national arbitration forum

 

DECISION

 

PFIP LLC v. Larry Milo

Claim Number: FA0909001282627

 

PARTIES

Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA.  Respondent is Larry Milo (“Respondent”), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <planetfitnessmag.com>, registered with Fastdomain Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 2, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2009.

 

On September 8, 2009, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <planetfitnessmag.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name.  Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@planetfitnessmag.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <planetfitnessmag.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <planetfitnessmag.com> domain name.

 

3.      Respondent registered and used the <planetfitnessmag.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, PFIP LLC, operates over 280 fitness clubs throughout the United States.  Complainant promotes those clubs under the PLANET FITNESS mark, which complainant registered with the United States Patent and Trademark Office (“USPTO”) on March 27, 2001 (Reg. No. 2,438,677).  Complainant has used the PLANET FITNESS mark continuously in commerce to promote its fitness clubs for over sixteen years.

 

Respondent, Larry Milo, registered the <planetfitnessmag.com> domain name on November 11, 2008.  The disputed domain name resolves to a website that advertises and markets a variety of fitness products which are competitive with Complainant’s business.

 

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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

 

The Panel finds that Complainant has established sufficient rights in the PLANET FITNESS mark through registration of the mark with the USPTO (Reg. No. 2,438,677 issued March 27, 2001) pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that Respondent’s <planetfitnessmag.com> domain name is confusingly similar to its PLANET FITNESS mark.  The <planetfitnessmag.com> domain name differs from Complainant’s mark in three ways: (1) the generic term “mag,” presumably meaning “magazine,” has been added to the end of the mark; (2) the space has been removed from the mark; and (3) the generic top-level domain (gTLD) “.com” has been added to the mark.  The Panel finds that both adding a generic term and removing a space are insufficient changes to distinguish a domain name from a mark it incorporates.  See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark).  The Panel also finds that the addition of the gTLD “.com” does not sufficiently distinguish a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Therefore, the Panel finds that because the changes to the PLANET FITNESS mark do not sufficiently distinguish the disputed domain name from Complainant’s mark, Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the <planetfitnessmag.com> domain name.  Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to submit a Response.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

 

Complainant contends that Respondent is not commonly known by the <planetfitnessmag.com> domain name nor has it ever been the owner or licensee of the PLANET FITNESS mark.  The WHOIS listing for the disputed domain name lists Respondent as “Larry Milo,” and Respondent has not produced any evidence contrary to Complainant’s contentions.  Because there is no evidence that Respondent has ever been known by any variant on the PLANET FITNESS mark, the Panel therefore finds that Respondent is not commonly known by the <planetfitnessmag.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Complainant contends that Respondent is marketing fitness products at the website that resolves from the <planetfitnessmag.com> domain name.  Previous panels have found that a competitive use of a domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a disputed domain name under Policy ¶ 4(c)(iii).  See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).  The Panel therefore finds that Respondent’s use of the <planetfitnessmag.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <planetfitnessmag.com> domain name under Policy ¶ 4(c)(iii). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that the diversion of Internet users to Respondent’s website is an intentional disruption of Complainant’s business by Respondent, who has taken advantage of the confusion between the <planetfitnessmag.com> domain name (registered November 11, 2008) and the PLANET FITNESS mark to attract Internet users who may be under the impression that they are at a website associated with Complainant.  The Panel finds that Respondent has intentionally caused the disruption of Complainant’s business through its diversion of Internet users, and that this is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).

 

Complainant also contends, and the Panel presumes, that Respondent gains commercially from its marketing of fitness products, which are in competition with Complainant’s fitness products, at the website resolving from the disputed domain name.  The Panel finds that Respondent is intentionally using the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s registration and use in bad faith.  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <planetfitnessmag.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  October 23, 2009

 

 

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