PFIP, LLC v. Riku Hakanen / Website
Claim Number: FA1408001577327
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Riku Hakanen / Website (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <planetfitness4all.com>, registered with Launchpad.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On August 29, 2014, Launchpad.com Inc. confirmed by e-mail to the National Arbitration Forum that the <planetfitness4all.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2014 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@planetfitness4all.com. Also on September 3, 2014, 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 September 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Complaint:
1. Complainant has rights in the PLANET FITNESS mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). Complainant uses the PLANET FITNESS mark in connection with physical fitness instruction and training. The <planetfitness4all.com> domain name is confusingly similar to the PLANET FITNESS mark.
2. Respondent lacks rights in the disputed domain name. Respondent is not known by the <planetfitness4all.com> domain name, and Complainant has not authorized Respondent’s use of the mark. Further, the domain name does not currently resolve to an active website.
3. Respondent is using the <planetfitness4all.com> domain name in an effort to mislead users into associating Complainant with the disputed domain name and resolving pages. Respondent commercially benefits from such confusion. Respondent was aware of Complainant’s rights in the PLANET FITNESS mark at the time the domain name was registered.
B. Response:
1. Respondent did not answer the complaint with a response.
1. Respondent’s <planetfitness4all.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <planetfitness4all.com> domain name.
3. Respondent registered or used the <planetfitness4all.com> domain name in bad faith.
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 uses the PLANET FITNESS mark in connection with physical fitness instruction and training. Complainant claims rights in the PLANET FITNESS mark through trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,438,677 registered Mar. 27, 2001). The Panel finds Complainant’s USPTO registrations are sufficient to demonstrate Complainant’s rights in the PLANET FITNESS mark for the purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <planetfitness4all.com> domain name is confusingly similar to the PLANET FITNESS mark. Complainant notes that the domain name incorporates the PLANET FITNESS mark minus the space between the words, and with the additions of the phrase “4all,” and the generic top-level domain (“gTLD”) “.com.” Complainant urges such alterations fail to negate the confusing similarity given the full inclusion of the PLANET FITNESS mark. Consistent with prior cases, this Panel agrees and finds the <planetfitness4all.com> domain name confusingly similar to the PLANET FITNESS mark. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”).
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.”).
Complainant argues Respondent lacks rights in the disputed domain name. First, Complainant asserts that Respondent is not known by the <planetfitness4all.com> domain name. Further, Complainant asserts it has not authorized Respondent’s use of the mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Here, the Panel notes that the WHOIS record identifies “Riku Hakanen / Website” as the domain name registrant. As Respondent has failed to submit any evidence in the alternative, the Panel finds the available record indicates Respondent is not commonly known by the <planetfitness4all.com> domain name pursuant to Policy ¶ 4(c)(ii).
Next, Complainant argues the <planetfitness4all.com> domain name does not currently resolve to an active website. The Panel is satisfied with this assertion, which is unsupported by any corroborating screenshots, and finds Respondent is not using the domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use warranting Policy ¶¶ 4(c)(i) or (iii) protections. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent is using the <planetfitness4all.com> domain name in an effort to mislead users into associating Complainant with the disputed domain name and resolving pages. Complainant contends Respondent is able to commercially benefit from user confusion. In considering Complainant’s argument under Policy ¶ 4(b)(iv), the Panel recall that Complainant alleges the domain name does not resolve to an active page, and therefore Respondent is not generating any kind of revenue, click-through, advertising, or otherwise. Accordingly, the Panel concludes that Respondent is not violation of Policy ¶ 4(b)(iv). Alternatively, some panels have found that Policy ¶ 4(b)(iv) bad faith may be inferred when no reasonable active use of the at-issue domain name could go on without a likelihood of confusion. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).
Nonetheless, the provision of Policy ¶ 4(b) merely contains a non-exclusive list of circumstances indicative of bad faith. Many panels have found evidence of bad faith based on circumstances not specifically addressed in Policy¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent was aware of Complainant’s rights in the PLANET FITNESS mark at the time the domain name was registered, evincing Respondent’s bad faith. While previous panels have concluded that mere constructive knowledge is insufficient to show bad faith, a finding under Policy ¶ 4(a)(iii) would be appropriate where actual knowledge can be inferred from the circumstances. Notably, the panel in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), explained, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” The Panel agrees that respondent had actual knowledge of Complainant’s rights in the PLANET FITNESS mark based on the name used for the domain, and finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
While Complainant does not allege inactivity as a grounds for demonstrating bad faith, the Panel, in the interest of completeness, decides to reconsider Complainant’s Policy ¶ 4(a)(ii) argument on inactivity here in Policy ¶ 4(a)(iii). Earlier, Complainant argued that Respondent had failed to make an active use of the <planetfitness4all.com> domain name. Prior panels have found such inactivity evinces bad faith. For example, in Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith. Drawing a parallel to the present case, the Panel finds Respondent’s apparent inactive use of the <planetfitness4all.com> domain name constitutes bad faith pursuant to 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 <planetfitness4all.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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