PFIP, LLC v. TMX / Tony Maxson
Claim Number: FA1305001497728
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is TMX / Tony Maxson (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gymtimidation.com>, registered with Register.com.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.
On May 3, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <gymtimidation.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 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@gymtimidation.com. Also on May 6, 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.
A timely Response was received and determined to be complete on May 22, 2013.
On May 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
- it uses the GYMTIMIDATION mark in furtherance of its business in marketing services in its 600 Planet Fitness health and fitness clubs throughout most of the United States.
- it has applied for trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,812,993 Published for Opposition on April 9, 2013), and in several other jurisdictions, including with the Canadian Intellectual Property Office (“CIPO”) (Application No. 1,611,076 filed January 23, 2013).
- Respondent’s domain name, registered on January 18, 2013, takes the entire GYMTIMIDATION mark and merely adds the generic top-level domain (“gTLD”) “.com” at the end.
- Respondent has never been known by the GYMTIMIDATION mark and is neither a licensee nor authorized user of Complainant’s marks.
- Respondent is using the domain name to operate a parked webpage, filled with third-party hyperlinks, with the terms “Coming soon” on the website.
- Respondent is intending to disrupt Complainant’s business.
- Respondent has registered and used the domain name in a bad faith attempt to confuse Internet users for Respondent’s own financial gain.
- Internet users are likely to see the words “Coming soon” and believe that Respondent’s domain name and the hyperlinks therein are being hosted by, or on behalf of, Complainant.
- Respondent was well aware of Complainant’s rights in the GYMTIMIDATION mark.
B. Respondent
Respondent contends that:
- he is “Tony Maxson”, but provides no substantive contentions.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name is identical to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
3) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interest in respect of the domain name.
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 claims that it uses the GYMTIMIDATION mark in furtherance of its business in marketing services in its 600 Planet Fitness health and fitness clubs throughout the United States. It has applied for trademark registrations with the USPTO (Serial No. 85/812,993 filed December 31, 2012), and with the CIPO (Application No. 1,611,076 filed January 23, 2013). Although Complainant has not yet been granted a trademark registration with the USPTO or with the CIPO, a registration is not necessary in order for a complainant to establish rights in its mark, if Complainant can demonstrate common law rights in its mark in satisfaction of Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (Policy does not require a trademark be registered in order to establish rights in the mark).
Complainant alleges use of the mark beginning in January 2013. Complainant uses the GYMTIMIDATION mark on the homepage of its website. Respondent does not deny these allegations. A complainant may prove common law rights in a mark through a showing of a variety of factors including but not limited to sales figures, evidence of actual use, marketing and advertising expenses, and a starting date for the use. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011); Williams v. WhoisGuard Protected, FA 1043246 (Nat. Arb. Forum Sept. 11, 2007) (complainant established common law rights where the popularity of complainant’s website identical to complainant’s trademark had allowed complainant to generate substantial revenue from advertisements featured on the site). Complainant has met this burden and the Panel finds that Complainant has common law rights in the GYMTIMIDATION for purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gymtimidation.com> domain name is identical to the mark because it takes the entire GYMTIMIDATION mark and merely adds the gTLD “.com” at the end of the mark. The addition of a gTLD in itself does nothing at all differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel finds that the <gymtimidation.com> domain name is identical to the mark under the Policy.
Respondent makes no contentions with regards 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.”).
Respondent has never been known by the GYMTIMIDATION mark, and therefore has not been known by the identical <gymtimidation.com> domain name. Respondent is neither a licensee nor authorized user of Complainant’s marks. Respondent identifies himself as “Tony Maxson” in its Response, but provides no other arguments or evidence to establish a link to the domain name. As a result of Respondent’s identifying information and Complainant’s claim that Respondent has no license or authorization to use the GYNTIMIDATION mark, the Panel concludes that Respondent is not commonly known by the <gymtimidation.com> domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is using the <gymtimidation.com> domain name to operate a parked webpage filled with third-party hyperlinks. Complainant argues that because Respondent is only using this domain name to host hyperlinks, Respondent cannot establish a bona fide offering of goods or services, or a legitimate noncommercial or fair use of this domain name. The <gymtimidation.com> domain name resolves to a website providing hyperlinks to mainly unrelated technology and Internet-related services, along with a prompt informing the Internet user that the domain name is “COMING SOON to REGISTER.COM.” The use of an identical domain name for purposes of soliciting an array of unrelated products and services through hyperlinks is not 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 domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant also argues that Respondent has registered and used the domain name in a bad faith attempt to confuse Internet users for Respondent’s own financial gain. Complainant states that Internet users are likely to see the words “Coming soon” and believe that Respondent’s <gymtimidation.com> domain name and the hyperlinks therein are being hosted by, or on behalf of, Complainant. The content on the disputed domain name consists primarily of a variety of hyperlinks to various unrelated services. Respondent has registered and used this domain name bad faith under Policy ¶ 4(b)(iv) because Respondent is using an identical domain name to shuttle Internet users to various unrelated services so that Respondent can enjoy advertising revenue. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant finally argues that Respondent was well aware of Complainant’s rights in the GYMTIMIDATION mark. Complainant claims that it has marketed the GYMTIMIDATION mark and related services through its “Planet Fitness” stores around the United States. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name the Panel finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions with regards 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 <gymtimidation.com> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: June 6, 2013
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