The domain name LAFitnessNearMe.com was involved in a UDRP filed by LA Fitness International LLC, owners of the famous LA FITNESS mark.
What’s interesting in this case is that through negotiations, the Respondent was able to secure a $2,000 dollar offer for this domain, substantially higher than the $500 opening offer. After involving an attorney the Respondent attempt to milk it all the way, seeking $6,000 dollars.
At that point, the Complainant fired up its lawyers and won the UDRP. Said the Panelist:
Additionally, Respondent’s actions regarding the disputed domain after being contacted by Complainant further illustrates Respondent’s bad faith. Again, it is worth reiterating that Respondent has never explained or justified the registration of the disputed domain name based on the LA FITNESS mark. In fact, when Respondent received a demand letter from Complainant’s representative, Respondent immediately made assurances to Complainant that he would remove all material related to LA FITNESS. That alone suggests that Respondent was more likely than not aware of Complainant’s LA FITNESS mark and that he likely knew that his registration and use of the disputed domain name based on the LA FITNESS mark might be problematic.
But there is more, although Respondent technically never signed the agreement provided by Complainant to resolve the matter, Respondent made a number of written statements to Complainant that he would comply with Complainant’s demands and transfer the disputed domain name. Respondent, however, not only delayed transferring the disputed domain name to Complainant but in fact developed the website further for the benefit of Respondent. Clearly, Respondent was well aware for some time of Complainant’s objection to Respondent’s use and registration of the disputed domain name. Nevertheless, Respondent opportunistically took advantage of the situation to develop and use the website posted at the disputed domain name for Respondent’s benefit and to then ask in bad faith for a larger sum of money for the transfer of the disputed domain name on the basis of Respondent’s claimed investment in his website.
Final decision: Grant the transfer of the domain name LAFitnessNearMe.com to the Complainant.
Fitness International, LLC v. Muhammad Awais Aman
Claim Number: FA2408002111534
PARTIES
Complainant is Fitness International, LLC (“Complainant”), represented by C. Wook M. Pak of Cislo & Thomas LLP, California, USA. Respondent is Muhammad Awais Aman (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is lafitnessnearme.com, registered with NameCheap, Inc..
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.
Georges Nahitchevansky as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 16, 2024; Forum received payment on August 16, 2024.
On August 18, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the lafitnessnearme.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2024 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@lafitnessnearme.com. Also on August 20, 2024, 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 September 4, 2024.
On September 5, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Georges Nahitchevansky 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
Complainant states that it is the operator of health cubs and fitness centers in over twenty (20) states in the United States using the name and mark LA FITNESS. Complainant maintains that it has used the LA FITNESS name and mark since 1989 and that LA FITNESS health clubs are considered premiere health clubs that have received much recognition and accolades from consumers, particularly in certain geographic areas in the United States and Canada.
Complainant owns several United States trademark registrations for LA FITNESS and L.A. FITNESS marks (Registration Nos. 1,806,464, 2,326,358, 5,418,503 and 5,380,818), the earliest of which issued to registration on November 23, 1993. Complainant also owns and uses the domain name lafitness.com for a website regarding Complainant and its health club and fitness services, and to provide member tools and podcasts on fitness, nutrition and motivation.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s LA FITNESS mark as it incorporates the mark in its entirety, merely adding the words “near me,” which “may directly pertain to achieving access to a location of [Complainant] near the user conducting the search.”
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent (i) is not commonly known by the LA FITNESS mark, (ii) has no agreement with Complainant to use the LA FITNESS mark and has no connection to or affiliation with Complainant, (iii) has used the disputed domain name with a website promoting sales of the exact type of services that Complainant offers under the LA FITNESS mark, and (iv) received a demand letter from Complainant on March 10, 2023.
Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith because Respondent did so to (i) primarily sell the disputed domain name to Complainant, to (ii) disrupt Complainant’s business, (iii) attract and redirect consumers to Respondent’s website, and (iv) capitalize on Complainant’s goodwill and reputation in the fitness industry.
Complainant contends that Respondent’s own actions further evidence Respondent’s bad faith registration and use. Complainant notes that its representative sent a demand letter to Respondent on March 10, 2023 concerning Respondent’s use and registration of the disputed domain name. Respondent responded on March 15, 2023, asserting he had complied with Complainant’s demands. The website use by Respondent of LA FITNESS apparently continued and Complainant sent a further letter on April 26, 2023. Respondent provided a response on April 28, 2023 and advised that Complainant should provide some amount for the disputed domain name.
Complainant made an offer of $500 on May 5, 2003 as a means of promptly resolving the matter. On May 6, 2023, Respondent wrote back to Complainant stating “I will accept all of your demands and sign all settlement agreement letters that address all of your concerns and will use none of your client trademarks in my life.” Respondent, however, requested $2500 for the disputed domain name.
On May 11, 2023, Complainant rejected Respondent’s counteroffer of $2500 and asked that Respondent cease use of the disputed domain name. That same day Respondent replied stating that he would accept an offer in the range of $500 to $1000. On June 8, 2023, Complainant accepted Respondent’s offer at $500 and forwarded a settlement agreement. On June 11, 2023, Respondent responded by reiterating his agreement with all of the terms and conditions outline in the agreement, but seeking confirmation that the payment would come before the transfer of the disputed domain name.
Almost six months later, on January 4, 2024, Complainant wrote back to Respondent and sent instructions for the payment and transfer of the disputed domain name. On January 11, 2024, Respondent cancelled the agreement and asked for $5,000. On February 16, 2024, Complainant wrote back to Respondent alleging a breach of the prior agreement to sell the disputed domain name for $500. On February 23, 2024, Respondent responded through an attorney Respondent retained for the matter. The attorney asserted that there was no legal agreement between the parties notwithstanding Respondent’s prior communications and undertakings.
On March 11, 2024, Complainant replied noting the contrary position that Respondent’s counsel was now taking and offered $2,000 to resolve the matter. On March 17, 2024, Respondent’s counsel wrote back rejecting Complainant’s position and asking for a payment of $6,000. Complainant rejected such demand on April 8, 2024 and reiterated its $2,000 offer. Respondent’s counsel replied on April 24, 2024 by unilaterally claiming that there had been an agreement for $6,000 for the disputed domain name. There were no further communications between the parties and Complainant initiated this proceeding.
B. Respondent
Respondent rejects Complainant’s contentions.
Respondent states that his website at the disputed domain name does not offer gym equipment or any gym related items and is simply a platform through which Respondent uploads articles to be viewed free of charge. Respondent notes that the only revenue he receives from the website are from ads that are displayed on his website that come from Google AdSense.
Respondent contends that he has included a disclaimer on his website at the disputed domain name that specifically disclaims an association with Complainant. As such, Respondent contends that any confusion with the LA FITNESS name and mark is avoided. Respondent also notes that he has never claimed any association with LA FITNESS or “used their name to mislead visitors.”
Lastly, Respondent explains that he originally registered the disputed domain name to “create a website offering free articles related to fitness” and not to sell products or offer services that compete with those of Complainant. Respondent also maintains that while there were settlement negotiations with Complainant regarding the transfer of the disputed domain name, the request for a higher amount was due to the significant investment of time and money Respondent put into developing his website at the disputed domain name. In that regard, Respondent notes that Complainant waited six months to respond to Respondent and that during that time Respondent made substantial investments of time and money
FINDINGS
Complainant holds trademark rights for the LA FITNESS mark. The disputed domain name is confusingly similar to Complainant’s LA FITNESS mark. Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and has used the 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 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 incorporates Complainant’s LA FITNESS mark in its entirety, and merely adds the common words “near me” at the tail of the disputed domain name along with the “.com” gTLD. Under Paragraph 4(a)(i), adding a gTLD and a common or descriptive word is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
Given that the first element is essentially a standing requirement, because Complainant’s claimed mark is fully incorporated and clearly recognizable at the head of the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark for purposes of Paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006)
Here, Complainant has established that it owns rights in the LA FITNESS mark and that such rights arose before Respondent registered and started using the disputed domain name. There is no dispute that Respondent is not commonly known by the disputed domain, given that the contact information for the disputed domain name is for Respondent and given that Respondent has provided no evidence that he owns rights in the name and mark LA FITNESS. Additionally, there is no dispute that Respondent is currently using the disputed domain name for a website that provides articles on fitness and related topics and that Respondent’s website is full of advertisements for products and services of third parties including competing gyms and health clubs.
Respondent, however, contends that his actions are legitimate as he has never used the disputed domain name for a website offering gym memberships or any gym related items. Respondent also contends that there can be no confusion on account of the disclaimer he has placed on his website, although it is not clear when such disclaimer was included.
What Respondent ignores and never addresses is that Respondent has registered a disputed domain name that on its face suggests a connection to Complainant, or which likely will be seen as a domain name related to Complainant and its LA FITNESS health clubs and related services and/or suggesting a website to find Complainant’s health clubs near a consumer’s location. As such, the disputed domain name carries a high risk of implied affiliation. See, e.g., Fitness International, LLC v. Dan Lee, FA 1995850 (Forum, June 7, 2022) (“In this case, the disputed domain name incorporates Complainant’s L.A. FITNESS trademark in its entirety and adds the term “boxing”, which can be easily related to Complainant’s fitness services. Therefore, the Panel finds that the disputed domain name carries a risk of implied affiliation with Complainant.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.5.1.
While Respondent is not using the disputed domain name for a website offering gym memberships or equipment, Respondent is likely using the disputed domain name, which will likely be seen as connected to Complainant, to attract and redirect web traffic to his website for Respondent’s profit. Respondent admits that his website is full of ads from which Respondent obtains revenue. Respondent also admits that his website has hyperlinks to third party websites which offer goods and services of third parties. Whether Respondent obtains revenue from such links is not clear, but it is more likely than not that the website in its totality is a for profit vehicle for the benefit of Respondent. To be sure, the use of another’s mark to attract and redirect web traffic to a Respondent’s website for profit is not a legitimate interest.
The fact that Respondent has included a disclaimer in a section of his website does not on its face dispel the possible confusion created by the disputed domain name. Notably, the disclaimer appears to have been included on Respondent’s website only after Complainant sent demand letters to Respondent. But more telling is the fact that Respondent has buried two disclaimers in his website. The first disclaimer is located in a separate section of Respondent’s website that a web user visiting the website needs to click on a small tab next to the “Privacy Policy” tab in order to access the information. The actual disclaimer that then appears is vague and somewhat confusing. The first couple of paragraphs of the disclaimer concern contacting Respondent and the lack of warranties being provided by Respondent for any of the content on the website. Buried in the middle of the disclaimer is a statement that the website “has no connection to ‘la fitness.'” That statement is then followed by text regarding hyperlinks from the website and other text. Nowhere in the disclaimer is there an affirmative statement that the website and its content are not approved, authorized or endorsed by Complainant.
Respondent’s second disclaimer is likewise buried in Respondent’s website. A web user needs to likewise click on a less prominent tab entitled “About Us.” The page that then resolves has a number of paragraphs concerning Respondent before the statement “we have no connection to ‘la fitness’ website” appear. Again, nowhere on the page is there an affirmative statement that the website and its content are not approved, authorized or endorsed by Complainant.
In all, the disclaimers are ineffectual and an after-thought. They do not prevent or dispel the implied affiliation of the disputed domain name with Complainant given the prominent use of the LA FITNESS mark in the disputed domain name and given that they are buried in Respondent’s website.
Based on the available record, the Panel finds the second element of the Policy has been established in Complainant’s favor.
Registration and Use in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, and as already noted, the disputed domain name on its face is likely to be seen as being connected to Complainant and its LA FITNESS services by suggesting that the associated website is for finding Complainant’s LA FITNESS health clubs in a consumer’s location. Respondent has made no effort to explain why he chose to register the disputed domain name that includes the LA FITNESS mark and has not rebutted Complainant’s contentions of bad faith registration (apart from simply claiming to have acted in good faith).
Additionally, Respondent has used the disputed domain name for a website that provides articles and photographs on fitness, workouts and healthy eating which in their totality could be seen as further suggesting a connection to Complainant, notwithstanding Respondent’s more recent disclaimers that are buried within Respondent’s website. Such registration and use of the disputed domain name to attract consumers to Respondent’s website, which is full of advertising and links to third parties from which Respondent derives a financial benefit, is opportunistic and more likely than not designed to take advantage of Complainant’s rights in its LA FITNESS mark for Respondent’s profit. WIPO Overview 3.0, section 3.1.1.
Additionally, Respondent’s actions regarding the disputed domain after being contacted by Complainant further illustrates Respondent’s bad faith. Again, it is worth reiterating that Respondent has never explained or justified the registration of the disputed domain name based on the LA FITNESS mark. In fact, when Respondent received a demand letter from Complainant’s representative, Respondent immediately made assurances to Complainant that he would remove all material related to LA FITNESS. That alone suggests that Respondent was more likely than not aware of Complainant’s LA FITNESS mark and that he likely knew that his registration and use of the disputed domain name based on the LA FITNESS mark might be problematic.
But there is more, although Respondent technically never signed the agreement provided by Complainant to resolve the matter, Respondent made a number of written statements to Complainant that he would comply with Complainant’s demands and transfer the disputed domain name. Respondent, however, not only delayed transferring the disputed domain name to Complainant but in fact developed the website further for the benefit of Respondent. Clearly, Respondent was well aware for some time of Complainant’s objection to Respondent’s use and registration of the disputed domain name. Nevertheless, Respondent opportunistically took advantage of the situation to develop and use the website posted at the disputed domain name for Respondent’s benefit and to then ask in bad faith for a larger sum of money for the transfer of the disputed domain name on the basis of Respondent’s claimed investment in his website.
Based on the available record, the Panel finds that Complainant has established the third element of the Policy.
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 lafitnessnearme.com domain name be TRANSFERRED from Respondent to Complainant.
Georges Nahitchevansky, Panelist
Dated: September 17, 2024
may we know who is that greedy bastard squatter…. please