The Complainant is Gold’s Gym Licensing, LLC, Irving, Texas, the United States of America, represented by Birch, Stewart, Kolasch & Birch, LLP, the United States of America.
The Respondent is BAL, Krystina Puzluska, Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <goldgym.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2007. On June 7, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On June 8, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2007.
The Center appointed John Katz as the sole panelist in this matter on July 24, 2007. 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 is the registered proprietor of a number of trademarks in various jurisdictions. It claims to have either itself or through its licensing company and its predecessors registrations in 70 countries. It is assumed that these are in the relevant classes for goods and/or services and for the mark GOLD’S GYM with or without device. It is a fitness-oriented business with emphasis on gyms, gym equipment and fitness routines for general health and wellbeing.
Although not referred to in the Complaint the Complainant also apparently has a website “www.goldsgym.com”.
The Complainant was either itself or by one of its predecessors or associates originally set up in 1965 in Venice, California, the United States. Since then it has expanded throughout the United States and worldwide. A search of the website “www.goldsgym.com” shows Gold’s Gyms in most all of the states of the United States and in some 28 other countries including Germany (where the Respondent resides) and Australia (where the Registrar is located).
The original Gold’s Gym in California achieved initial fame via the film Pumping Iron featuring the then actor Arnold Schwarzenegger, now Governor of the State of California. He is well known as an Austrian – American body builder/actor and latterly US politician.
Over the past 40 years the Complainant has actively promoted its trademarks and entered into licensing arrangements in various states of the United States and elsewhere throughout the world. The website solicits inquiries for franchise outlets.
Through its licensing and merchandising activities the Complainant claims common law trademark rights extending back over 30 years. It also relies upon its trademark registrations where they are extant.
5. Parties’ Contentions
A. Complainant
The Complainant contends in essence that through its registered trademarks in various jurisdictions and by virtue of its licensing and commercial activities worldwide it has acquired a goodwill in the name and trademark GOLD’S GYM such that it qualifies for protection as a brand of origin or association.
B. Respondent
Because the Respondent has defaulted it has not put before the Panel evidence. However some insight into its activities can be gained from accessing its website via the disputed domain name.
The front screen of the Respondent’s website displays gym equipment and has a number of links to other sites. It also features gym equipment and gym/fitness club references. Importantly it also has a link “membership to Gold’s Gym” which if accessed allows the viewer to purchase via another link on-line private offers of sales of memberships to a genuine Gold’s Gym. Further links jump to other sales sites offering gym equipment and related products and services and include a heading “Sponsored Results for Gold’s Gym”.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trademarks or service marks and that those rights are being abused by the Respondent. The Complainant has registered trademarks and license agreements in place and also claims common law rights based upon its commercialization of the name GOLD’S GYM and the licensing and merchandising rights that arise from that conferring on the Complainant protectable goodwill.
As earlier discussed, the Complainant has trademark registrations for the word mark GOLD’S GYM together with registrations for the word mark and device.
The Complainant also relies upon its established goodwill in the name GOLD’S GYM. Whether that be via or derivative of its registered trademarks or its common law rights does not require to be determined. Clearly the Complainant has significant rights in the name GOLD’S GYM.
There would be no room for argument but that the Complainant has established and continues to enjoy protectable goodwill in the name and trademark GOLD’S GYM. It is not necessary to cite authority for the proposition and the Complainant sets out previous Panelist’s decisions recognizing that a common law trademark will be protected under the Policy. The Panel readily accepts that.
The disputed domain name is not identical to the GOLD’S GYM mark.
In this context it is relevant to note that the trademark relied upon by the Complainant is GOLD’S GYM and the domain name contains the term “goldgym” with the “.com” suffix.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a Respondent is identical with a Complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement equally applicable to the facts of the present Complaint. It follows that, as has also been well established by previous UDRP Panels, the addition of the “.com” suffix can be disregarded. Similarly the compression of the name into one word and the omission of the apostrophe make little difference.
Therefore, on a direct comparison between the disputed domain name and the Complainant’s mark, there is a clear likelihood of confusion. The Panel accordingly has no hesitation in finding that the disputed domain name and the Complainant mark are confusingly similar and that is all the Complainant needs to establish. This must especially be so as the differences are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel finds accordingly that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trademarks in suit thereby justifying a proprietary right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
As the Respondent has no obvious link with the Complainant and there is no basis to assume it has any other legitimate connection with the trademark GOLD’S GYM but is prepared to trade off the goodwill associated with it, the Complainant has established that the Respondent has no rights or legitimate interests in the domain name.
Nor is there any evidence of any bona fide right or interest that the Respondent may reasonably claim to the disputed domain name, whether by prior right, legitimate use, genuine connection with its own name or business or otherwise.
The Panel finds accordingly that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panelists' decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person accessing the Respondent’s website would naturally assume, contrary to the fact, that there was or may well be some connection or association between the Complainant and the Respondent. This is exacerbated by references on the Respondent’s website to GOLDS GYM and gym location and sales of gym and fitness equipment.
For all of this the Respondent presumably receives payment on a pay per view, pay per click or similar basis. Such activities have long been held in other Panelists’ decisions to be wrongful as involving what is little more than “free loading” on the established goodwill of a Complainant.
On the assumption that the Respondent derives revenue by this means it must follow that the domain name was registered and is being used in bad faith. But even if the Respondent does not acquire revenue by this means it is also clear from earlier Panelists’ decisions that a website such as this, and even a blocking but inactive domain name without justification, constitutes registration and use in bad faith.
The Complainant also draws attention to other domain name registrations by this Respondent including some that would without doubt be use of internationally recognized trademarks. The Complainant cites as examples “www.gugle.com”, “www.samsung.com”, “www.americaairlines.com”. The Complainant submits that this type of conduct evidences a business of domain name speculation.
This Panelist has also earlier considered this type of activity in other decisions – see for example Amanresorts Limited & Anr v. Registerfly.com,
WIPO Case No. D2006-1322 and other decisions cited therein.
Whether this Respondent has been the subject of other orders to transfer disputed domain names is not known. However this Panelist has no hesitation in accepting the submissions for the Complainant that the Respondent’s actions amount to registration and use in bad faith.
The Panel finds that paragraph 4(a)(iii) of the Policy is accordingly made out.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <goldgym.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: July 30, 2007
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