PFIP, LLC v. shouming liu
Claim Number: FA1210001466028
PARTIES
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is shouming liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetfitnss.com>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012.
On October 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <planetfitnss.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 October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@planetfitnss.com. Also on October 9, 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 November 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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. 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
1. Complainant provides a number of gym and exercise-related services under the PLANET FITNESS mark.
2. Complainant owns trademark registrations of the PLANET FITNESS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,438,677 registered March 27, 2001).
3. The <planetfitnss.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
4. Respondent is not commonly known by the disputed domain name.
5. The <planetfitnss.com> domain name resolves to a website which features the name “Planetfitnss.com” across the top and comprises a portal for third-party websites marketing a variety of gym and fitness services, including competitors of Complainant.
6. Respondent must have had notice of Complainant's rights in the PLANET FITNESS mark prior to registration of the disputed domain name because of the domain name’s similarity to Complainant’s mark.
7. Respondent’s registration of the disputed domain name evidences typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its PLANET FITNESS mark.
2. Respondent’s <planet fitnss> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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.
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.”).
Complainant claims that its registrations of the PLANET FITNESS mark with the USPTO (e.g., Reg. No. 2,438,677 registered March 27, 2001) establish its rights in the mark pursuant to Policy ¶ 4(a)(i). The Panel agrees, finding that Complainant’s registration with the USPTO is indeed sufficient to confer rights in the mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The Panel makes such a finding despite the fact that Complainant has registered its mark in the United States, while Respondent operates in China. See 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 also claims that the <planetfitnss.com> domain name is confusingly similar to its PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i). The Panel finds that the disputed domain name omits the final “e” from Complainant’s while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither change sufficiently distinguishes the disputed domain name from Complainant’s mark with respect to Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Further, the Panel notes that the disputed domain name also removes the space from between the terms of the mark, which the Panel determines to be insignificant under Policy ¶ 4(a)(i). 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)). The Panel concludes that Respondent’s <planetfitnss.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark pursuant to 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.”).
Complainant asserts that Respondent is not commonly known by the PLANET FITNESS mark or PLANET FITNSS names. The Panel expands this argument to include the assertion that Respondent is not commonly known by any domain names derivative of those terms, including the <planetfitnss.com> domain name. The Panel notes that the WHOIS information for the disputed domain name identifies the domain name registrant as “shouming liu.” The Panel fails to find any similarity between this name and the <planetfitnss.com> domain name. The Panel notes that Respondent in this case has failed to satisfy its burden of providing a Response. Without such a submission, the Panel determines that there is insufficient evidence in the record to indicate that Respondent is in fact commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 contends that Respondent’s use of the <planetfitnss.com> domain name to resolve to a website featuring links to competing gym and fitness services cannot constitute 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 notes that previous panels have refused to find rights or legitimate interests where a disputed domain name resolves to site featuring competing hyperlinks. 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)). The Panel therefore holds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that “Respondent is intending to, and is, in fact, disrupting the business of the Complainant and tarnishing the distinctiveness and reputation of the Complainant, its trademark and its business.” The Panel finds that Respondent’s website housed at the <planetfitnss.com> domain name contains “pay-per-click” links to Complainant’s competitors, whereby Respondent collects a fee every time one of its links is accessed. The Panel finds that Respondent’s operation at a confusingly similar domain name will undoubtedly result in some number of Internet users mistakenly visiting Respondent’s site, when they had intended to visit Complainant’s, and that once these users arrive at Respondent’s site, they are exposed to links advertising services that compete with Complainant’s services. The Panel finds that registration and use of the disputed domain name for this purpose constitutes bad faith disruption of Complainant’s business under 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent’s registration and use of the <planetfitnss.com> domain name also demonstrates attraction for commercial gain in bad faith under Policy ¶ 4(b)(iv). The Panel reasons that by operating a “pay-per-click” website, Respondent realizes a commercial gain from the operation of its website, and Respondent seeks to draw traffic to its site by using a confusingly similar domain name. The Panel notes that previous panels have found a respondent’s attempt to commercially benefit from creating this sort of confusion to demonstrate bad faith attraction for commercial gain as defined by Policy ¶ 4(b)(iv). See 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). The Panel concludes that Respondent’s registration and use of the <planetfitnss.com> domain name exhibits bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had notice of Complainant's rights in the PLANET FITNESS mark prior to registration of the disputed domain name because of the domain name’s similarity to Complainant’s mark. 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 <planetfitnss.com> 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 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).
Finally, Complainant argues that Respondent’s registration of the <planetfitnss.com> domain name constitutes typosquatting, as Respondent’s domain name intentionally omits a single letter from Complainant’s mark in order to “intercept and siphon off traffic from its intended destination.” The Panel finds that Respondent’s registration of the disputed domain name does in fact amount to typosquatting. The Panel further finds that this typosquatting activity is evidence of bad faith under Policy ¶ 4(a)(iii) in and of itself. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to 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 <planetfitnss.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 21, 2012
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