PFIP, LLC v. Gary Kozlowski
Claim Number: FA1204001438382
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Gary Kozlowski (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetfatness.com>, registered with GoDaddy.com, LLC.
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2012; the National Arbitration Forum received payment on April 6, 2012.
On April 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <planetfatness.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@planetfatness.com. Also on April 12, 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.
A timely Response was received and determined to be complete on May 2, 2012.
Complainant’s Additional Submission was received on May 4, 2012 and deemed compliant with Supplemental Rule 7.
On May 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims:
B. Respondent
C. Additional Submissions
1 - The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used 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."
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.
Complainant began using its PLANET FITNESS mark over 16 years ago in connection with its fitness club business. To demonstrate its rights in the PLANET FITNESS mark for the purposes of Policy ¶ 4(a)(i), Complainant provides the Panel with copies of its trademark registration certificates with the USPTO for its PLANET FITNESS mark (e.g., Reg. No. 2,438,677 registered March 27, 2001). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005), the panels found that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). The Panel finds that Complainant owns rights in its PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i).
Also under Policy ¶ 4(a)(i), Complainant argues that Respondent’s <planetfatness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. Complainant supports this argument by noting that the disputed domain name features a misspelling of Complainant’s mark, exchanging the letter “i” for the letter “a,” and the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name does not contain the space found in Complainant’s mark. In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), and Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000), the panels determined that the replacing of one letter for another to create a misspelling of a complainant’s mark did not adequately distinguish a disputed domain name from a complainant’s mark. Furthermore, the panels in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), held that the removal of a space and the addition of a gTLD also fail to adequately distinguish a disputed domain name. The Panel finds that Respondent’s <planetfatness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy.
Complainant avers that Respondent is not commonly known by the <planetfatness.com> domain name or Complainant’s PLANET FITNESS mark. Complainant argues that Respondent does not own any rights in the PLANET FITNESS mark. The Panel notes that the WHOIS information lists “Gary Kozlowski” as the registrant of the <planetfatness.com> domain name, which the Panel finds is not similar to the disputed domain name. The Panel further notes that Respondent does not contend that it is commonly known by the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panels chose to focus on the WHOIS information as evidence that a respondent is not commonly known by a disputed domain name. In this case, the Panel finds that the WHOIS information, along with the other evidence in the record, indicates that Respondent is not commonly known by the <planetfatness.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent’s disputed domain name resolves to a website that contains hyperlinks resolving to the websites of unrelated third parties and Complainant’s competitors. Complainant provides a screenshot of the resolving website in support of its claims. See Complainant’s Exhibit C. Complainant further contends that Respondent receives click-through fees from the hyperlinks. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), and Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panels failed to find rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii) when the respondent used the disputed domain name to host competing hyperlinks from which the respondent received click-through fees. Thus, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <planetfatness.com> domain name.
Complainant rejects Respondent’s arguments regarding Respondent’s intentions to use the <planetfatness.com> domain name to host a “gripe” website. Complainant claims that Respondent does not currently use the disputed domain name for this purpose and that Respondent has had many months to show some progress toward this intended use, which Respondent has not done. In Franzus Co. v. Cotner, FA 125365 (Nat. Arb. Forum Nov. 7, 2002), and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panels found that a respondent must show demonstrable preparations to use the disputed domain name for the stated purpose and that unsupported assertions are not sufficient. The Panel concludes that Respondent failed to present evidence of its demonstrable preparations to use the disputed domain name under Policy ¶ 4(a)(ii).
Finally, the Panel notes that Respondent argues that it is not responsible for the content of the resolving website and does not commercially benefit from click-through fees. Respondent claims that the content is provided by GoDaddy and that GoDaddy collects any earned revenue. However, the panels in State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), and Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), held that a respondent is ultimately responsible for the content of the resolving website. Therefore, the Panel rejects Respondent’s arguments under Policy ¶ 4(a)(ii) that it was not responsible for the content of the resolving website.
Complainant argues that Respondent registered and uses the <planetfatness.com> domain name in bad faith because Respondent is disrupting Complainant’s business. Complainant claims that Respondent hosts hyperlinks on the resolving website that resolve to Complainant’s competitors in the fitness industry. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), the panels determined that the hosting of competing hyperlinks on a website resolving from a confusingly similar disputed domain name can disrupt a complainant’s business and demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). The Panel agrees, and finds that Respondent is disrupting Complainant's business under the Policy.
Complainant also asserts that Respondent registered and uses the <planetfatness.com> domain name to attract Internet users by creating Internet user confusion as to Complainant’s affiliation with the domain name. Complainant claims that Respondent redirects these Internet users to other websites for commercial gain. As noted above, Complainant believes that Respondent commercially benefits from the hyperlinks found on the resolving website by receiving click-through fees. The panels in TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), and BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), found bad faith registration and use when the respondent uses the confusingly similar disputed domain name to host competing hyperlinks from which the respondent receives click-through fees. The Panel finds that Respondent registered and uses the <planetfatness.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further contends that Respondent registered and uses the <planetfatness.com> domain name in bad faith because Respondent is guilty of typosquatting. Complainant claims that Respondent purposefully registered a disputed domain name that differs from Complainant’s mark by a single letter, which Complainant argues is evidence of typosquatting. In Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panels found the registration and use of disputed domain names that contain common misspellings of a complainant’s mark were evidence of typosquatting and lead to a finding of bad faith registration and use. The Panel determines that Respondent is guilty of typosquatting, and Respondent is guilty of Policy ¶ 4(a)(iii) bad faith registration and use of the <planetfatness.com> domain name.
Complainant alleges that Respondent was aware of Complainant’s rights in the mark when Respondent registered the disputed domain name. Complainant argues that Respondent had actual and constructive knowledge of Complainant's rights in the PLANET FITNESS mark based on Complainant’s trademark registrations with the USPTO and the confusingly similar nature of the <planetfatness.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
As noted under Policy ¶ 4(a)(ii), while Respondent claims that it is not responsible for the content of the resolving website, the Panel concludes that Respondent is ultimately responsible for any content found on the resolving website under Policy ¶ 4(a)(iii). See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees ..”).
The Panel also notes that Complainant, in its Additional Submission, argues that Respondent is affiliated with one of Complainant’s competitors, Fitness 24. Complainant claims that Fitness 24 and Complainant both operate fitness clubs in Utica, Michigan. Complainant argues that Respondent is affiliated with Fitness 24 because Respondent lives in Utica, registered the disputed domain name at the same time Fitness 24 opened, and uses the same lawyer Fitness 24 uses. Complainant contends that Fitness 24 will financially benefit from Respondent’s use of the disputed domain name to offer criticism of Complainant. Based on this evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under 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 <planetfatness.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: May 21, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page