PFIP, LLC v. Ahmed Almaqrhi
Claim Number: FA1211001470567
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 NAME
The domain name at issue is <24hr-planet-fitness.tv>, 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 November 9, 2012; the National Arbitration Forum received payment on November 9, 2012.
On November 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <24hr-planet-fitness.tv> 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 November 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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.tv. Also on November 15, 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 December 19, 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.
1. Complainant is the owner of several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). See Complainant’s Exhibit A.
2. Respondent’s <24hr-planet-fitness.tv> domain name is confusingly similar to Complainant’s PLANET FITNESS mark, as Respondent uses the entire mark in combination with the generic term “24,” hyphens, and the country-code top-level domain (“ccTLD”) “.tv.” The additions of these elements does not distinguish a disputed domain name for the purposes of the Policy.
3. Respondent has never been known by the term “Planet Fitness,” and does not own any rights in the PLANET FITNESS mark.
4. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is instead using the domain name to provide advertising links to third-party websites, including those of Complainant’s competitors. See Complainant’s Exhibit C.
5. Respondent is intending to, and is in fact, disrupting Complainant’s business and tarnishing the distinctiveness and reputation of Complainant, its trademarks, and its business.
6. Respondent is intending to commercially gain through its use of the disputed domain name to create confusion with Complainant’s PLANET FITNESS mark.
7. Respondent is using Complainant’s PLANET FITNESS mark with actual knowledge of Complainant’s trademark in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its PLANET FITNESS mark.
2. Respondent’s <24hr-planet-fitness.tv> 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 asserts, and provides evidence to show, that it is the owner of several trademark registrations with the USPTO for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). See Complainant’s Exhibit A. The Panel finds that despite Respondent’s location in Canada, Complainant’s trademark registrations of the PLANET FITNESS mark with the USPTO are sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant further asserts that Respondent’s <24hr-planet-fitness.tv> domain name is confusingly similar to Complainant’s PLANET FITNESS mark, as Respondent uses the entire mark in combination with the generic terms “24” and “hr,” hyphens, and the ccTLD “.tv.” Complainant argues that the addition of these elements does not distinguish a disputed domain name for the purposes of the Policy. The Panel agrees and finds that the <24hr-planet-fitness.tv> domain name is confusingly similar to Complainant’s PLANET FITNESS mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”).
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 argues that Respondent has never been known by the term “Planet Fitness” and does not own any rights in the PLANET FITNESS mark. The Panel notes that the WHOIS information for the <24hr-planet-fitness.tv> domain name identifies “Ahmed Almaqrhi” as the registrant. The Panel finds that since this is the only information on record to this point, 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).
Further, Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is instead using the domain name to provide advertising links to third-party websites, including those of Complainant’s competitors. See Complainant’s Exhibit C. The Panel notes that Complainant’s screenshot appears to show a parked website featuring several clickable links with headings such as “la fitness,” “Sole – Official Site,” “24HourFitness.com,” “Download Google Chrome,” and others. The Panel finds that such use of the disputed domain name does not amount to 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Further, the Panel finds that although the disputed domain name is “parked for FREE, courtesy of GoDaddy.com,” Respondent remains responsible for the content displayed through its domain name. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Complainant contends that Respondent is intending to, and is in fact, disrupting Complainant’s business and tarnishing the distinctiveness and reputation of Complainant, its trademarks, and its business. As noted above, the disputed domain name, according to Complainant’s arguments and evidence, resolves to a parked website that features various links to third-party businesses, some of which offer competing fitness services to those offered under the PLANET FITNESS mark. The Panel finds that such use of the disputed domain name is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant argues that Respondent is intending to commercially gain through its use of the disputed domain name to create confusion with Complainant’s PLANET FITNESS mark. The Panel agrees and finds that Respondent has registered and is using the <24hr-planet-fitness.tv> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent has merely parked the disputed domain name and allowed various third-party links to be placed on the resolving web page. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant argues that Respondent is using Complainant’s PLANET FITNESS mark with actual knowledge of Complainant’s trademark in bad faith. However, Complainant does not expand on this argument or explain how Respondent had actual knowledge of Complainant’s rights in the PLANET FITNESS mark. However, the Panel finds that the circumstances indicate that Respondent had actual knowledge of the mark prior to registering the disputed domain name. The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
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.tv> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 2, 2013
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