WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fitbit, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Wei Zhang

Case No. D2020-0317

1. The Parties

The Complainant is Fitbit, Inc., United States of America (“U.S”), represented by Fenwick & West, LLP, United States of America.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Wei Zhang, China.

2. The Domain Name and Registrar

The disputed Domain Name <fitbitxstore.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 14, 2020, 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 amended Complaint on February 19, 2020.

The Center verified that the Complaint together with the amended 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 February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.

The Center appointed Jon Lang as the sole panelist in this matter on March 30, 2020. 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 a Delaware corporation located in San Francisco, California. It is a well-known technology company founded in 2007 and since that time it has become one of the world’s foremost leaders in the wearable device market, and the health and fitness technology fields. The Complainant’s primary website is at <www.fitbit.com> and it owns numerous U.S. and foreign trademark registrations for the FITBIT mark e.g., U.S. trademark registration number 3732334 (with a registration date of December 29, 2009).

The Domain Name was registered on November 14, 2019, but nothing is known of the registrant, the Respondent herein, as he has not taken part in these proceedings. The Domain Name has resolved at various times to an “imitation” website blocked by browsers as deceptive.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the main assertions of the Complainant.

General

Since at least as early as September 2009, the Complainant has continuously used the mark FITBIT, to identify its innovative wearable trackers, smartwatches, health and fitness devices, software, and related services. The FITBIT mark has been widely promoted among members of the general consuming public since 2007, and has exclusively identified the Complainant. As a result, the FITBIT mark symbolizes the tremendous goodwill associated with the Complainant and due to widespread and substantial international use, the FITBIT mark has become well-known. .

Without authorization or license, the Domain Name resolves to a website that purports to be the Complainant’s “Official Online Store” and which imitates it’s official website at <www.fitbit.com>. This website uses the Complainant’s trademarks and images, including its product images and advertising with claims to sell Fitbit products at a significant discount. Alternatively, the Domain Name is blocked by web browsers as a deceptive site.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant owns numerous registrations for the FITBIT mark issued prior to November 2019 (the creation date of the Domain Name). Moreover, the Complainant has used the FITBIT mark continuously prior to November 2019. Thus, the Complainant has rights in the FITBIT mark that clearly predate the registration date of the Domain Name.

The Domain Name incorporates the well-known FITBIT mark in its entirety and is confusingly similar to it. A domain name registrant may not avoid likely confusion by simply adding to another person’s mark the generic or descriptive term “store”. The Domain Name also includes the letter “x” which is not sufficient to differentiate it from the FITBIT trademark.

The mark FITBIT is immediately recognizable within the Domain Name and the website associated with it clearly seeks to target the mark.

As a result of adding a generic term and the letter “x” to the FITBIT mark, Internet users are likely to believe that the Domain Name originates with the Complainant and such consumer confusion is only enhanced by the content on the website associated with the Domain Name (which purports to be the Complainant’s “Official Online Store”).

The Domain Name is a clear case of typosquatting designed to divert traffic from the Complainant's website to the Respondent's website.

The Respondent has no rights or legitimate interests in respect of the domain name

Respondent has not been authorized by the Complainant to register or use the Domain Name or use any of its trademarks in any way. Unlicensed, unauthorized use of domain names incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interests.

The Respondent has no rights or legitimate interests in registering or using the Domain Name because the word “Fitbit” has no independent meaning save in relation to the Complainant and its offerings. FITBIT is a well-known trademark and the Respondent has no credible justification for adopting the Domain Name. Nor has the Respondent shown the existence of any genuine business under the mark.

The Domain Name resolves to a page that impersonates the Complainant’s official website, claims to be its official online store and offers products for sale that compete directly with the Complainant and/or which may be counterfeit copies of Fitbit products. Moreover, the page appears to take buyers’ personally identifiable information and financial information in a phishing scheme. Such use of a confusingly similar domain name is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the Domain Name.

The Respondent’s only plausible reason to register and use the Domain Name is to take unfair advantage of the recognition associated with the Complainant’s FITBIT mark by diverting consumers from the Complainant’s website to its website, such that the Respondent benefits from the confusion and diversion by having users purchase products offered on the site or provide personally identifiable information and financial information in a phishing scheme.

The Respondent does not own trademark applications or registrations for FITBIT. The Respondent is not commonly known by the name or nickname of the Domain Name or any name containing the Complainant’s FITBIT mark. The Respondent’s WHOIS information in connection with the Domain Name makes no mention of the Domain Name or the FITBIT mark as the Respondent’s name or nickname, and none of the websites to which the Domain Name resolves show use of FITBIT as a trademark or tradename other than as an impersonation of the Complainant (as demonstrated through the Respondent’s deliberate copying of logos, product names and images, amongst other things).

The Domain Name was registered and is being used in bad faith

First, the fame or well-known nature and unique qualities of the FITBIT mark make it extremely unlikely that the Respondent created the Domain Name independently. Moreover, it resolves to a page that impersonates the Complainant’s official website as earlier described, so the Respondent must of course have known of the Complainant and its mark.

Second, the Respondent acted in bad faith by registering and using the Domain Name in an effort to attract users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the Complainant’s FITBIT mark. The use made of the Domain Name strongly suggests bad faith.

Third, a finding of bad faith registration is supported when a complainant’s trademark use significantly predates the respondent’s domain name registration.

Fourth, the practice of typosquatting, in and of itself, is evidence of the bad faith registration of a domain name. There is no legitimate reason why the Respondent would register a domain name containing the FITBIT mark with the suffix “store” and additional letter “x” unless it was trying to take advantage of common typographical errors.

Fifth, the Respondent’s use of the Domain Name to resolve to a page that impersonates the Complainant’s website by using its logos, images and product names, claims to be Fitbit’s “Official Online Store” etc., similarly constitutes bad faith use and registration.

Finally, mere registration of a domain name that is identical or confusingly similar (particularly those comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity, can of itself create a presumption of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant has rights in its FITBIT mark.

Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the FITBIT mark but adds an “x” and a dictionary word “store” immediately after it, to create the Domain Name <fitbitxstore.com>.

Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The FITBIT mark is clearly recognizable within the Domain Name. Neither the addition of “store” nor “x” prevents the Domain Name from being confusingly similar to the FITBIT mark.

The Panel finds that the Domain Name is confusingly similar to the FITBIT mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name resolves (or once resolved) i.e., one that sells competing products and/or counterfeit products and which may constitute a phishing scheme, it would be difficult to conclude, without a proper explanation from the Respondent, that there is anything legitimate or noncommercial or fair about the Respondent’s use.

As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s FITBIT mark with the addition of the word (“store”), a dictionary term describing where goods are sold (and thus only enhancing rather than reducing the risk of confusion), suggests the very opposite. The addition of the letter “x” does nothing to diminish the misleading nature of the Doman Name.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a misleading website. As it stands, it is extremely unlikely that the use to which the Domain Name has been put (an imitation site), could ever be regarded as a bona fide offering of goods or services.

The Respondent has sought to create an impression of association with the Complainant for illegitimate purposes and it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name.

Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it. These appear to be the circumstances here.

More specifically, the Respondent has used the Domain Name to impersonate the Complainant.

The Respondent’s only or prime interest in the Domain Name would appear to be illegitimate.

No Response to the Complaint has been filed, no doubt because there is no response to the Complaint the Respondent could give which might cast doubt on the contention that registration and use of the Domain Name has been in bad faith.

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

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 <fitbitxstore.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: April 13, 2020