Saturday , March 25 2023

Having a mark does not automatically lead to #UDRP win :DomainGang

The domain was registered in 2017, and while the mark itself is contained within the disputed domain, the Complainant failed to provide proof of use of their own mark.

Obviously, a quick search would point the panelist to, where all services are described. As the company formed in 2007 while the domain was registered 10 years earlier, that means was sold at some point.

Final decision: Deny transfer of to the Complainant, that was encouraged to use the legal channels instead.

Health Fitness Corporation v. Hanumantha Reddy Pullammagari
Case No. D2021-1378

1. The Parties

The Complainant is Health Fitness Corporation, United States of America (“United States”), represented by Fox Rothschild LLP, United States.

The Respondent is Hanumantha Reddy Pullammagari, India.

2. The Domain Name and Registrar

The disputed domain name <> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 11, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.

The Center appointed Adam Taylor as the sole panelist in this matter on June 22, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns a United States trade mark (No. 3,555,923) for HEALTHFITNESS, registered on January 6, 2009, in international classes 16, 35, 41, and 44. The Complainant has been using this mark since 2007.

The disputed domain name was registered on February 1, 2017.

When visited by the Panel on July 6, 2021, the disputed domain name resolved to a website at the disputed domain name that was headed with a “HealthFitness365” logo and contained information pages with the following headings: “Health”, “Fitness”, “Weight Loss”, “Yoga”, “Food”, “Ayurveda”, “Spirituality”.

The “About Us” section of the home page stated: “Awareness about Health & Fitness related aspects can prevent most of the related issues. Our mission is to educate the people with Health & Fitness related tips and help them realize that being healthy and fit isn’t a goal but it’s way of living.”

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain name is nearly identical, and confusingly similar, to the Complainant’s trade mark. The Respondent’s addition of the term “365” does not add any distinctiveness as it is merely a generic term to describe services provided every day of the year.

The Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Respondent registered the disputed domain name in 2017, whereas the Complainant has been using its incontestable trade mark in connection with its services since as early as 2007, with a registered trade mark dating back to 2009. Therefore, the Complainant has clear priority with respect to use of the term “Healthfitness”.

The disputed domain name was registered and is being used in bad faith.

The Respondent intended to disrupt the Complainant’s business.

In addition, the Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark. The Respondent intended to divert traffic from the Complainant’s website for commercial gain. This constitutes bad faith registration and use in accordance with the United States Anticybersquatting Consumer Protection Act (ACPA), as well as the UDRP.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

– the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

– the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

– the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the mark HEALTHFITNESS by virtue of its registered trade mark.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s trade mark is recognisable within the disputed domain name and, accordingly, the addition of the descriptive term “365” is insufficient to prevent a finding of confusing similarity.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

It is unnecessary to consider this element in view of the Panel’s finding under the third element below.

C. Registered and Used in Bad Faith

Section 4.3 of the WIPO Overview 3.0 explains that, bearing in mind the burden of proof on the complainant, a respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.

For the following reasons, the Panel considers that the Complainant has failed to establish that, on the balance of probabilities; the disputed domain name was registered and used in bad faith:

1. The disputed domain name consists of a relatively obvious combination of two related terms “health” and “fitness”, plus “365” denoting services supplied every day of the year.

2. The Complainant has not exhibited a screenshot of the Respondent’s website or pointed to any particular content on the website as evidencing the Respondent’s likely awareness or targeting of the Complainant or as being in some other way inappropriate, for example impersonating the Complainant or copying its content. On the contrary, the Complainant concedes that the Respondent is using the disputed domain name for a website “providing online information in the fields of health, fitness, weight loss, and nutrition”, in other words in a manner directly related to the words comprised in the disputed domain name. As mentioned in section 4 above, the Panel has viewed the website1 and, so far as the Panel can tell, it appears to be a relatively standard information-type website.

3. The Complainant has provided no information whatever about its own business, apart from asserting that it started using its trade mark in 2007. In particular, there is no evidence as to the nature, scale or reputation of the Complainant’s business that might indicate that its mark was likely to have come to the attention of the Respondent (who appears to be located in India).

4. The gist of the relatively brief Complaint is that the Complainant has “priority” because it owns a prior trade mark for HEALTHFITNESS. However, generally speaking, the concept of bad faith requires a complainant to do more than simply establish that it owns or has used a trade mark that predates a confusingly similar domain name. As explained in section 3.1 of WIPO Overview 3.0, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See sections 3.1. and 3.2 of WIPO Overview 3.0 for more information about how complainants can go about proving bad faith.

For reasons explained above, and despite the Respondent’s default, the Panel considers that the Complainant has not established the presence of any indicia of bad faith, in particular factors which suggest that the Respondent was likely to have registered and used the disputed domain name for the purpose of targeting the Complainant in some way, rather than for its obvious descriptive qualities.

To the extent that the Complainant’s claims rest on claimed trade mark infringement (and the Panel notes the reference in the Complaint to the priority of the Complainant’s trade mark and to the ACPA), such matters are not encompassed in this proceeding and should be addressed in a court of competent jurisdiction.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Date: July 6, 2021

1 Section 4.8 of WIPO Overview 3.0 notes that UDRP panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes visiting the website linked to the disputed domain name.

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