PFIP, LLC v. Premier Nexus
Claim Number: FA1001001303016
Complainant is PFIP,
LLC (“Complainant”), represented by Teresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <planetfitnessnow.com>, registered with GoDaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 14, 2010, GoDaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <planetfitnessnow.com> domain name is registered with GoDaddy.com, Inc and that Respondent is the current registrant of the name. GoDaddy.com, Inc has verified that Respondent is bound by the GoDaddy.com, Inc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 15, 2010, a Written Notice of the Complaint, setting a deadline of February 4, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@planetfitnessnow.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 makes the following assertions:
1. Respondent’s <planetfitnessnow.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <planetfitnessnow.com> domain name.
3. Respondent registered and used the <planetfitnessnow.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PFIP, LLC, operates over 280 health clubs
throughout the
Respondent, Premier Nexus, registered the <planetfitnessnow.com> domain name on January 1, 2010. The disputed domain name resolves to a website featuring a directory of hyperlinks resolving to third-parties unrelated to Complainant.
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."
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.”).
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 contends it has established rights in the PLANET
FITNESS mark. Previous panels have found
that trademark registration with a federal trademark authority is sufficient to
establish rights in a mark.
Complainant alleges that Respondent’s <planetfitnessnow.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. The disputed domain name contains Complainant’s entire mark and simply removes a space from the mark, adds the generic term “now,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds the removal of a space and the addition of a generic term fail to adequately distinguish the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel further finds the addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the Panel concludes that Respondent’s <planetfitnessnow.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <planetfitnessnow.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <planetfitnessnow.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent offers no evidence to suggest Respondent is commonly known by the <planetfitnessnow.com> domain name. Furthermore, the Panel fails to find evidence in the record that Respondent is commonly known by <planetfitnessnow.com> domain name. Complainant asserts that Respondent has never been authorized to use the PLANET FITNESS mark. The WHOIS information, which identifies the domain name registrant as “Premier Nexus,” does not provide evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds Respondent has failed to establish rights or legitimate interests in the <planetfitnessnow.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s <planetfitnessnow.com> domain name resolves to a website containing
hyperlinks to third parties. These third
parties are unrelated to Complainant and Complainant’s health club
business. Respondent
likely profits from click-through fees.
The Panel finds Respondent’s use of the confusingly similar disputed
domain name is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See Constellation Wines
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <planetfitnessnow.com> domain name to resolve to a website
containing a hyperlink directory featuring links to third parties unrelated to
Complainant. Respondent displays
Complainant’s PLANET FITNESS mark as the title of the website and is likely
attempting to create confusion as to Complainant’s sponsorship of or
affiliation with the disputed domain name, resolving website, and featured
hyperlinks. Respondent presumably
profits from this confusion through pay-per-click fees. The Panel finds that Respondent’s use of the confusingly
similar disputed domain name to create this confusion for Respondent’s own
profit is evidence of bad faith registration and use under 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); see also 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)).
The Panel finds Complainant has satisfied the elements of 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 <planetfitnessnow.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 25, 2010
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