PFIP, LLC v. ICS INC.
Claim Number: FA1302001485032
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwplanetfitness.com>, registered with TUCOWS, INC.
The undersigned 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2013; the National Arbitration Forum received payment on February 13, 2013.
On February 13, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <wwplanetfitness.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 February 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2013 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@wwplanetfitness.com. Also on February 13, 2013, 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 March 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has been using the PLANET FITNESS mark in connection with its franchising business for over nineteen years and has over 600 club locations throughout 48 states.
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).
The <wwplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. The <wwplanetfitness.com> domain name resolves to a website which displays the name “wwplanetfitness.com” across the top of the page and features links to third-party websites marketing a variety of health and fitness services, including competitors of Complainant.
Respondent has never been known by the term PLANET FITNESS. Complainant has not licensed its PLANET FITNESS mark for Respondent’s use.
Respondent is disrupting the business of Complainant.
Respondent uses the disputed domain name for the purpose of attracting, for commercial gain, internet users to a third-party website with the intention of misleading or confusing consumers into thinking that the third-party website originates with or is in some way associated with or connected with, sponsored, authorized or endorsed by Complainant.
Respondent’s registration of the <wwplanetfitness.com> domain name constitutes typosquatting activity.
In light of the fact that the website to which the disputed domain resolves features goods and services directly related to Complainant’s services, Respondent doubtless had actual knowledge of Complainant and its rights in the PLANET FITNESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its PLANET FITNESS mark.
Complainant’s trademark rights in PLANET FITNESS predate Respondent’s registration of at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
The <wwplanetfitness.com> domain name resolves to a website displaying the name “wwplanetfitness.com” across the top of the page and features links to third-party websites marketing a variety of health and fitness services, including those of Complainant’s competitors.
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.”).
Pursuant to Policy ¶4(a)(i), Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights
Complainant’s registration of its PLANET FITNESS mark with the USPTO is sufficient to confer it with rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). This is so even if Respondent operates in a country other than the United States. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name contains Complainant’s entire mark less the space between its terms and is preceded by the letters “ww.” The “ww” is reminiscent of the ‘www.’ URL prefix. In completing the at-issue domain name, Respondent simply added the generic top-level domain “.com.” to the second level domain name string. These differences between the at-issue domain name and Complainant’s mark are insufficient to distinguish the two under the Policy and therefore the Panel finds that Respondent’s <wwplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark under Policy ¶4(a)(i). See Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “ICS INC.” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is nevertheless commonly known by the at-issue domain name despite the contrary WHOIS indication. Therefore the Panel concludes that Respondent is not commonly known by the <wwplanetfitness.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Moreover, the at-issue domain name addresses a website which displays the name “wwplanetfitness.com” across the top of the page and features pay-per-click links to third-party websites. These websites market a variety of health and fitness services, including some that compete with Complainant’s services. Respondent is thus not using the <wwplanetfitness.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or in a manner that is a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that pursuant to Policy ¶4(a)(iii) Respondent acted in bad faith in registering and using the at-issue domain name.
First, Respondent is disrupting the business of Complainant through its registration and use of the <wwplanetfitness.com> domain name. Respondent’s display of hyperlinks at the <wwplanetfitness.com> website that market health and fitness services competing with those offered by Complainant, shows the requisite degree of competition between the parties to support a finding of bad faith 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)).
Second, Respondent uses the <wwplanetfitness.com> domain name for the purpose of attracting, for commercial gain, Internet users to the <wwplanetfitness.com> website with the intention of misleading or confusing consumers into thinking that Complainant is in some way associated with, connected to, or sponsored, authorized or endorsed by Complainant. The resulting consumer confusion as to Complainant’s affiliation with the <wwplanetfitness.com> website presumably increases traffic to the website. Respondent commercially benefits when accidental <wwplanetfitness.com> website visitors navigate away from the website via the displayed pay-per-click links. The forgoing circumstances demonstrate Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). 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).”).
Third, Respondent had actual knowledge of Complainant’s rights in the PLANET FITNESS mark when it registered the <wwplanetfitness.com> domain name. Respondent’s prior knowledge of the PLANET FITNESS mark is inferred from the similarities between the at-issue domain name and Complainant’s trademark and the obvious attempt to confound Internet users seeking Complainant by prefixing the mark with “ww” in forming the <wwplanetfitness.com> domain name. Registering and using an at-issue domain name with knowledge of another’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Finally, Respondent has attempted to draw traffic to its site by exploiting typographical errors made by Internet users who inadvertently type “wwplanetfitness.com” into their Internet browser in lieu of “www.planetfitness.com.” Since the <wwplanetfitness.com> domain name is a common typographical variant of Complainant’s mark, Respondent has engaged in typosquatting by registering the <wwplanetfitness.com> domain name. Respondent’s typosquatting further demonstrates its bad faith registration and use of the at-issue domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use 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 <wwplanetfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 24, 2013
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