PFIP, LLC v. Kft / ross brad
Claim Number: FA1211001473454
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Kft / ross brad (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetxfitness.com>, registered with eNom.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, eNom.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <planetxfitness.com> domain name is registered with eNom.com, Inc. and that Respondent is the current registrant of the name. eNom.com, Inc. has verified that Respondent is bound by the eNom.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 December 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@planetxfitness.com. Also on December 5, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant makes the following assertions:
1. Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the <planetxfitness.com> domain name.
(a) Complainant has rights in the PLANET FITNESS mark, used in connection with physical fitness instruction, health clubs, and related goods and services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001).
(b) The <planetxfitness.com> domain name is confusingly similar to the PLANET FITNESS mark. Respondent merely replaces the space between words with the letter “x” and adds the generic top-level domain (“gTLD”) “.com” to the PLANET FITNESS mark.
2. Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <planetxfitness.com> domain name.
(a) Respondent has never been known by the <planetxfitness.com> domain name.
(b) The disputed domain name resolves to a seemingly inactive fitness blog that allows users to comment and provide their e-mail address. The content that is displayed is taken from various other websites and thus the purpose of the disputed domain name is to collect and harvest visitor and commenter information and e-mail addresses with the intent to profit by selling the information.
3. Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <planetxfitness.com> domain name.
(a) Respondent’s registration and use of the <planetxfitness.com> domain name is disruptive to Complainant’s business.
(b) Respondent intended to attract, for commercial gain, Internet users to the <planetxfitness.com> domain name for commercial gain by misleading consumers into thinking the domain name is affiliated with Complainant. Internet users will confuse the <planetxfitness.com> domain name for being sponsored by Complainant and thus are misled and continue to Respondent’s website. The disputed domain name is confusingly similar to Complainant’s PLANET FITNESS mark and is related to similar services.
(c) Respondent’s use of Complainant’s trademark demonstrates that Respondent was aware of Complainant’s rights in the mark prior to the registration and use of the disputed domain name.
B. Respondent failed to submit a Response in this proceeding.
1. Respondent’s <planetxfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <planetxfitness.com> domain name.
3. Respondent registered or used the <planetxfitness.com> 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 contends that it has rights in the PLANET FITNESS mark, used in connection with physical fitness instruction, health clubs, and related goods and services. Complainant provides the Panel with evidence that Complainant is the owner of the USPTO registrations for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). See Complainant’s Exhibit A. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel held that the registration of a mark with a federal trademark authority is evidence of having established rights in the mark. Therefore, the Panel finds that Complainant has rights in the PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i).
Complainant next asserts that the <planetxfitness.com> domain name is confusingly similar to the PLANET FITNESS mark. Complainant argues that Respondent merely replaces the space between words with the letter “x” and adds the gTLD “.com” to the PLANET FITNESS mark. Panels have found that the addition of a single letter to a mark serves to increase, rather than decrease, confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Panels have also held that the deletion of spaces in a mark and the addition of a gTLD to a mark are changes which have no significance in a Policy ¶ 4(a)(i) analysis. 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)). Therefore, the Panel finds that Respondent’s <planetxfitness.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.”).
Complainant contends that Respondent lacks rights and legitimate interests in the <planetxfitness.com> domain name. Complainant asserts that Respondent has never been known by the <planetxfitness.com> domain name. The Panel notes that the WHOIS record for the <planetxfitness.com> domain name lists “Kft / ross brad” as the domain name registrant. Panels have found that the WHOIS record for a disputed domain name is strong evidence of whether a respondent is known by the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Therefore, the Panel finds that Respondent is not commonly known by the <planetxfitness.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s lack of rights and legitimate interests in the disputed domain name is clear given Respondent’s use of the <planetxfitness.com> domain name. Complainant asserts that the disputed domain name resolves to a seemingly inactive fitness blog that allows users to comment and provide their e-mail address. See Complainant’s Exhibit C. Complainant contends that the content that is displayed is taken from various other websites and thus the purpose of the disputed domain name is to collect and harvest visitor and commenter information and e-mail addresses with the intent to profit by selling the information. In HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), the panel held that the use of a disputed domain name to fraudulently acquire personal information about Internet users is not a use which enjoys the protections of Policy ¶¶ 4(c)(i) and 4(c)(iii). Therefore, the Panel finds that Respondent’s use of the <planetxfitness.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that the <planetxfitness.com> domain name was registered and is being used in bad faith. Complainant argues that Respondent’s registration and use of the <planetxfitness.com> domain name is disruptive to Complainant’s business. The Panel finds that Respondent registered and uses the <planetxfitness.com> domain name in bad faith as it is disruptive under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant also argues that Respondent’s bad faith is demonstrated because Respondent intended to attract, for commercial gain, Internet users to the <planetxfitness.com> domain name for commercial gain by misleading consumers into thinking the domain name is affiliated with Complainant. Complainant asserts that Internet users will confuse the <planetxfitness.com> domain name for being sponsored by Complainant and thus are misled and continue to Respondent’s website. Complainant notes that the disputed domain name is confusingly similar to Complainant’s PLANET FITNESS mark and is related to similar services. Complainant notes that the <planetxfitness.com> domain name resolves to a website where Respondent collects visitor and commenter information and e-mail addresses so that it may sell the information for a profit. Therefore, the Panel finds that Respondent’s bad faith is clear given that Respondent attempted to take advantage, for commercial gain, by creating a likelihood of confusion with the PLANET FITNESS mark pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that Respondent’s bad faith is also clear given Respondent’s fraudulent use of the <planetxfitness.com> domain name. Complainant notes that the disputed domain name resolves to a seemingly inactive fitness blog that allows users to comment and provide their e-mail address. Complainant argues that the content that is displayed is taken from various other websites and thus the purpose of the disputed domain name is to collect and harvest visitor and commenter information and e-mail addresses with the intent to profit by selling the information. Panels have found that attempting to fraudulently acquire Internet users’ personal information is evidence of a bad faith phishing scheme. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). Therefore, the Panel finds that Respondent registered and is using the <planetxfitness.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s use of Complainant’s trademark demonstrates that Respondent was aware of Complainant’s rights in the mark prior to the registration and use of the disputed domain name. Panels have found bad faith where a respondent had actual, as opposed to simply constructive, knowledge of a complainant’s rights in a mark. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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). Therefore, the Panel finds that Respondent registered and uses the <planetxfitness.com> 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 <planetxfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 21, 2013
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