national arbitration forum

 

DECISION

 

PFIP, LLC v. Online Management

Claim Number: FA1309001518428

PARTIES

Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA.  Respondent is Online Management (“Respondent”), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <planetfitnnes.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2013; the National Arbitration Forum received payment on September 9, 2013.

 

On September 9, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <planetfitnnes.com> 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 September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@planetfitnnes.com.  Also on September 11, 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 October 3, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant uses the PLANET FITNESS mark in connection with the sale of goods and services related to physical fitness and training. Complainant has registered the PLANET FITNESS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,438,677 registered on March 27, 2001).

 

Respondent registered the <planetfitnnes.com> domain name on May 26, 2013.

 

Respondent’s <planetfitnnes.com> domain name is confusingly similar to the PLANET FITNESS mark. Respondent merely added an additional letter “n” to the mark, and removed one instance of the letter “s” from the mark.

 

Respondent has never been known by the term PLANET FITNESS. Complainant has never authorized or licensed use of its marks to Respondent. Respondent used the <planetfitnnes.com> domain name to market third-party goods and services, including goods and services offered by competing health and fitness companies. However, the domain name currently does not resolve to any active website.

 

Respondent is disrupting Complainant’s business. Respondent uses the domain name to capitalize on the confusion of Internet users who believe the domain name will send them to websites affiliated with Complainant. Respondent seeks to capitalize on the confusion of Internet users by typosquatting this domain name off of the PLANET FITNESS mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns a USPTO registered trademark for PLANET FITNESS.

 

Respondent is not affiliated with Complainant and had not been authorized to use the PLANET FITNESS mark in any capacity.

 

Respondent registered the at-issue domain name after Complainant acquired trademark rights in PLANET FITNESS.

 

Respondent used the <planetfitnnes.com> domain name to market third-party goods and services, including goods and services offered by competing health and fitness companies. At the time the Complaint was drafted and/or filed the domain name did not resolve to an active website. At the time the instant decision was rendered, there is website addressed by the at-issue domain name which is consistent with the prior use of the domain name as a compendium of pay-per-click hyperlinks to goods and services, some of which compete with Complainant.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of the PLANET FITNESS mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also 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).

 

Respondent formed the <planetfitnnes.com> domain name by adding an additional letter “n” to Complainant’s mark, removing one instance of the letter “s” from the mark, and then appending the generic top-level domain, “.com,” thereto. However, the resulting differences between Complainant’s trademark and Respondent’s domain name fail to differentiate the two for the purpose of Policy ¶4(a)(i). Therefore, the Panel concludes that Respondent’s <planetfitnnes.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. See, e.g., Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Rights or Legitimate Interests

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 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 since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “Online Management” as the at-issue domain name’s likely real registrant and “Above.com Domain Privacy” as its current nominal registrant.  The record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Notwithstanding that Complainant asserts that the at-issue domain name is inactive, the Panel’s sui sponte visit to <planetfitnnes.com> reveals that Respondent now uses the <planetfitnnes.com> domain name to market third-party goods and services, including goods and services offered by competing health and fitness companies. See http://planetfinnes.com (October 3, 2013). Using the domain name to support hyperlink advertisements 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 of the at-issue 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)).

 

In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent uses the <planetfitnnes.com> domain name to capitalize on the confusion of Internet users who believe the domain name’s links will deliver them to websites affiliated with Complainant. Although Complainant avers that the domain name is being held inactively, its address now appears active and displays various pay-per-click hyperlinks some of which reference Complainant’s competitors. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶4(c)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

Furthermore, Respondent engages in typosquatting. Typosquatting consists of a respondent registering a subtle misspelling or typographical error in a complainant’s trademark as a domain names in order to capitalize on anticipated corresponding errors made by Internet users. Typosquatting is, in and of itself, evidence of bad faith under Policy ¶4(a)(iii). See, e.g., Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <planetfitnnes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  October 3, 2013

 

 

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