PFIP, LLC v. Tanuja Murray / HDTV, LLC
Claim Number: FA1307001508964
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Tanuja Murray / HDTV, LLC (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <planetfitnesschannel.com> and <planetfitnessnetwork.com>, registered with GODADDY.COM, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2013; the National Arbitration Forum received payment on July 10, 2013.
On July 11, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 July 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@planetfitnesschannel.com, postmaster@planetfitnessnetwork.com. Also on July 12, 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 August 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that although the WHOIS information lists two different registrants, the mailing address, email address, and administrative contact information is identical for each registrant. Complainant asserts that the “Corporation Wiki” website, found at http://www.corporationwiki.com/Pennsylvania/Paoli/tanuja-s-murray/93491389.aspx, links the two Respondents. Further, Complainant notes that the “LinkedIn” page for T. Patrick Murray lists him as the CEO of HDTV, LLC. Therefore, Complainant claims, the two registrants are in fact the same entity.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings. See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (“The joinder of two Respondents in this proceeding is proper because the registrant of the domain names in dispute is the same person [where both Respondents share identical postal addresses and the same administrative and billing contact information].”).
However, throughout this decision and for ease of reference the Panel will refer to the Complainants as “Complainant”.
A. Complainant
Complainant makes the following allegations:
a) Complainant contends it has rights in the PLANET FITNESS mark, used in connection with physical fitness instruction, apparel, and accessories. Complainant is the owner of registrations for the PLANET FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). See Complainant’s Exhibit A.
b) The disputed domain names are confusingly similar to Complainant’s mark. Respondent’s <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names contain the PLANET FITNESS mark in its entirety, while one of the domain names adds the generic term “channel” and the other adds the generic term “network.” Further, the disputed domain names contain the generic top level domain (“gTLD”) “.com.”
c) Respondent does not own any rights or legitimate interests in the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names.
a. Respondent has never been known by the term PLANET FITNESS, nor has Complainant authorized Respondent to use Complainant’s mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names resolve to empty parked pages, and the non-functional websites suggest a lack of intent to actually use the disputed domain names. See Complainant’s Exhibit C.
d) Respondent registered and using the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names in bad faith.
a. Respondent use of the disputed domain name disrupts Complainant’s business.
b. Respondent generates “initial interest confusion” to lure unwitting Internet users to the disputed domain names for future commercial benefit. Respondent is attempting to divert traffic intended for Complainant’s official website, thereby trading on the goodwill connected with Complainant’s trademark.
c. Respondent had knowledge of Complainant’s mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, after the service on Respondent of the Complaint and Written Notice of the Complaint on July 12, 2013, Respondent wrote inter alia to the Forum and the attorney for Complainant by email on July 17, 2013 in the following terms: “I asked the owner in Winter Park FLORIDA if I could do this-ask him about Todd Magargee's friend (.) T Patrick Murray.” The Forum replied to the effect that if Respondent wished to submit a formal response it should do so by August1, 2013. Respondent did not submit a formal Response. Respondent sent a further email communication inter alia to the Forum and to the attorney for Complainant on July 18, 2013 in the following terms: “It's not Tanuja it's T Patrick Murray (.) So-I created sites WITH PERMISSION and was intending to pass them to John...Who is John? THE owner of planet fitness!!!!John Wash (.)I asked him and have the text where i asked and he said I could create a spec marketing idea and this is the result (.) Ask John Wash if he knows Todd Magargee my partner....Here is site http://webhdtv.wix.com/planetfitness(.)This is legal- I am reviewing gyms and it was going to be something I brought to him next month(.) T Murray HDTV LLC(.)”
C. Additional Submissions
On July 18, 2013 the attorney for Complainant wrote by email to Respondent and to the Forum in the following terms:” Mr. Murray, Although you claim to have made the websites with “permission,” Mr. Wash did not have the authority to give you or anyone else permission to use the corporate trademark in domain names. Accordingly, we will be in touch with Mr. Wash on the matter. Best, Alex P. Garens IP Attorney.”
1. Complainant is a United States company that operates a chain of gymnasia and fitness centres and is also engaged in other aspects of the fitness and related industries.
2. Complainant owns trademark registrations for the PLANET FITNESS mark with the USPTO (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001).
3. Respondent registered the <planetfitnesschannel.com> domain name on March 18, 2013 and the <planetfitnessnetwork.com> domain name on April 18, 2013.The domain names have resolved to empty parked pages and non-functional websites, although on occasions the websites have carried links to general goods and services and also to services related to the health and fitness industries.
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 formal 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.”). However, the Panel will also take into account in reaching its decision the email communications referred to above under the heading PARTIES’ CONTENTIONS.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant contends that it has rights in the PLANET FITNESS mark, which it uses in connection with its business in the physical fitness instruction, apparel, and accessories industry. Complainant asserts that it owns trademark registrations for the PLANET FITNESS mark with the USPTO (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). See Complainant’s Exhibit A. Therefore, the Panel finds that Complainant has rights in the PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s PLANET FITNESS mark. Complainant alleges in that regard that the disputed domain names are confusingly similar to Complainant’s mark. Complainant notes that Respondent’s <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names contain the PLANET FITNESS mark in its entirety, while one of the domain names adds the generic term “channel” and the other adds the generic term “network.” Further, Complainant notes that the disputed domain names contain the gTLD “.com.” First, the Panel finds that the addition of generic terms does not sufficiently distinguish the disputed domain names from Complainant’s mark as they simply indicate that the services operated under the domain names and the websites to which they resolve are available through a channel or network, thus emphasizing that they are services provided by Complainant. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also notes that the disputed domain names omit the space between the words of the PLANET FITNESS mark, and finds that removing a space from within a mark does not eliminate confusing similarity between a domain name and a mark. 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, despite the additions made to the trademark in creating the domain name, the Panel finds that the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names are confusingly similar to Complainant’s PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PLANET FITNESS trademark and to use it in its domain names, merely adding in the case of one domain name the word “channel” and in the case of the other domain name the word “network”, thus implying that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant, where its services will be provided respectively through a channel and a network, neither of which is true;
(b) The disputed domain names have resolved to empty parked pages, and the non-functional websites suggest a lack of intent to use the disputed domain names for a legitimate purpose but an intention to use the domain names for some purpose that will benefit Respondent;
(c) Complainant claims Respondent does not own any rights or legitimate interests in the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names. Complainant then asserts that Respondent has never been known by the term PLANET FITNESS, nor has Complainant authorized Respondent to use Complainant’s mark in any way. The Panel notes that the WHOIS record for the <planetfitnesschannel.com> domain name lists “HDTV, LLC” as the domain name registrant, and the WHOIS record for the <planetfitnessnetwork.com> domain name lists “Tanuja Murray” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because, as the Panel finds, Respondent was not authorized by Complainant to use the PLANET FITNESS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <planetfitnesschannel.com> domain name or the <planetfitnessnetwork.com> domain name, for the purposes of Policy ¶ 4(c)(ii);
(d)Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant states that the disputed domain names resolve to empty parked pages, and the non-functional websites suggest Respondent’s lack of intent to use the disputed domain names. The Panel notes that while Complainant alleges that the resolving web pages are “empty,” they actually contain links to unrelated commercial advertisements, such as links to “Easily build your professional website,” or “Promote your business with every email,” under the heading of GoDaddy.com and that when the Panel has looked at the websites they have revealed extensive advertisements to general goods and services and also to businesses in the health and fitness fields in which Complainant is engaged. See Complainant’s Exhibit C. Past panels have found that although parked pages are generally not under the control of the respondent, the respondent is responsible for the content that appears on those pages and in any event Respondent is responsible for the advertisements to competing businesses that presently appear on its website. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). Further, where the Respondent has failed to make an active use of a disputed domain name, past panels have found the respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds that due to the content at the resolving websites described above, displaying advertisements for wholly unrelated businesses, Respondent is not making 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 Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
All of these matters go to make out the prima facie case against Respondent.
Accordingly, the Panel will now consider whether Respondent has rebutted the prima facie case against it.
Respondent has not filed a formal Response but has engaged in email communications with the Forum and the attorney for Complainant. The essence of those communications is that Respondent maintains it had permission of some sort “to do this” which presumably means to register the disputed domain names and to use them as has been described above. Complainant’s reply is that the person who is alleged to have given that permission had no authority to do so. That type of arrangement, if proved, may in some circumstances give rise to a right or legitimate interest in a domain name. The task of the Panel is therefore to decide whether in the present case the evidence shows a right or legitimate interest or not. The Panel finds that Respondent has not shown that it has such a right or legitimate interest in the disputed domain names. That is so for the following reasons. First, Respondent has not provided sufficient detail to enable the Panel to conclude that Respondent had permission to use Complainant’s trademarks in domain names to be registered in its own name and to use them to carry advertisements from a registrar and advertisements for competing services. That is especially so when Respondent was expressly invited by the Forum to submit a formal Response and did not do so. Respondent could thus have explained the detail of the whole relationship with Complainant but has not done so. Secondly, it is conceivable that Respondent was invited to put up a “spec” marketing proposal to Complainant as alleged. However, the Panel is not able to accept on the balance of probabilities, without more evidence, that such an arrangement included the right to add words to Complainant’s trade mark, register the domain names in Respondent’s name or use them contrary to the business interests of Complainant. Thirdly, if the video presentation accessible by the link at http://webhdtv.wix.com/planetfitness is the proposal worked up by Respondent, it seems to the Panel on the balance of probabilities highly unlikely that Complainant would have agreed to have its name and trademark used in that way. Unless the whole presentation is intended as a parody, the presentation carries some derogatory remarks about Complainant’s gym and seems to be an advertisement for the spokesman and for another named body building business rather than for Complainant. It is not the Panel’s role to pass judgment on such a presentation, of course, but it is highly unlikely that any business would give so broad an approval or permission to use its trademark and name in the way presented, which is really promoting the qualities of a rival business and not promoting the interests of Complainant.
Accordingly, the Panel finds that Respondent has not rebutted the prima facie case against it and that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent is generating initial interest confusion to lure unwitting Internet users to the disputed domain names for future commercial benefit. Although there is no direct evidence of the current or future commercial benefit sought by Respondent, the Panel infers that by displaying advertisements at the resolving websites, Respondent receives financial compensation for allowing such content to be posted and that its intention is to collect information from email traffic to the sites in question. Past panels have found that although parked pages are generally not under the control of the respondent, the respondent is responsible for the content that appears on those pages. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). Additionally, past panels have found that displaying links on a resolving website connected to a disputed domain name violates Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel finds that by using confusingly similar domain names to attract Internet traffic, and hosting websites resolving from the disputed domain names to display advertisements, presumably in exchange for commercial gain or for some other untoward purpose, Respondent registered and used the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant claims Respondent had knowledge of Complainant’s mark at the time Respondent registered the disputed domain name because of Respondent’s explicit use of the PLANET FITNESS mark to attract Internet users. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the PLANET FITNESS mark and despite Respondent’s explanation for registering and retaining the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <planetfitnesschannel.com> and <planetfitnessnetwork.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: August 9, 2013
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