LA Fitness is a nationwide chain of full-service gyms offering a variety of fitness equipment, group classes, and personal training. The company filed a UDRP to get the domain LosAngelesFitnessHub.com, alleging that it infringes on its famous trademark.
The Respondent—an LA resident—fought back, stating that the disputed domain had been registered long before the complaint was filed; that Respondent’s purpose was/is legitimate: to build a fitness community in/around Los Angeles. They noted that there has been no bad faith use and that the Disputed Domain Name is generic/descriptive and in no way infringing or confusing against the trademarks of the Complainant.
The sole Forum panelist agreed to 1/3 of these positions, giving LA Fitness 2 points (trademark incorporation, registration in bad faith) but noting that the Respondent’s use of the domain wasn’t infringing:
As far as registration in bad faith is concerned, given the reputation of the Complainant’s LA FITNESS trademark in the health/fitness field and the fact that the Disputed Domain Name fully incorporate these trademark, it is rather clear that, at the time of the registration of the Disputed Domain Name, the Respondent – who is apparently located just outside Los Angeles, in Santa Clarita, CA – was well aware or at least had to be aware of the Complainant’s trademarks. The registration as domain name of a third party’s well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.
With regard to use in bad faith, the Panel has long considered the conflicting arguments of the parties. On one hand, Complainant alleges that Respondent wished to sell the Disputed Domain Name to Complainant and/or disrupted its business and/or created a likelihood of confusion with Complainant so as to attract internet users for commercial gain and/or attempted in general to capitalize on Complainant’s reputation in the fitness sector. On the other hand, Respondent claims to have been of good faith, for having registered a regular domain name consisting of the name of the city where he resides (LOS ANGELES), the field of his interest (FITNESS) and a generic word that alludes to a central point where people meet (HUB), and for having used such domain name in order to build a local fitness community. For all circumstances mentioned above, the Panel is not satisfied that the third requirement under the Policy is met.
Final decision: Deny the transfer of LosAngelesFitnessHub.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.Fitness International, LLC v. Arlindo Neto
Claim Number: FA2503002147364
PARTIES
Complainant is Fitness International, LLC (“Complainant”), represented by C. Wook Pak, California, USA. Respondent is Arlindo Neto (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is losangelesfitnesshub.com, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sozos-Christos Theodoulou as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 27, 2025; Forum received payment on March 27, 2025.
On March 27, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the losangelesfitnesshub.com 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 March 31, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2025 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@losangelesfitnesshub.com. Also on March 31, 2025, 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 April 21, 2025.
On April 22, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou 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 Complainant contends that the Disputed Domain Name is confusingly similar to its LA FITNESS trademarks, as it substantially incorporates these trademarks. This last element is sufficient to support the finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks. Indeed, the use of the full words “LOS ANGELES” instead of the popular abbreviation “LA” or “L.A.”, and the mere addition of the generic/descriptive word “HUB” do not change the overall impression of a most likely connection with the LA FITNESS trademarks of the Complainant. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, because the Respondent is not known by the Disputed Domain Name, the Complainant is not affiliated with nor has it ever authorized the Respondent to register its trademarks as a domain name, the Complainant has no business with the Respondent, and the Respondent has not used the Disputed Domain Name for a bona fide offering of goods and services.
According to the Complainant, given the distinctiveness and reputation of its LA FITNESS trademarks all around the U.S., where the Respondent is apparently located, the Respondent registered the Disputed Domain Name with both constructive and actual knowledge of the Complainant’s trademarks, and this is sufficient evidence of the fact that the Disputed Domain Name was registered in bad faith. The mere addition of letters and/or of generic words does not change this view.
Complainant also claims that Respondent’s primary purpose when registering the Disputed Domain Name was: to sell it to Complainant; to disrupt Complainant’s business; to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s marks, and; to capitalize on Complainant’s goodwill and reputation in the fitness industry.
With respect to use in bad faith, the Complainant mores specifically points out – in essence – that the Respondent has used the Disputed Domain Name in order to divert consumers towards its own business and/or towards competitors of the Complainant, which in combination with the well-known character of the Complainant’s trademarks may be considered as a clear indication of bad faith.
For all these reasons, the Complainant concludes that the Respondent registered and used the Disputed Domain Name in bad faith and requests that its Complaint is granted, and that the Disputed Domain Name is transferred to the Complainant.
B. Respondent
On the other hand, the Respondent contends in essence that, the Complainant has no trademark rights on the Disputed Domain Name; that the Respondent has rights and legitimate interests to the Disputed Domain Name, and that the Respondent has registered and used the Disputed Domain Name in good faith.
In its short response, Respondent basically argues that the Disputed Domain Name had been registered long before the complaint was filed; that Respondent’s purpose was/is legitimate, i.e. to build a fitness community in/around Los Angeles; that there has been no bad faith use, and that the Disputed Domain Name is generic/descriptive, and in no way infringing or confusing vis-à-vis the trademarks of the Complainant.
Respondent thus requests that complaint is denied and that Disputed Domain Name remains with Respondent.
FINDINGS
According to Complainant’s allegations, not refuted by the Respondent, “Fitness International has been providing a superior fitness experience since 1989 and is currently using its mark and operating nationwide in over twenty (20) states […] Furthermore, Fitness International advertises in the United States and Canada via its Internet website, www.lafitness.com […] As such, Fitness International’s “LA FITNESS” marks are known as the source of health club services and related services and products throughout the United States and Canada, and it has acquired fame over its widespread geographic use, and its over 30 years of use in commerce […] Its advertisements in all forms of media total over $100,000 yearly, and its total membership is high, reaching into multiple thousands of individuals, with millions of dollars in annual sale totals.” All in all, Complainant is allegedly “nationally known for the quality of its health club services and state of the art sports clubs”.
On the other hand, the Respondent identifies himself as an individual, who registered the Disputed Domain Name “with the genuine intention of building a community-driven platform where members of the fitness world can come together to share training routines, diet tips, personal experiences, and promote a healthy lifestyle”.
In these proceedings Complainant relies on Common Law trademark rights, generated through extensive use of its LA FITNESS mark (also via its predecessor in interest) since 1989, as well as on quite a few registered US trademarks – nos. 1,806,464 (L.A. FITNESS); 2,326,358 (LA FITNESS); 3,007,720 (LA FITNESS logo); 5,418,503 (LA FITNESS) and 5,380,818 (LA FITNESS), for goods/services including health club services and athletic sporting goods.
Complainant has also owned, used and conducted its business through the pertinent domain name lafitness.com since July 2, 1997.
The Disputed Domain Name losangelesfitnesshub.com was registered on January 11, 2024 by the Respondent (as confirmed by the Registrar).
DISCUSSION
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
The Disputed Domain Name essentially consists of the Complainant’s whole trademark (LA FITNESS), to which several word elements have been added, i.e. the full name of the city “LOS ANGELES” and the descriptive/generic word “HUB”. Indeed, the mere addition of such word elements to the Complainant’s trademark is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the trademarks of the Complainant. As a matter of fact, while adding the full name of the city simply changes nothing to the abovementioned appraisal of the Panel, a word such as “hub” adds fuel to the flames, because it seems to suggest a virtual place (on the internet) where more information on Complainant’s clubs or services could be found, thus adding to the confusion created among consumers.
As far as the gTLD “.com” is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.
Hence, the Panel is satisfied that the first requirement under the Policy is met.
Rights or Legitimate Interests
Since proving a negative fact is almost impossible, Panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.
In the case at issue, the Complainant argued that it had never authorized the Respondent to register the LA FITNESS trademark in a domain name, and that it had never licensed its trademarks to the Respondent.
Furthermore, in Panel’s view, the Respondent has not demonstrated any use of the Disputed Domain Name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the Disputed Domain Name.
Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the Disputed Domain Name.
In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interest in the Disputed Domain Name. In order to rebut the Complainant’s arguments, the Respondent had the possibility to make his own defense. However, the Respondent’s Response, alleging good faith, has not convinced the Panel, as Respondent could have at least obtained Complainant’s prior authorization for registering the Disputed Domain Name, which he had not done.
Therefore, the Panel is satisfied that also the second requirement under the Policy is met.
Registration and Use in Bad Faith
As far as registration in bad faith is concerned, given the reputation of the Complainant’s LA FITNESS trademark in the health/fitness field and the fact that the Disputed Domain Name fully incorporate these trademark, it is rather clear that, at the time of the registration of the Disputed Domain Name, the Respondent – who is apparently located just outside Los Angeles, in Santa Clarita, CA – was well aware or at least had to be aware of the Complainant’s trademarks. The registration as domain name of a third party’s well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.
With regard to use in bad faith, the Panel has long considered the conflicting arguments of the parties. On one hand, Complainant alleges that Respondent wished to sell the Disputed Domain Name to Complainant and/or disrupted its business and/or created a likelihood of confusion with Complainant so as to attract internet users for commercial gain and/or attempted in general to capitalize on Complainant’s reputation in the fitness sector. On the other hand, Respondent claims to have been of good faith, for having registered a regular domain name consisting of the name of the city where he resides (LOS ANGELES), the field of his interest (FITNESS) and a generic word that alludes to a central point where people meet (HUB), and for having used such domain name in order to build a local fitness community.
In the Panel’s view, despite Complainant’s allegations, there is no evidence in the case file for any obvious attempt by Respondent for sale of the Disputed Domain Name to Complainant. Same goes for Complainant’s allegations for disruption of its business by the Respondent or for commercial competition or for any kind of substantial capitalization based on Complainant’s reputation. In other words, and even though Respondent’s position might seem somewhat too simplistic, Complainant has failed to prove that, while using the Disputed Domain Name, Respondent has acted in bad faith.
For all circumstances mentioned above, the Panel is not satisfied that the third requirement under the Policy is met.
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 losangelesfitnesshub.com domain name REMAIN WITH Respondent.
Sozos-Christos Theodoulou, Panelist
Dated: May 3, 2025
