PFIP, LLC v. Ahmed Almaqrhi
Claim Number: FA1201001426463
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Ahmed Almaqrhi (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 25, 2012; the National Arbitration Forum received payment January 25, 2012.
On January 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2012, 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@24hr-planet-fitness.com, postmaster@24hr-planet-fitness.net, postmaster@24hr-planet-fitness.info, and postmaster@24hr-planet-fitness.mobi. Also on February 2, 2012, 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 February 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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" 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 a Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> are confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent has no rights to or legitimate interests in the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names.
3. Respondent registered and used the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PFIP, LLC., uses the PLANET FITNESS mark primarily in connection with its physical fitness club franchising business. Complainant registered the PLANET FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,438,677 registered March 27, 2001).
Respondent, Ahmed Almaqrhi, registered the disputed domain names November 11, 2011. The <24hr-planet-fitness.com> domain name resolves to a website that provides links to third-party sites offering nutritional products and other products unrelated to Complainant. The <24hr-planet-fitness.net>, <24hr-planet-fitness.info> and <24hr-planet-fitness.mobi> domain names resolve to websites featuring links to third-party businesses, which compete with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Previous panels have determined, and the immediate Panel agrees, that registration of a mark with the USPTO is sufficient to confer rights in a mark under Policy ¶ 4(a)(i). See 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).”); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). The Panel finds that Complainant established rights in the SNAP FITNESS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 2,438,677 registered March 27, 2001). The Panel finds that the fact that Respondent operates outside of the United States is irrelevant. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names are confusingly similar to its PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i). Each of the disputed domain names includes Complainant’s PLANET FITNESS mark, while adding the number and letters “24hr,” two hyphens, and a generic top-level domain (“gTLD”). Each disputed domain name also deletes the space between the words in Complainant’s mark. The addition of hyphens or gTLDs to a complainant’s mark do not distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, the inclusion of a number and letters like “24hr” does not create a distinctive domain name. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Finally, the omission of the spaces between words in a complainant’s mark does not create a new, distinctive domain name. 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Given these findings, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
UDRP precedent indicates that Complainant bears the initial burden of presenting a prima facie case. Once this burden has been satisfied, as it has been in the immediate case, the burden of proof then shifts to Respondent to provide evidence refuting Complainant’s claims. 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 in this case satisfied its burden, while Respondent has not. Some panels have construed similar facts as an admission that Respondent lacks rights or legitimate interests in a disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). In the interests of fairness, however, this Panel still examines the record to determine whether such rights or legitimate interests exist under the factors of Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, or <24hr-planet-fitness.mobi> domain names within the meaning of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Ahmed Almaqrhi,” which the Panel finds bear is not nominally similar to any of the disputed domain names. Respondent’s failure to meet its burden of providing a Response leaves the record totally devoid of evidence tending to show that Respondent is commonly known by the disputed domain name. Given the lack of evidence to the contrary, the Panel must conclude that Respondent is not commonly known by the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, or <24hr-planet-fitness.mobi> domain names pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).
Complainant further alleges that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The <24hr-planet-fitness.com> domain name resolves to a website that provides links to third-party sites offering nutritional products and other products unrelated to Complainant. The <24hr-planet-fitness.net>, <24hr-planet-fitness.info> and <24hr-planet-fitness.mobi> domain names resolve to websites featuring links to third-party businesses, which compete with Complainant. Previous panels have held that neither resolution to a site featuring unrelated third-party links nor resolution to a site featuring competing third-party links constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also 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)). Accordingly, the Panel holds that Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s registration and use of the <24hr-planet-fitness.net>, <24hr-planet-fitness.info> and <24hr-planet-fitness.mobi> domain names to resolve to websites featuring links to competing businesses disrupts Complainant’s business and supports findings of bad faith under Policy ¶ 4(b)(iii). The confusingly similar nature of each domain name substantially increases the likelihood that visitors to Respondent’s sites will have originally intended to visit Complainant’s site in order to view information relating to Complainant’s business. When these visitors are redirected to Respondent’s website and exposed to links to businesses in direct competition with Complainant, Complainant’s business suffers and is disrupted for the purposes of Policy ¶ 4(b)(iii). The Panel finds that Respondent’s registration and use of the <24hr-planet-fitness.net>, <24hr-planet-fitness.info> and <24hr-planet-fitness.mobi> domain names disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant further alleges that Respondent’s registration and use of the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names constitute bad faith attraction for commercial gain in violation of Policy ¶ 4(b)(iv). The Panel assumes that Respondent collects click-through fees from the operation of each of its sites, thereby realizing a commercial gain through their registration and use. Respondent’s decision to adopt a confusingly similar domain name to house each site suggests that Respondent intends to create confusion as to Complainant’s affiliation with the sites, benefitting from the goodwill that Complainant’s PLANET FITNESS mark has garnered. The evidence permits an inference by the Panel that Respondent’s intent in causing this confusion is to draw increased traffic to its sites, which in turn produces a greater commercial gain for Respondent. The Panel finds that this type of business model demonstrates bad faith registration and use under 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 the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant also alleges that Respondent must have had actual notice of Complainant's rights in the PLANET FITNESS mark prior to registration of the disputed domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <24hr-planet-fitness.com>, <24hr-planet-fitness.net>, <24hr-planet-fitness.info>, and <24hr-planet-fitness.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 14, 2012
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