PFIP, LLC v. Paydues Inc
Claim Number: FA1110001411907
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Paydues Inc (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <planetfitnessfranchise.net>, registered
with GoDaddy.com, Inc.
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 October 18, 2011; the National Arbitration Forum received payment on October 18, 2011.
On October 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <planetfitnessfranchise.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@planetfitnessfranchise.net. Also on October 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 14, 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 uses the PLANET FITNESS trademark and service mark in connection with the operation of its fitness centers and the marketing of related apparel and other goods.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office ("USPTO") for its PLANET FITNESS mark (including Reg. No. 2,438,677, registered March 27, 2001).
Respondent registered the disputed <planetfitnessfranchise.net> domain name on July 7, 2011.
Respondent’s domain name resolves to a website that contains Complainant’s marks while purporting to offer a “Planet Fitness Franchise Toolkit” and a free gift if Internet users enter their names, mailing addresses, telephone numbers and e-mail addresses.
Respondent’s <planetfitnessfranchise.net> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
Respondent is neither commonly known by nor licensed to register the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <planetfitnessfranchise.net>.
Respondent registered and uses the <planetfitnessfranchise.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and 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 representa-tions 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 UDRP 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.
Complainant has rights in its PLANET FITNESS trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that a complainant had rights in the METLIFE mark as a result of its registration of the mark with the trademark authority of the United States); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007), holding that:
[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
The disputed <planetfitnessfranchise.net> domain name is confusingly similar to Complainant’s PLANET FITNESS mark under Policy ¶ 4(a)(i) because the domain name merely adds the generic term “franchise” and the generic top-level domain (“gTLD”) “.net,” as well as removing the space from between the terms of the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark of another and the addition of a gTLD in forming a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i)); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because a contested domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is confusingly similar to the mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges, pursuant to Policy ¶ 4(a)(ii), that Respondent does not have rights to or legitimate interests in the <planetfitnessfranchise.net> domain name. Once Complainant makes out a prima facie case in support of this allegation, the burden shifts to Respondent to prove that it does have such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case under this head of the Policy. Therefore, and owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the <planetfitnessfranchise.net> domain name sufficient to satisfy the requirements of the Policy. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Nonetheless, we will examine the record before us, in light of the several 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 begin by observing that Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by nor licensed to register the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain only as “Paydues Inc.,” which does not resemble the contested domain name. On this record we conclude that Respondent is not commonly know by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly know by the <shoredurometer.com> and <shoredurometers.com> domain names, and so had failed to show that it had rights to or legitimate interests in them where the relevant WHOIS information identified the registrant only as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t” and there was no other evidence in the record to suggest that that respondent was commonly know by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvavations.com>] domain name.”).
We also note that Complainant contends, without objection from Respondent, that Respondent’s <planetfitnessfranchise.net> domain name resolves to a website that contains Complainant’s marks while purporting to offer a “Planet Fitness Franchise Toolkit” and a free gift if users enter their names, mailing addresses, telephone numbers and e-mail addresses. IN the circumstances here presented, we may presume that Respondent uses this information to profit by sending spam e-mails to Internet users that enter their information believing they are on a website sponsored by Complainant. Thus Respondent’s website intentionally uses Complainant’s marks to lure Internet users into providing their personal information. Such use has been found not to 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), and we agree. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitates a complainant’s credit application website and attempts fraudulently to acquire personal information from that complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <planetfitnessfranchise.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), in that it is using the domain to attract Internet users to its website for commercial gain by creating a likelihood of confusion between the domain name and Complainant’s PLANET FITNESS trademark and service mark. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that a disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) by means of a respondent’s registration and use of the domain to attract Internet users to its fraudulent website by using a complainant’s mark and likeness); see also 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 a complainant’s website to its own website, likely profiting in the process).
Likewise, it is evident that Respondent is engaged in a “phishing” scheme in order to profit from the misuse of Internet users’ personal information as alleged in the Complaint. This demonstrates that Respondent’s registration and use of the domain is in bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use where a respondent used a contested domain name to redirect Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a respondent registered and used a domain name in bad faith because it redirected Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s prospective associates).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) has been satisfied.
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 <planetfitnessfranchise.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 25, 2011
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