The Respondent’s business is very different. It is seeking to provide a facility which enables individuals to locate a suitably qualified sports coach for personal fitness development. There is no evidence that the Respondent is gaining an unfair advantage by attracting the Complainant’s customers to the Respondent’s Website nor is there any evidence that it was attempting to do so.

Therefore, the Panel holds that the Respondent has before any notice from the Complainant to the Respondent of the dispute, used the Disputed Domain Name in connection with a bona fide offering of goods or services and hence has established that it has rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the Complainant has failed to establish the second element of Paragraph 4(a) of the Policy.

In reaching this conclusion the Panel offers no view at all as to whether or not the Respondent’s activities amount to an infringement of the Complainant’s trademark rights. Similarly, the Panel offers no view on the Respondent’s attempt to register its own trademark (above). These are matters outside the Panel’s jurisdiction and which would need to be determined elsewhere.

C. Registered and Used in Bad Faith

Given the Panel’s finding on the issue of rights and legitimate interests, supra, it is unnecessary to consider the issue of bad faith registration or use.

7. Decision

For the foregoing reasons, the Complaint is denied.

/Nick J. Gardner/
Nick J. Gardner
Sole Panelist
Date: March 3, 2025

Copyright © 2025 DomainGang.com · All Rights Reserved.