PFIP, LLC v. Zhou ZeHao
Claim Number: FA1102001374790
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Zhou ZeHao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetfitness.info>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2011; the National Arbitration Forum received payment on February 24, 2011.
On February 24, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <planetfitness.info> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2011 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@planetfitness.info. Also on February 25, 2011, 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 March 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant conducts a fitness business focusing on fitness instruction, training and the sale of athletic clothing.
Complainant operates its business under the PLANET FITNESS service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,698,976, registered March 25, 2003).
Respondent registered the disputed <planetfitness.info> domain name on January 21, 2011.
This domain name resolves to a website displaying links to and advertisements for the websites of Complainant’s competitors in the fitness industry.
Respondent’s <planetfitness.info> domain name is identical to Complainant’s PLANET FITNESS mark.
Respondent is not commonly known by the disputed domain name, and Respondent has never received authorization from Complainant to use the PLANET FITNESS mark.
Respondent does not have any rights to or legitimate interests in the domain name <planetfitness.info>.
Respondent registered and uses the same domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Under Policy ¶ 4(a)(i), Complainant has demonstrated its rights in the PLANET FITNESS service mark by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence, it being sufficient under the Policy that a complainant can demonstrate such rights in some jurisdiction).
Respondent’s <planetfitness.info> domain name is substantively identical to the PLANET FITNESS service mark. Respondent uses Complainant’s entire mark, and merely removes the space between the terms of the mark and adds the generic top-level domain (gTLD) “.info.” These alterations of the mark in forming the contested domain name do not result in a unique domain name under Policy ¶ 4(a)(ii). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to a complainant’s mark because:
simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s …
mark under Policy ¶ 4(a)(i).
See also PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to a complainant’s PEPSICO trademark under the Policy).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights to or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of making out a prima facie showing in support of this allegation. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has met its burden under this head of the Policy, thus shifting the burden to Respondent to show that it has rights to or legitimate interests in the disputed domain name. Respondent having failed to respond to the allegations of the Complaint filed in these proceedings, we may therefore presume that Respondent lacks rights to or legitimate interests in the <planetfitness.info> domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and that Respondent has never received authorization from Complainant to use the PLANET FITNESS mark. Moreover, the pertinent WHOIS information lists the registrant of the disputed domain name only as “Zhou ZeHao,” which is not similar to the disputed domain name. Accordingly, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name within the meaning of ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the disputed <coppertown.com> domain name, and so had no rights to or legitimate interests in the domain, where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003):
Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent … is not commonly known by the name … in any derivation.
We also observe that Complainant asserts, without objection from Respondent, that the disputed domain name resolves to a website being used by Respondent to post advertisements for and links to the websites of Complainant’s competitors in the fitness business. In the circumstances here obtaining, we may comfortably presume that Respondent benefits financially from the receipt of click-through fees associated with the visits of Internet users to the websites resolving from these sponsored links. Therefore, we conclude that the use of the disputed domain name as alleged is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name, which was confisingly similar to a complainant’s mark, to operate a portal website with hyperlinks to various third-party websites, some of which may be in competition with the business of a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of a disputed domain name to operate a website displaying links to websites featuring goods and services competing with the business of a complainant was not 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)).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s <planetfitness.info> domain name resolves to a website displaying links to the websites of Complainant’s fitness industry competitors. This use of the domain disrupts Complainant’s business because Internet users searching for Complainant’s website may be redirected to competing websites displaying competing products. Respondent’s use of the domain name as alleged is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name, which was confusingly similar to a complainant’s mark, to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors, represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004):
Respondent is referring Internet traffic that seeks out the … domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent presumably receives click-through fees in return for redirecting unsuspecting Internet users to websites that compete with Complainant’s fitness business. Internet users are likely to become confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website and posted hyperlinks. Respondent has thus engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <planetfitness.info> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 1, 2011
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