PFIP, LLC v. PPA Media Services / Ryan G Foo
Claim Number: FA1306001503724
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetfitnes.com>, registered with INTERNET.BS CORP.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On June 13, 2013, INTERNET.BS CORP confirmed by e-mail to the National Arbitration Forum that the <planetfitnes.com> domain name is registered with INTERNET.BS CORP and that Respondent is the current registrant of the name. INTERNET.BS CORP has verified that Respondent is bound by the INTERNET.BS CORP 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 June 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@planetfitnes.com. Also on June 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 July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <planetfitnes.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PFIP, LLC, has been using its PLANET FITNESS trademarks in connection with its business for over nineteen years and has over 600 club locations throughout 48 states of the United States. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677, registered March 27, 2001). The disputed domain name <planetfitnes.com> is comprised of Complainant’s entire PLANET FITNESS trademark minus a letter “s.”
Respondent has never been known by the term PLANET FITNESS nor has Respondent been granted authorization or any license by Complainant to use the mark. Respondent uses the domain to resolve to a website that consists of a “coming soon” page with sponsored advertising links, presumably for commercial profit, through the use of pay-per-click revenue. Respondent is intending to, and is, in fact, disrupting the business of Complainant. Respondent’s use of the disputed domain name is for the purpose of attracting, for commercial gain, Internet users to a third-party website with the intention of misleading of confusing consumers into thinking that the third-party website originates with, or is in some way associated with, sponsored, authorized, or endorsed by Complainant. Such use of an obvious misspelling of Complainant’s trademark amounts to typosquatting. Respondent registered the <planetfitnes.com> domain name on March 8, 2002.
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.”).
Complainant has been using its PLANET FITNESS trademarks in connection with its business for over nineteen years and has over 600 club locations throughout 48 states of the United States. Further, Complainant is the owner of trademark registrations with the USPTO for the PLANET FITNESS mark (e.g., Reg. No. 2,438,677, registered March 27, 2001). Although Respondent appears to reside in Chile, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it establishes rights in the mark in some jurisdiction under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, Complainant’s registration of the PLANET FITNESS mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name <planetfitnes.com> includes Complainant’s entire PLANET FITNESS trademark minus a letter “s.” Respondent’s omission of the letter “s” in Complainant’s PLANET FITNESS mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The addition of generic top-level domains (“gTLD”) do not create a distinct impression. Respondent removed the space in Complainant’s PLANET FITNESS mark in its <planetfitnes.com> domain name. Respondent’s addition of a gTLD and removal of spaces is inconsequential to a Policy ¶ 4(a)(i) determination. See 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).”). Despite the changes made to the mark within the domain name, Respondent’s <planetfitnes.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 term PLANET FITNESS nor has it been granted authorization or any license by Complainant to use the mark. The WHOIS record indicates that “PPA Media Services / Ryan G Foo” is the registrant of the <planetfitnes.com> domain name. Therefore, based on Respondent’s lack of authorization to use Complainant’s mark and the fact that the WHOIS information indicates that Respondent is known by an unrelated name, the Panel finds that Respondent is not commonly known by the disputed domain name under 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).
Respondent uses the domain to resolve to a website that comprises a “coming soon” page with sponsored advertising links, presumably for commercial profit by pay-per-click revenue. Specifically, Respondent’s domain name resolves to a website on which the name “planetfitnes.com” appears at the top and includes a portal for third-party websites marketing a variety of health and fitness services, including to websites operated by competitors of Complainant. Respondent’s use of the disputed domain name in this manner results in consumer confusion as to Complainant’s affiliation with the resulting website, and Respondent profits from such confusion when Internet users access the links to pages or other sites that offer goods and services for sale. In Microsoft Corp. v. BARUBIN, FA 1174478 (Nat. Arb. Forum May 6, 2008), the panel concluded that “Respondent maintained a website at <msnmessenger2008.com> which appeared to sell Complainant’s products and services and contained links to other third-party websites. Such use of the domain name was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Due to Respondent’s use of the disputed domain name to market goods and services related to the fitness industry, the Panel finds that Respondent is not using the <planetfitnes.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s <planetfitnes.com> domain name links to a website providing links to competitors of Complainant. Respondent’s website features links titled “fitness workouts,” “Beginner Workout Routine,” “5 Foods you must not eat:,” and others. Id. Respondent’s use of a domain name to provide competing hyperlinks disrupts a complainant’s business and demonstrates bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent’s use of the <planetfitnes.com> domain name disrupts Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). The Panel reasonably infers that Respondent makes commercial gains through the hyperlinks featured on the resolving website resolving. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel found that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names. Thus, the Panel holds that Respondent’s use of the <planetfitnes.com> domain name to provide links to Complainant’s competitors shows that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent’s use of an obvious misspelling of Complainant’s trademark is evidence of typosquatting. Respondent removes the space and the letter “s” from Complainant’s PLANET FITNESS mark in its <planetfitnes.com> domain name, which may be considered a common misspelling of Complainant’s mark. The Panel finds that Respondent has engaged in typosquatting and thus further determines that Respondent has registered and is using the <planetfitnes.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <planetfitnes.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 15, 2013
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