PFIP, LLC v. Domeanz Alejandro (c/o Rebel.com Privacy Service)
Claim Number: FA1005001324170
Complainant is PFIP,
LLC (“Complainant”), represented by Teresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwplanetfitness.com>, registered with Rebel.com Corp.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2010.
On May 17, 2010, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <wwwplanetfitness.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 May 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwplanetfitness.com by e-mail. Also on May 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <wwwplanetfitness.com> domain name.
3. Respondent registered and used the <wwwplanetfitness.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PFIP, LLC, owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its PLANET FITNESS mark (e.g., Reg. No. 2,438,677 issued March 27, 2001) in connection with its health and fitness services business.
Respondent registered the <wwwplanetfitness.com> domain name on February 20, 2006. The disputed domain name resolves to a website that contains a commercial search engine and a hyperlink list that contains hyperlinks to Complainant’s competitors in the health and fitness services industry.
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.
The Panel determines Complainant has established rights in its PLANET FITNESS mark under Policy ¶ 4(a)(i) as Complainant holds multiple trademark registrations with the USPTO (e.g., Reg. No. 2,438,677 issued March 27, 2001) for the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements 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 alleges that Respondent’s <wwwplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. The disputed domain name incorporates Complainant’s entire mark into the disputed domain name with the addition of the prefix “www” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of the “www” prefix did not alter the confusing similarity of a disputed domain name as Internet users often make the mistake of forgetting to add a period between the disputed domain name and the “www” prefix. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters “www” are not distinct in the “Internet world” and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark). Prior panels have further found that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because all domain names require some type of TLD. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <wwwplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <wwwplanetfitness.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <wwwplanetfitness.com> domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant claims that Respondent is not commonly known by the <wwwplanetfitness.com> domain name. Complainant argues that Respondent does not own any rights in Complainant’s PLANET FITNESS mark and that Complainant has not granted Respondent a license to use the PLANET FITNESS mark. The WHOIS information identifies the Respondent as “Domeanz Alejandro (c/o Rebel.com Privacy Service),” which the Panel finds is not similar to <wwwplanetfitness.com>. Due to Respondent’s failure to respond to the Complaint, Respondent has failed to present any evidence in support of a finding that Respondent is commonly known by the disputed domain name. Based on the evidence in the record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <wwwplanetfitness.com> domain name resolves to a website that features a commercial search engine and a list of hyperlinks, some of which resolve to third-party competitors of Complainant in the health and fitness services industry. Complainant alleges that Respondent commercially benefits from this use of the disputed domain name. The Panel holds that Respondent’s use of the confusingly similar disputed domain name for that purpose does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the <wwwplanetfitness.com> domain name disrupts Complainant’s health and fitness services business. Respondent uses the disputed domain name to resolve to a website containing hyperlinks to Complainant’s competitors and Complainant claims that Internet users interested in Complainant’s health and fitness services may purchase similar services from a competitor solely due to Respondent’s use of the confusingly similar disputed domain name. The Panel finds Respondent’s use of the <wwwplanetfitness.com> domain name disrupts Complainant’s health and fitness services business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Moreover, Complainant claims that Respondent commercially benefits from its use of the <wwwplanetfitness.com> domain name to feature a commercial search engine and hyperlink list. The Panel presumes the hyperlinks contained on the resolving website are pay-per-click links that result in the receipt of click-through-fees for Respondent. Complainant claims that Internet users may become confused as to Complainant’s affiliation with and sponsorship of the disputed domain name. Complainant argues that Respondent is attempting to profit from this confusion. The Panel agrees and determines that Respondent’s use of the <wwwplanetfitness.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwplanetfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 16, 2010
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