PFIP, LLC v. Planet Fitness / Fitness Blowout
Claim Number: FA1303001491578
Complainant is PFIP, LLC (“Complainant”), represented by Alex P. Garens of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Planet Fitness / Fitness Blowout (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <planetfitnessoutlet.com>, <planetfitnessoutlet.net>, <planetfitnessonline.net>, <oneplanetfitness.net>, and <fitnessplanetonline.com>, registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 26, 2013; the National Arbitration Forum received payment on March 26, 2013.
On March 26, 2013, TUCOWS, INC. confirmed by e-mail message addressed to the National Arbitration Forum that the domain names <planetfitnessoutlet.com>, <planetfitnessoutlet.net>, <planetfitnessonline.net>, <oneplanetfitness.net>, and <fitnessplanetonline.com> are registered with TUCOWS, INC. and that Respond-ent is the current registrant of the names. TUCOWS, INC. has verified that Re-spondent is bound by the TUCOWS, INC. registration agreement and has there-by agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2013, by which Respondent could file a Response to the Complaint, via e-mail message addres-sed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@planetfitnessoutlet.com, postmaster@planetfitnessoutlet.net, postmaster@planetfitnessonline.net, post-master@oneplanetfitness.net, and postmaster@fitnessplanetonline.com. Also on March 26, 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 April 29, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant uses its PLANET FITNESS trademark in connection with the mar-keting and operation of its fitness business for over nineteen years, and it has over 600 fitness clubs located throughout the United States.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the PLANET FITNESS trademark and service mark (including Reg. No. 2,438,677, registered March 27, 2001).
All of the disputed domain names were registered in January of 2013.
The domain names are confusingly similar to the PLANET FITNESS trademark.
Respondent has never been commonly known by the term “PLANET FITNESS” or any of the disputed domain names.
Respondent has not been authorized to use the PLANET FITNESS mark.
Each of the domain names has resolved to a web site at <fitnessmotion.net>, where Respondent sells the goods of Complainant’s commercial competitors.
The domain names <planetfitnessoutlet.net>, <planetfitnessonline.net>, and <fitnessplanetonline.com> now resolve to a page reading, “Sorry, this store is no longer available.”
The <planetfitnessoutlet.com> and <oneplanetfitness.net> domain names cur-rently to resolve to the website at <fitnessmotion.net>.
Respondent does not have rights to or legitimate interests in any of the disputed domain names.
Respondent has registered and is using the disputed domain names in bad faith.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent’s use of the domain names is motivated by a desire for commercial gain, and it misleads consumers into thinking that the resolving third-party web-
site originates with or is associated with Complainant.
Respondent knew of Complainant and its rights in the PLANET FITNESS mark when it registered the contested domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uni-form Domain Name Dispute Resolution Policy (the “Rules”) provides that a “com-plaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In support of its contention that all of the domain names should be considered in this proceeding, Complainant asserts that the pertinent WHOIS information lists identical mailing addresses, identical e-mail addresses, and an identical admin-istrative contact, Sam Crow, for all of the domain names, and that the domain names were registered within the same month, January 2013. Respondent does not contest these assertions.
In light of Complainant’s uncontested assertions on this question, we conclude that the disputed domain names are controlled by the same entity. Accordingly, as requested by Complainant, we will consider all of the domain names within the instant proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a nation-al trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s domain names are confusingly similar to Complainant’s PLANET FITNESS mark. Each of the domain names contains the entire mark (in one instance, with the terms transposed), accompanied by a generic term (“one,” “outlet,” or “online”), which can be taken to relate to an aspect of Complainant’s business, and with the space between the terms of the mark removed and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain names, do not avoid a finding of confusing similarity under the standards of the Policy. See, for ex-ample, Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly sim-ilar to a complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Similarly, the transposition of terms of Complainant’s mark in Respondent’s do-main name <fitnessplanetonline.com> is unavailing in avoiding a finding of con-fusing similarity. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005):
The Panel finds that the use of transposed words, similar to trans-posed letters[,] does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.
In like fashion, the removal of the space between the terms of Complainant’s PLANET FITNESS mark and the addition of the generic top-level domain (“gTLD”) “.com” to form the domain names does not permit them to escape a finding of confusing similarity because these features are irrelevant s to a Policy ¶ 4(a)(i) 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 of the mark of another and the addition of a gTLD do not establish distinctiveness of a domain name from a UDRP complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the name “PLANET FITNESS” or by the contested domain names, and that Respondent has not been authorized by Complainant to use the PLANET FITNESS mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain names only as “Planet Fitness / Fitness Blowout,” which is not synonymous with any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have demon-strated that it has rights to or legitimate interests in any of them within the con-templation of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a UDRP respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that that respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
We next observe that Complainant asserts, without objection from Respondent, that, until recently, each of contested domain names resolved to a website at <fitnessmotion.net>, where Respondent sells the goods of Complainant’s com-mercial competitors, and that the domain names <planetfitnessoutlet.com>, <planetfitnessonline.net>, and <fitnessplanetonline.com> now resolve to a website bearing the message: “Sorry, this store is no longer available.” This employment of the domain names is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010):
The Panel finds that capitalizing on the well-known marks of Com-
plainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent’s employment of the con-tested domain names in the manner outlined in the Complaint disrupts Complain-ant’s business. This stands as evidence that Respondent’s registration and use of the domain names were and are in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Com-plainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
We are also convinced from the evidence that Respondent’s use of the disputed domain names deceives Internet users who are likely to form the belief that Re-spondent’s resolving websites originate with or are associated with Complainant, and that this use of the domain names is motivated by commercial gain. This behavior operates as proof of bad faith in the registration and use of the domain names under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith registration and use of a domain name where a respondent's use of the domain name to resolve to a website where services similar to those of a UDRP complainant were offered to Internet users was likely to confuse them into believing that that complainant was the source or sponsor of the services offered there).
Finally, the evidence demonstrates that Respondent knew of Complainant and its rights in the PLANET FITNESS trademark and service mark when it registered the contested domain names. This is further proof of bad faith in the registration of the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a re-spondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names <planetfitnessoutlet.com>, <planetfitnessoutlet.net>, <planetfitnessonline.net>, <oneplanetfitness.net>, and <fitnessplanetonline.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 10, 2013
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