Roguefitnessusa.com

The timeline behind roguefitnessusa.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Coulter Ventures, LLC d/b/a Rogue Fitness v. Justin Wood Claim Number: FA2210002017532 PARTIES Complainant is Coulter Ventures, LLC d/b/a Rogue Fitness (“Complainant”), represented by Janet Lee of Banner & Witcoff, Ltd., Illinois, US. Respondent is Justin Wood (“Respondent”), Maine, US. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <roguefitnessusa.com>, registered with GoDaddy.com, LLC. 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. Dr. Reinhard Schanda as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on October 25, 2022; Forum received payment on October 25, 2022. On October 26, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <roguefitnessusa.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 October 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2022 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@roguefitnessusa.com. Also on October 27, 2022, 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 October 27, 2022. On November 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dr. Reinhard Schanda 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. PRELIMINARY ISSUE: CONSENT TO TRANSFER The Panel is of the view that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that: Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy. Therefore, the Panel decides to analyze the case under the elements of the UDRP. PARTIES' CONTENTIONS A. Complainant Complainant, Coulter Ventures, LLC d/b/a Rogue Fitness offers personal training and fitness products and services. Complainant asserts rights in the ROGUE FITNESS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 3,501,073, registered September 16, 2008). Complainant contends that Respondent’s <roguefitnessusa.com> is confusingly similar to Complainant’s ROGUE FITNESS trademark because it includes the mark in its entirety and adds the geographic term “USA” and the generic top-level domain name (“gTLD”) “.com”. Complainant further contends that Respondent does not have rights or legitimate interests in the <roguefitnessusa.com> domain name. Respondent is not licensed or authorized to use Complainant’s ROGUE FITNESS mark and is not commonly known by the disputed domain name. Complainant finally contends that Respondent registered and uses the <roguefitnessusa.com> domain name in bad faith. Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and attempting to attract internet users for commercial gain. Respondent had actual knowledge of Complainant’s rights in the ROGUE FITNESS mark prior to registration. B. Respondent Respondent did submit a response, but it is not considered a formal response. The Panel notes the <roguefitnessusa.com> domain name was registered on October 18, 2022. FINDINGS The Panel finds that: (1) The domain name <roguefitnessusa.com> is confusingly similar to Complainants’ registered trademarks. (2) The Respondent has not established rights or legitimate interests in the domain name <roguefitnessusa.com>. The Respondent has registered and is using the domain name <roguefitnessusa.com> 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 (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 asserts rights in the ROGUE FITNESS mark based upon registration with the USPTO (e.g., reg. No. 3,501,073, registered September 16, 2008) and other trademark agencies. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the ROGUE FITNESS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i). Complainant argues that the <roguefitnessusa.com> domain name is confusingly similar to Complainant’s ROGUE FITNESS trademark because it includes the mark in its entirety and adds the geographic term “USA” and the gTLD “.com”. The inclusion of a geographic term and gTLD do not distinguish the domain name and increase possible confusion under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Therefore, the panel finds the disputed domain name is confusingly similar to Complainant’s ROGUE FITNESS mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy: (a) He has made 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 prior to the dispute; (b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or (c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest. According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Complainant argues that Respondent does not have rights or legitimate interests in the <roguefitnessusa.com> domain name because Respondent is not licensed or authorized to use Complainant’s ROGUE FITNESS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Justin Wood.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Registration and Use in Bad Faith Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and attempting to attract internet users for commercial gain through pay-per-click advertisements. Respondent's use of the domain name to link to competitors of complainant, presumably generating pay-per-click or referral fees for respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). See For Your Ease Only, Inc v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1791755 (Forum July 16, 2018) (“[T]he evidence shows that Respondent previously used the domain names to resolve to websites which hosted links to Complainant’s competitors; this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv).”). Here, Complainant provides a screenshot of Respondent’s resolving webpage showing hyperlinks to competing products or services. See Compl. Ex. 7. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) & (iv). Complainant contends Respondent had actual knowledge of Complainant’s rights in the ROGUE FITNESS mark prior to registration because of its use of the entire mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel may find that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, the Panel again recalls Complainant provides a screenshot of Respondent’s resolving webpage showing use of the mark. As a result the Panel finds that Respondent registered and uses the disputed domain name in bad faith 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 <roguefitnessusa.com> domain name be TRANSFERRED from Respondent to Complainant. Dr. Reinhard Schanda, Panelist Dated: November 7, 2022 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.