PFIP, LLC v. Blast Fitness Group, LLC / Thomas Moran Claim Number: FA1204001440897
PARTIES
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Blast Fitness Group, LLC / Thomas Moran (“Respondent”), represented by R. David Hosp of Goodwin Procter LLP, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blastfitness.com>, registered with Enom, Inc.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 25, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <blastfitness.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2012 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@blastfitness.com. Also on April 25, 2012, 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.
A timely Response was received and determined to be complete on May 15, 2012.
Complainant’s Additional Submission was received on May 18, 2012 and deemed compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on May 23, and deemed complainant with the Supplemental Rules.
On May 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BLAST FITNESS mark (Reg. No. 4,102,005 filed June 27, 2011 registered February 21, 2012).
Complainant owns an expired trademark registration with the USPTO for the mark (Reg. No 2,746,834 registered August 5, 2003).
Complainant’s predecessor-in-interest assigned all rights in the BLAST FITNESS mark to Complainant.
The BLAST FITNESS mark began being used 12 years ago.
Respondent’s disputed domain name is identical to Complainant’s BLAST FITNESS mark,
Respondent uses the disputed domain name for a commercial use.
Respondent had actual and constructive knowledge of Complainant’s rights in the BLAST FITNESS mark.
Respondent’s disputed domain name formerly resolved to a parked website.
Respondent’s disputed domain name currently resolves to a website that appears to offer competing fitness products and services.
Respondent is attempting to attract Internet users with the intention of misleading or confusing consumers into thinking that the third-party website is connected with Complainant.
Respondent disrupts Complainant’s business.
B. Respondent
Complainant stopped using the BLAST FITNESS mark and allowed the USPTO trademark registration to lapse on March 7, 2010.
Respondent registered the <blastfitness.com> domain name on November 30, 2010.
Complainant only began asserting rights in the BLAST FITNESS mark after Respondent began offering competing fitness services.
Respondent makes a bona fide use of the disputed domain name to offer information and market services relating to its fitness centers in the United States.
Respondent is commonly known by the <blastfitness.com> domain name because it applied to register the BLAST mark with the USPTO on November 16, 2010.
Respondent never parked the disputed domain name because Respondent purchased the disputed domain name after Complainant’s screenshots of the parked page were captured.
Complainant presents no evidence that Respondent is disrupting Complainant’s business, which Respondent did not intend to do.
Respondent registered the disputed domain name prior to Complainant demonstrating rights in the mark, which is evidence that Respondent is not attempting to create confusion with Complainant’s mark.
Complainant is guilty of reverse domain name hijacking.
C. Additional Submissions
Complainant.
Complainant never discontinued its use of the BLAST FITNESS mark.
Respondent admits in its Response that Complainant currently uses the BLAST FITNESS mark.
Complainant uses its BLAST FITNESS mark throughout the United States.
Complainant’s trademark registration with the USPTO was active at the time Respondent registered the disputed domain name.
Respondent.
It is an undisputed fact that the mark in question was cancelled prior to Registration of the disputed domain name.
Complainant’s predecessor in interest, Michael Krassner, stated on the <blastfitness.com> website prior to Respondent’s registration of the disputed domain name that BLAST FITNESS would from that point operate as Planet Fitness.
Respondent lawfully purchased the disputed domain name in 2010, well after Krassner’s mark was cancelled.
Respondent’s website is in no way similar in appearance to Complainant’s website.
Respondent disputes Complainant’s assertion that Complainant continued to use the BLAST FITNESS mark after the cancellation of the mark.
1. Complainant has rights in the BLAST FITNESS mark.
2. Respondent’s <blastfitness.com> domain name is identical to Complainant’s BLAST FITNESS mark.
3. Respondent has rights to and legitimate interests in the disputed domain name.
4. Complainant failed to prove that the disputed domain name was registered 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
(3) the domain name has been registered and is being used in bad faith.
Complainant provides evidence of its trademark registration with the USPTO for its BLAST FITNESS mark (Reg. No. 4,102,005 filed June 27, 2011, registered February 21, 2012). The Panel determines that Complainant’s trademark registration is sufficient for Complainant to establish rights in its BLAST FITNESS mark under Policy Paragraph 4(a)(i), dating back to the filing date of June 27, 2011. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr.17, 2006) (Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s disputed domain name is identical to Complainant’s BLAST FITNESS mark. The Panel notes that the <blastfitness.com> domain name combines Complainant’s BLAST FITNESS mark, absent the space, with the generic top-level domain (“gTLD”) “.com.” Based on the insignificance of these changes, the Panel finds that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy, Paragraph 4(a)(i). See Hannover Ruckversicherung-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Respondent argues that its registration of the domain name predates Complainant’s rights in the mark. Such a determination is not necessary under this section as this portion of the Policy considers only whether Complainant has rights in the mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under the Policy but may prevent a finding of bad faith. Complainant proves this requirement.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy, Paragraph 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).
Complainant makes no allegations regarding whether or not Respondent is commonly known by the <blastfitness.com> domain name. Complainant contends that the disputed domain name once resolved to a parked domain site. Complainant contends that Complainant and Respondent are competitors.
Respondent contends that it is commonly known by the <blastfitness.com> domain name. Respondent contends that it applied for a trademark registration with the USPTO for the BLAST mark on November 16, 2010. Respondent claims that it began offering personal training services in late 2010 and launched its website to describe Respondent’s centers. Respondent contends that it is making a bona fide offering of services. Respondent operates 57 fitness centers. Respondent provides screenshots of the website as proof that it is offering a legitimate website with legitimate associated fitness centers. The Panel finds that Respondent operates fitness centers using the BLAST FITNESS name and uses the disputed domain name to promote its fitness centers. Respondent is making a bona fide use of the domain name. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
The Panel notes that the WHOIS information identifies “BLAST FITNESS GROUP, LLC/Thomas Moran” as registrant of the domain name. Respondent is commonly known by the <blastfitness.com> domain name under the Policy. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name.
Not only has Complainant failed to present a prima facie case, but Respondent’s evidence proves that Respondent has rights and legitimate interests in the disputed domain name.
The facts presented to the Panel shows as follows: Complainant’s predecessor operated fitness centers under the BLAST FITNESS and held a trademark registration for the mark. It transferred its interest to Complainant. Complainant ceased to operate as BLAST FITNESS and began operating as Planet Fitness. The trademark was cancelled. A third party registered the disputed domain name. Respondent purchased the domain name and began operating as BLAST FITNESS. After Respondent purchased the domain name and began use, Complainant’s predecessor transferred its interests in BLAST FITNESS to Complainant. Complainant then registered BLAST FITNESS with the USPTO.
The Panel finds that at the time Respondent purchased and began using the disputed domain name, Respondent believed that the BLAST FITNESS mark had been abandoned and that it was legally available for use.
This state of facts does not present bad faith registration of a domain name under the Policy.
Reverse Domain Name Hijacking
Complainant owned a registered trademark which is identical to Respondent’s disputed domain name at the time this Complaint was filed. Complainant is not guilty of reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blastfitness.com> domain name REMAIN WITH Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 3, 2012
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