PFIP, LLC v. mike tesoriero
Claim Number: FA1312001532818
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is mike tesoriero (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2013; the National Arbitration Forum received payment on December 4, 2013.
On December 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> 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 December 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@planetfitnessportjeffersonstation.com, postmaster@planetfitnessportjeffersonstation.net, postmaster@planetfitnessportjeffersonstation.info. Also on December 5, 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 December 30, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names, the domain names at issue, is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been in business for over nineteen years and owns over 600 fitness clubs through 48 states in the United States and operates its own website at <planetfitness.com>. Complainant has rights in the PLANET FITNESS mark, used in connection with physical fitness services and owns registrations for the PLANET FITNESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,438,677 registered March 27, 2001). Respondent’s <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names are confusingly similar to Complainant’s PLANET FITNESS mark. The disputed domain names all fully incorporate Complainant’s mark, and each adds the same geographic term, “port jefferson station.” Each of the disputed domain names incorporate a different generic top-level domain (“gTLD”).
Respondent does not own any rights or legitimate interests in the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names and is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use its mark in any way. The <planetfitnessportjeffersonstation.net> and <planetfitnessportjeffersonstation.info> domain names list “Mike Tesoriero” as the registrant in the WHOIS record, once the privacy service is lifted from the <planetfitnessportjeffersonstation.com> domain name. WHOIS also lists “Mike Tesoriero” as the registrant in the WHOIS record. The <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names resolve to parked pages without any advertising links. Respondent registered and is using the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names in bad faith. Respondent made an offer to sell the disputed domain names to Complainant for more than out-of-pocket expenses. Moreover, Respondent is intentionally disrupting Complainant’s business by attempting to attract and mislead Internet users for Respondent’s own commercial gain be creating a likelihood of confusion with Complainant’s PLANET FITNESS mark. The disputed domain names all resolve to parked pages that do not include any advertising links.
Respondent had knowledge of Complainant’s PLANET FITNESS mark prior to registering the disputed domain names because Complainant’s mark has commercial value and consumer recognition.
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 rights in the PLANET FITNESS mark, used in connection with physical fitness services and owns registrations for the PLANET FITNESS mark with the USPTO (e.g., Reg. No. 2,438,677 registered March 27, 2001). Therefore, Complainant has rights in the PLANET FITNESS mark pursuant to Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Respondent’s <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names are confusingly similar to Complainant’s PLANET FITNESS mark. The disputed domain names all fully incorporate Complainant’s mark, and each adds the same geographic term, “port jefferson station,” a term identifying a hamlet in Brookhaven, New York. Each of the disputed domain names utilize a different gTLD and all of the disputed domain names remove the space between the words “PLANET” and “FITNESS” in Complainant’s mark. First, the addition of a geographic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Next, the addition of a gTLD and removal of spaces in a trademark are irrelevant for the purposes of confusing similarity analysis. 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, Respondent’s <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names are 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 is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way. The <planetfitnessportjeffersonstation.net> and <planetfitnessportjeffersonstation.info> domain names list “Mike Tesoriero” as the registrant in the WHOIS record, and once the privacy service is lifted from the <planetfitnessportjeffersonstation.com> domain name, it too lists “Mike Tesoriero” as the registrant in the WHOIS record. 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 names. 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 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 <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names under Policy ¶ 4(c)(ii).
The <planetfitnessportjeffersonstation.com> <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names resolve to parked pages without any advertising links. However, the Panel notes that each of the resolving websites displays the same links from GoDaddy.com, which include “Learn how you can get this domain” and “See more domains like this.” Id. Previous panels have held that a parked page featuring links unrelated to the complainant does not constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use Policy ¶ 4(c)(iii), by parking the domain name with content promoting unrelated GoDaddy.com, LLC services.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names in bad faith. Complainant asserts that Respondent made an offer to sell the disputed domain names to Complainant for more than out-of-pocket expenses. While Complainant has not provided any evidence of correspondence between Complainant and Respondent regarding the sale of the domain names, the Panel observes that the domain names’ parked websites include a message stating “Learn how you can get this domain", and that there is no Response in this proceeding to provide a denial of Complainant's assertion. Previous panels have held that an offer to sell a disputed domain name for more than out-of-pocket expenses constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel determines that Respondent has made an offer to sell the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names for more than Respondent’s out-of-pocket expenses, and finds Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Respondent is attempting to attract and mislead Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s PLANET FITNESS mark. Complainant notes that the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names resolve to parked pages that do not include any advertising links. However, each of the resolving websites displays the same links from GoDaddy.com, which include “Learn how you can get this domain” and “See more domains like this.” Id. In previous cases, panels have found that using a confusingly similar domain name to display links unrelated to the complainant and from which the respondent is presumed to commercially benefit demonstrates bad faith registration and use pursuant to 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). Therefore, the Panel finds that Respondent registered and is using the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names in bad faith under Policy ¶ 4(b)(iv) because all the disputed domain names resolve to pages featuring links unrelated to Complainant’s business, and Respondent is presumed to receive commercial benefit from GoDaddy.com, LLC’s use of the domain name’s website.
Respondent had knowledge of Complainant’s PLANET FITNESS mark prior to registering the disputed domain names because Complainant’s mark has commercial value and consumer recognition. Constructive notice is generally regarded as insufficient to support a finding of bad faith. 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). However, it appears that Respondent was well aware of Complainant’s mark, and the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names in bad faith under Policy ¶ 4(a)(iii). See 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).
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 <planetfitnessportjeffersonstation.com>, <planetfitnessportjeffersonstation.net>, and <planetfitnessportjeffersonstation.info> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 3, 2014
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