Daily Workout Apps LLC filed a UDRP to usurp the domain DailyWorkouts.com, citing a trademark for the term DAILY WORKOUTS obtained in 2012.
The Respondent, however, pointed out that the Complainant’s mark is registered on the Secondary Register at the USPTO—essentially a self-signed mark, as opposed to one being on the Primary Register. Conveniently, they did not disclose that part to the Forum panelist.
For omitting that “small” detail, the panelist delivered a finding of Reverse Domain Name Hijacking, on top of the refusal to transfer the domain DailyWorkouts.com to the Complainant:
This case provides a textbook example of when a finding of RDNH is warranted. Complainant (who proceeded pro se here, but who was represented by counsel in its 2020 trademark application to the USPTO), knew that its mark was not registered on the USPTO Principal Register and, as such, the mark enjoyed no presumption of validity. Complainant also knew that it tried, without success, to register its mark on the Principal Register in 2020, but the USPTO rejected that application and expressly found that Complainant’s evidence failed to establish secondary meaning. These facts alone are sufficient to support a finding of RDNH. That Complainant failed to disclose the 2020 USPTO rejection to the Panel further supports a finding of RDNH.
The Respondent was represented by IP attorney John Berryhill.
Daily Workout Apps, LLC v. Abhinash Reddy Bellamkonda / MYRALABS LIMITED
Claim Number: FA2404002091710
PARTIES
Complainant is Daily Workout Apps, LLC (“Complainant”), represented by its President Daniel Miller, Colorado, USA. Respondent is Abhinash Reddy Bellamkonda / MYRALABS LIMITED (“Respondent”), represented by its outside counsel John Berryhill, Pennsylvania, USA.
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 H. Bernstein, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 3, 2024; Forum received payment on April 3, 2024.
On April 4, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the domain name is registered with GoDaddy.com, LLC and disclosed further details about the identity of the Respondent. The same day, Complainant filed an Amended Complaint. GoDaddy.com, LLC has verified that Respondent is the current registrant of the domain name and 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 April 5, 2024, Forum served the Complaint, the Annexes, and the Written Notice of the Complaint via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dailyworkouts.com, and set a deadline of April 29, 2024 by which Respondent could file a Response to the Complaint. That same day, Forum also transmitted the Written Notice of the Complaint 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 April 24, 2024.
On April 24, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The totality of Complainant’s substantive allegations are reproduced below:
“The domain name dailyworkouts.com is identical to the product name and live trademark ‘Daily Workouts’, which is a trademark owned by my company, Daily Workout Aps, LLC (Trademark Serial Number 85637319, US Registration Number 4239531). Daily Workouts Apps, LCC has complete rights to this mark. (Refer to Annex 1 for trademark).
“The Respondent took ownership of the domain dailyworkouts.com in August of 2018. My active trademark for ‘Daily Workouts’ was registered in November of 2012, with a first commerce use date of December of 2011. This mark ‘Daily Workouts’ has been used in commerce since that time with millions of users and a well-established brand reputation (Refer to Annex 3 for screenshot of a Google search for ‘Daily Workouts’ where the first two results are my product). The Respondent has not used the domain, is not commonly known by this domain, and is infringing on the rights protected by this issued trademark. (Refer to Annex 1 for trademark).
“The domain name dailyworkouts.com was registered knowing that it was a trademarked product name being used in commerce, owned by Daily Workout Apps, LLC (Refer to Annex 1 for trademark). It is being used in bad faith with no content and only with false intention to prevent Daily Workout Apps, LLC from using their protected trademark. (Refer to Annex 4 for screenshot of domain still not used as of April 3rd, 2024).”
B. Respondent
In its Response, Respondent contends:
Complainant does not have rights in the DAILY WORKOUTS mark. In 2012, Complainant tried to register its mark on the United States Patent and Trademark Office (“USPTO”) Principal Register, but the USPTO refused because the mark was merely descriptive. Complainant subsequently amended its application, and its mark was registered only on the Supplemental Register. In 2020, Complainant tried again to register its mark on the Principal Register, and submitted evidence to try to show that the mark had acquired secondary meaning, but the USPTO again refused, finding that Complainant could not show acquired distinctiveness. In its Complaint, Complainant made no mention of its 2020 application or of the USPTO’s refusal in 2020 to register the DAILY WORKOUTS trademark on the Principal Register.
Complainant has failed to establish that Respondent lacks rights or legitimate interests in the domain name. Respondent is a New Zealand corporation that develops websites and software for various purposes. As a website developer, Respondent keeps an eye out for potentially valuable descriptive and generic domain names that may become available for purchase and development. In December 2021, Respondent purchased the domain name through an online brokerage.
Complainant has not demonstrated bad faith. Although Complainant has a registration on the Supplemental Register, that registration has no presumption of validity and does not give rise to any constructive notice of trademark rights. Complainant has not alleged any facts that would show that Respondent was likely aware of Complainant and its trademark.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
Complainant has not proven that it owns any trademark rights in the mark DAILY WORKOUTS. As Respondent notes, that mark corresponds to a commonly-used term in relation to exercise, and is registered only on the USPTO Supplemental Register. Such a registration reflects a finding by the USPTO that, as of the time of the application (in this case, 2012), the mark was merely descriptive and lacked secondary meaning. That Complainant tried as recently as 2020 to register the mark on the Principal Register, and that the USPTO once again refused on the ground that the mark is merely descriptive, is significant.1
In the absence of a registration, Complainant bears the burden of showing that its mark has acquired distinctiveness through secondary meaning. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”) §1.2.2 (“Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights.”). Secondary meaning can be demonstrated through a range of factors, “such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” WIPO Overview § 1.3. Where, as here, the mark is comprised solely of descriptive terms, “there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” Id.
Complainant has not demonstrated the requisite secondary meaning to establish trademark rights. Although Complainant claims to have used the mark in commerce for more than 12 years in connection with a mobile app for fitness instruction, the USPTO has recently determined that Complainant’s use was not sufficient to establish secondary meaning. The Google search results on which Complainant relies are not persuasive; although Complainant’s website is listed in the first two results when searching for “daily workouts,” there are more than one million other search results, which shows how common and ubiquitous this phrase is, and undermines any claim that the phrase has secondary meaning as referencing Complainant and its fitness app. Complainant has not submitted any other evidence to try to establish that the mark has acquired secondary meaning since the USPTO’s rejection of its second trademark application in 2020.
Given that the Complainant has failed to establish trademark rights, Complainant has not established the first element of the Policy.
Rights or Legitimate Interests
Complainant has not shown that Respondent lacked rights or legitimate interests in the domain name. “Daily workouts” is a common term used in connection with exercise. Respondent indicates that it registers common terms for investment or development purposes. See WIPO Overview § 2.1 (“generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP”).
Although Respondent has not yet made any use of the domain name on a website that corresponds to the dictionary meaning of the domain name, Respondent has certified that it registered the domain name because of its value as a common phrase. That assertion is credible on this record.
Accordingly, the Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the domain name.
Registration and Use in Bad Faith
Complainant asserts that the domain name is “being used in bad faith with no content and only with false intention to prevent Daily Workout Apps, LLC from using their protected trademark.” Complainant has not, however, come forward with any evidence to show that Respondent was aware of Complainant and its trademark when it registered the domain name, nor has it submitted any facts to establish that Complainant registered and used the domain name to target Complainant and its mark. To the contrary, Respondent persuasively asserts that it registered this domain name because of its value as a common phrase, not because of any trademark rights owned by Complainant.
Accordingly, the Panel finds that Complainant has not established that the Respondent registered and used the domain name in bad faith.
Reverse Domain Name Hijacking
A finding of Reverse Domain Name Hijacking (RDNH) is appropriate where a Complainant uses “the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 1. Panels have found RDNH where the facts demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith. RDNH also may be found where a complainant provides intentionally incomplete material evidence. WIPO Overview § 4.16.
This case provides a textbook example of when a finding of RDNH is warranted. Complainant (who proceeded pro se here, but who was represented by counsel in its 2020 trademark application to the USPTO), knew that its mark was not registered on the USPTO Principal Register and, as such, the mark enjoyed no presumption of validity. Complainant also knew that it tried, without success, to register its mark on the Principal Register in 2020, but the USPTO rejected that application and expressly found that Complainant’s evidence failed to establish secondary meaning. These facts alone are sufficient to support a finding of RDNH. That Complainant failed to disclose the 2020 USPTO rejection to the Panel further supports a finding of RDNH.
In addition, as shown above, Complainant’s allegations as to elements two and three of the Policy were cursory and utterly without merit. They ignored the obvious, common meaning of the term “daily workout,” and failed to include any allegations of fact to support the argument that Respondent lacked rights or legitimate interests in this domain name or that Respondent was aware of and targeted Complainant with its registration of this domain name.
Although Respondent did not specifically seek a finding of RDNH, “it is not necessary for a respondent to seek an RDNH finding or prove the presence of conduct constituting RDNH.” WIPO Overview 4.16. Rather, it is the Panel’s obligation to enter a finding of RDNH when the evidence supports such a finding. Rules, Paragraph 15(e) (“If after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”) (emphasis added). Such a finding is appropriate here.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent. It is also Found that Complainant engaged in reverse domain name hijacking.
David H. Bernstein, Panelist
Dated: May 6, 2024
