Tracy Anderson Mind and Body LLC of Studio City, California, just won a UDRP against Mike Mann’s Domain Asset Holdings on the domain name tracyanderson.com
This marked the 6th UDRP in a row that Domain Asset Holdings has lost.
According to the UDRP, Tracy Anderson, is a professional trainer and creator of diet regimes and compilations of fitness training systems, techniques and methods, holds United States trademark registration for standard-character marks based on Tracy Anderson’s personal name, “Tracy Anderson Method,” which is used in connection with the diet and fitness regimes that she designs as well as for the website “www.tracyandersonmethod.com.
The Domain Name TracyAnderson.com was registered on January 9, 2009.
The decision is surprisingly short especially considering that it was decided by a three member panel.
Here are the relevant facts and findings
Complainant has the following trademark applications and registrations:
Tracy Anderson Method, U.S. registration number 4072973, filed on November 3, 2010 and registered on December 20, 2011.
Tracy Anderson Method, common law trademark usage asserted by the Complainant.
The Panel finds that the Disputed Domain Name “tracyanderson.com” is confusingly similar to Complainant’s trademark TRACY ANDERSON METHOD. The mere fact that “Anderson” and “Tracy Anderson” are common names in the United States is not sufficient to avoid confusion with Complainant’s trademark.
Complainant has presented evidence of its rights in the trademark TRACY ANDERSON METHOD referencing a federal registration in the United States and pre-existing usage sufficient to warrant common law trademark protection for purposes of the Policy.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant’s trademark.
Respondent alleges that Respondent’s use of Complainant’s trademark is permitted based on its legitimate business of offering domain names for sale.
The Panel finds that Respondent does not have a right to use Complainant’s trademark either and that, under the circumstances, it does not have a right or legitimate interest in the Disputed Domain Name. The claim that the Disputed Domain Name is merely offered as part of Respondent’s legitimate business in selling domain names is undermined by the exorbitant price for the Disputed Domain Name when compared with other domain names offered for sale by Respondent which also include “Anderson”, suggesting that Respondent is targeting the trademark of Complainant.
The Panel finds that Complainant has established this element.
Complainant rightly points out that registration of domain names based upon celebrity or well-known individual’s names are registered or used in bad faith and are subject to transfer in certain circumstances under the Policy.
In support of its argument, Complainant cites previous UDRP decisions including Ms. Barkha Dutt v. easyticket, Kapavarapu, Vas, WIPO Case No. D2009-1247 and Julie Brown v. Julie Brown Club, WIPO Case No. D2000-1628.
Complainant has also supplied evidence of its registered trademark with a first use in commerce which predates the registration of the Disputed Domain Name, as well as publications featuring the Complainant which similarly predate the registration.
Respondent’s argument that it was unaware of Complainant’s existence or celebrity when it purchased the Disputed Domain Name cannot credibly account to the Panel for the fact that the Disputed Domain Name is offered at a price which is nearly ten times that of other domain names offered for sale by Respondent which also include “Anderson.”
On balance, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant in excess of its out-of-pocket costs.
Therefore, the Panel finds that Respondent’s registration and use of the Disputed Domain Name is in bad faith.””