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#Coolfit .com : #NameJet auctioned #domain lost in #UDRP

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UDRP: Loss for the Respondent.

Coolfit.com, a domain that was auctioned off in an expired auction at NameJet in early 2017, was lost via the UDRP process.

Its registrant and Respondent, Name Administration Inc., acquired Coolfit.com due to its generic qualities, for $860 dollars a year ago.

The Complainant, Samuel J. McRoberts, established rights in the COOLFIT mark through registration with the United States Patent and Trademark Office.

The COOLFIT mark was registered in 2007 and was due for a Section 8/9 “Declaration of use” renewal until October 2017, which was not completed. A six month extension with an added fee, expires in April of this year.

According to the Respondent’s argument, the trademark’s expiration status should have counted against the Complainant’s claims of being in possession of an active mark:

Respondent registered and has used the <coolfit.com> domain name to take advantage of the generic meanings of the two terms making up the domain name. Namely, the name is made up of the words “cool” and “fit”, and Respondent uses the name to advertise subjects and topics related to exercise programs, diet, fitness machines and products, etc. Complainant does not have rights in the COOLFIT mark, as it apparently conducts no business under its extant US trademark registration and has twice allowed its “token use” website domain name to expire. Complainant has merely presented evidence that it is the assignee of the asserted stylized presentation of the COOLFIT mark shown in the USPTO trademark registration, which statutorily expired in October of 2017, and is in a holdover grace period for renewal expiring next month. The COOLFIT mark is therefore abandoned-in-fact.

A three member panel at the National Arbitration Forum, stated the the domain’s qualities led to its trademark registration, denying the genericness of the term:

Respondent contends that “cool” and “fit” are two generic terms which the Respondent and the public are free to use in their generic sense. However, this Panel finds that the terms “cool” “fit” when used together, or in succession, are not generic. This is also the basis of the registration granted to Complainant when issued its US trademark registration on the principal register.  Rather, when “cool” and “fit” are used together, they form a “suggestive” term, connoting apparel that is stylish and fits, or that keeps the wearer cool while worn. Panel also does not agree with Respondent’s contention that “coolfit” connotes the same commercial impression as “cool fitness.”

The end result was to order the transfer of CoolFit.com to the Complainant.

Full details of the UDRP decision follow.

Samuel J. McRoberts v. DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC.

Claim Number: FA1802001770024
PARTIES

Complainant is Samuel J. McRoberts (“Complainant”), represented by Carl Spagnuolo of McHale & Slavin, P.A., Florida, USA. Respondent is DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coolfit.com>, registered with Uniregistrar Corp.

PANEL

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

Honorable Nelson A. Diaz, Chair, Carol Stoner, Esq. and Dennis A. Foster, Esq. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 1, 2018; the Forum received payment on February 1, 2018.

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On February 1, 2018, Uniregistrar Corp. confirmed by e-mail to the Forum that the <coolfit.com> domain name is registered with Uniregistrar Corp. and that

Respondent is the current registrant of the name. Uniregistrar Corp. has verified that Respondent is bound by the Uniregistrar Corp. 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 February 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coolfit.com. Also on February 5, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

A timely Response was received and determined to be complete on March 2, 2018.

On March 15, 2018, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Nelson A. Diaz, Carol Stoner, Esq. and Dennis A. Foster, Esq. as Panelists.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph

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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.

RELIEF SOUGHT

Complainant requests that the domain name <coolfit.com> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Samuel J. McRoberts, established rights in the COOLFIT mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,313,021, registered Oct. 16, 2007). See Compl. Annex 1. Respondent’s <coolfit.com> domain name is identical to Complainant’s mark.

Respondent does not have rights or legitimate interests in the <coolfit.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent also publicly listed the domain name for sale. Respondent is not using the <coolfit.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users to a parked webpage that features pay-per-click hyperlinks and offers the domain name for sale. See Compl. Annex 2.

Respondent registered and is using the disputed domain name in bad faith. Respondent acquired the <coolfit.com> domain name primarily for the purpose of selling or renting it for an amount in excess of out-of-pocket costs. Additionally,

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Respondent attempts to create a likelihood of confusion between Complainant’s COOLFIT mark and the <coolfit.com> domain name for Respondent’s commercial gain.

B. Respondent

Respondent registered and has used the <coolfit.com> domain name to take advantage of the generic meanings of the two terms making up the domain name. Namely, the name is made up of the words “cool” and “fit”, and Respondent uses the name to advertise subjects and topics related to exercise programs, diet, fitness machines and products, etc. Complainant does not have rights in the COOLFIT mark, as it apparently conducts no business under its extant US trademark registration and has twice allowed its “token use” website domain name to expire. Complainant has merely presented evidence that it is the assignee of the asserted stylized presentation of the COOLFIT mark shown in the USPTO trademark registration, which statutorily expired in October of 2017, and is in a holdover grace period for renewal expiring next month. The COOLFIT mark is therefore abandoned-in-fact.

Complainant has failed to show Respondent lacks rights and legitimate interests in the <coolfit.com> domain name. Respondent’s monetization of the domain name by providing links to goods and services related to the terms in the domain name is a legitimate use. The terms “cool” and “fit” are generic, both alone and together, and are subject to multiple concurrent USPTO registrations and uses by other parties. See Resp. Exs. E–G. Respondent’s non-infringing use of two common words for related keyword advertising is a bona fide use of the domain name. Further, Complainant anonymously attempted to purchase the domain name from Respondent, and Respondent counteroffer is not evidence of a lack of rights or legitimate interests.

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Respondent did not register and has not used the <coolfit.com> domain name in bad faith. Respondent acquired the name in an auction of expired and abandoned domain names in March 2017, more than a year after it had expired from a previous term of registration. Complainant anonymously approached Respondent to initiate purchase negotiations, and Respondent’s willingness to engage in negotiations does not indicate bad faith. Also, Respondent’s valuation of the domain name is not dependent on Complainant’s trademark. Respondent’s registration and use of the domain name are manifestly unrelated to Complainant’s allegation of rights in a line of clothing.

FINDINGS

The domain name <coolfit.com> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complaint has rights.

Respondent has no rights or legitimate interests in respect of the domain name. Respondent registered and is using the disputed domain name 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

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

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

Identical and/or Confusingly Similar

Complainant contends it established rights in the COOLFIT mark through registration with the USPTO (e.g., Reg. No. 3,313,021, registered Oct. 16, 2007). See Compl. Annex 1. The Panel rules that registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant established rights in the COOLFIT mark under Policy ¶ 4(a)(i).

Complainant contends that Respondent’s <coolfit.com> domain name is identical to Complainant’s mark. The Panel notes that Respondent’s <coolfit.com> domain name differs from Complainant’s mark by adding the generic top-level domain (“gTLD”) to the fully incorporated COOLFIT mark. The Panel finds that a disputed domain name is identical to a complainant’s mark where the domain name merely adds a gTLD. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). As such, the Panel finds that Respondent’s <coolfit.com> domain name is identical to Complainant’s mark and that Complainant has satisfied ¶4(a)(i) of the Policy.

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While Respondent contends that the <coolfit.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Respondent contends that the disputed domain name is comprised of common and generic/descriptive terms and thus cannot be deemed identical to Complainant’s mark. However, because this argument is not applicable under Policy ¶ 4(a)(i), this argument is presented under Policy ¶4(a)(ii).

Respondent contends Complainant has abandoned its mark because Complainant conducts no substantial, or even discernible, commerce in any claimed items under the COOLFIT mark. Specifically, Respondent argues the COOLFIT initial trademark registration in 2007 included only a male undergarment as a “specimen of use,” and a subsequent renewal of registration only included a generic hat bearing a COOLFIT hangtag. See Resp. Exs C and D. However, whether a Complainant’s registered mark is abandoned is an argument not considered in a UDRP analysis. See Luvilon Indus. NV v. Top

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Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) (stating that the Policy’s purpose is to “combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes.”). Accordingly, the Panel disregards this argument and proceeds with the remainder of the UDRP analysis.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant alleges that Respondent does not have rights or legitimate interests in the <coolfit.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. A respondent who is not commonly known by a disputed domain name does not have rights and legitimate interests in the domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed

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domain name). WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, Complainant provided the WHOIS information of record, which lists “DOMAIN ADMINISTRATOR / NAME ADMINISTRATION INC.” as the registrant. See Compl. Annex 4. The Panel finds that Respondent is not commonly known by the <coolfit.com> domain name, per Policy ¶ 4(c)(ii).

Complainant also alleges Respondent lacks rights and legitimate interests in the domain name because Respondent publicly listed the domain name for sale. General attempts to sell a disputed domain name are evidence that a respondent lacks rights and legitimate interests in a domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant evidences that the website resolving from the <coolfit.com> domain name features a message that reads, “Click here to buy CoolFit.com for your website name!” See Compl. Annex 2. Complainant contends Respondent’s inclusion of this message amounts to a use indicative of its lack of rights and legitimate interests in the domain name. The Panel agrees with this contention that Respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii).

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As Complainant has made its prima facie case that Respondent lacks rights and legitimate interests in the domain name per Policy ¶ 4(c)(ii), the burden is shifted to Respondent to prove that it does have rights and legitimate interests in the domain name.

Respondent contends that “cool” and “fit” are two generic terms which the Respondent and the public are free to use in their generic sense. However, this Panel finds that the terms “cool” “fit” when used together, or in succession, are not generic. This is also the basis of the registration granted to Complainant when issued its US trademark registration on the principal register. Rather, when “cool” and “fit” are used together, they form a “suggestive” term, connoting apparel that is stylish and fits, or that keeps the wearer cool while worn. Panel also does not agree with Respondent’s contention that “coolfit” connotes the same commercial impression as “cool fitness.”

Respondent alleges that it is using the <coolfit.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, namely to advertise subjects and topics related to exercise programs, diet, fitness machines and products, etc.

Respondent maintains that its monetization of the domain name by providing links to goods and services related to the terms in the domain name is a legitimate use.

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Complainant argues that screenshots of the website resolving from the <coolfit.com> domain name indicate the site features hyperlinks for “Body Building,” “Exercise Machine,” and “Diet Fitness.” See Compl. Annex 4. However, Panel is persuaded by Complainant’s Annex 4, that Respondent uses the domain name to divert Internet users to a parked webpage that features pay-per-click hyperlinks.

Use of a domain name to redirect Internet users to a site featuring unrelated pay-per-click hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).

The Panel concludes that Respondent failed to use the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

Respondent also argues that Complainant is a mere assignee of the mark and it apparently conducts no business under its extant US trademark registration. Respondent further posits that Complainant has twice allowed its “token use” website domain name to expire. Panel will not address these purported trademark usage and abandonment issues, which remain under the purview of the United States Patent and Trademark Office (USPTO) and are therefore, beyond the scope of these UDRP proceedings.

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The Panel therefore holds that Respondent did not meet its respective burden to

prove that it did have that rights and legitimate interests in the domain name

under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant claims that Respondent registered the <coolfit.com> domain name in bad faith for the purpose of selling or renting the domain name for an amount in excess of out-of-pocket costs. Registration of a domain name for the primary purpose of selling it for an amount in excess of out-of-pocket expenses

demonstrates a respondent’s bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).

As mentioned previously, Complainant contends that screenshots of the

<coolfit.com> domain name’s resolving website indicate that the site features a message that the domain name is for sale. See Compl. Annex 4. Complainant also offered credible evidence that Respondent made an anonymous offer to sell the domain name to Complainant for $21,000. See Compl. Annex 3. As such, the Panel holds that Respondent registered the <coolfit.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).

Complainant alleges that Respondent attempts to create a likelihood of confusion between Complainant’s COOLFIT mark and the <coolfit.com> domain name for Respondent’s commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain evidences bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe,

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FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant offers credible evidence that the website resolving from the domain name site features pay-per-click hyperlinks, which Respondent likely profits from. See Compl. Annex. 4.

For the foregoing reasons, the Panel concludes that Complainant has satisfied its burden of proof, such as to allow for a finding of bad faith registration and bad faith use, under Policy ¶ 4(a)(iii).

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 <coolfit.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Nelson A. Diaz, Chair,
Carol Stoner, Esq, Dennis A. Foster, Esq. Panelists

Dated: March 26, 2018


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Comments

One Response to “#Coolfit .com : #NameJet auctioned #domain lost in #UDRP”
  1. Use of pay per click sites is legitimate under WIPO’s Overview 3.0.
    The ADR Forum’s jurisprudence seems to be at odds with the WIPO Overview 3.0
    2.9 Do “parked” pages comprising pay-per-click links support respondent rights or legitimate interests?
    Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

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