PFIP, LLC v. Marco Jud
Claim Number: FA1408001577082
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Marco Jud (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <judgmentfree.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2014; the National Arbitration Forum received payment on August 27, 2014.
On August 28, 2014, GoDaddy.com, LLC confirmed by email to the National Arbitration Forum that the <judgmentfree.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 22, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@judgmentfree.com. Also on September 2, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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
Complainant has over 800 fitness club locations throughout the United States. Complainant uses various marks in connection with this business, including JUDGMENT FREE; JUDGMENT FREE ZONE; and PLANET FITNESS, THE JUDGEMENT FREE ZONE. These marks are registered with the U.S. Patent and Trademark Office for use in connection with physical fitness instruction and training, and Complainant also holds a registration for JUDGMENT FREE for use in connection with t-shirts. Complainant states that it has used its JUDGMENT FREE and JUDGMENT FREE ZONE marks for over sixteen years, and asserts that the marks have become famous as a result of Complainant’s marketing efforts and the growth of its franchising business.
Complainant contends that the disputed domain name <judgmentfree.com>, registered by Respondent in April 2014, is identical or confusingly similar to its JUDGMENT FREE and JUDGMENT FREE ZONE marks. Complainant contends further that Respondent has no rights or legitimate interests in respect of the disputed domain name. In support thereof, Complainant alleges that Respondent does not own any rights in the JUDGMENT FREE ZONE or JUDGMENT FREE trademarks; that Respondent has never been known by these terms; that Respondent has constructive notice and likely has actual notice of the marks because of their fame and because of Complainant’s U.S. trademark registrations; and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the domain name resolves to a website with links to third-party sites, some of which compete with Complainant’s business. (The Complaint includes a printed copy of that website, dated August 26, 2014. The top of the page states “This Web page is parked for FREE, courtesy of GoDaddy.com,” and the page includes a set of “Sponsored Listings,” comprised of links that appear to relate to travel and tourism, dietary supplements, and financial services. The page also includes an advertisement for virtual office space and many links to GoDaddy.com’s own site.)
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant asserts that Respondent’s use of Complainant’s trademarks demonstrates Respondent’s awareness of the marks and that Respondent’s registration and use of the domain name is for the purpose of attracting, for commercial gain, Internet users seeking Complainant’s website. Complainant asserts further that Respondent is using Complainant’s mark with actual knowledge of Complainant’s rights, and that Respondent is intentionally disrupting Complainant’s business and tarnishing its mark. Complainant states that on July 16, 2014, it requested that Respondent voluntarily transfer the domain name but received no response.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel further finds that Complainant has failed to prove that the disputed domain name was registered and is being used in bad faith. In addition, the Panel finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
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.”).
The disputed domain name is identical to Complainant’s registered trademark JUDGMENT FREE, but for the omission of the space and the addition of the “.com” top-level domain, neither of which is relevant for purposes of paragraph 4(a)(1) of the Policy. See, e.g., LML Investments LLC v. P.A. Gordon, FA 1571756 (Nat. Arb. Forum Sept. 9, 2014) (finding <countrygirl.com> identical to COUNTRY GIRL). The Panel finds that the disputed domain name is identical to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name is identical to Complainant’s mark, and there is no evidence that Respondent has made any use of the name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
To have registered the domain name in bad faith, Respondent must have been aware of Complainant or its mark when Respondent registered the domain name, and the registration must in some way have been targeted at Complainant or its mark. See, e.g., KERING v. c/o WHOIStrustee.com Ltd. / Registrant of ppr.xn--fiq228c5hs, FA 1570401 (Nat. Arb. Forum Aug. 22, 2014).
To find for Complainant in this case, therefore, the Panel would need to infer that Respondent registered the domain name with Complainant or one of its marks in mind, and that Respondent is using the domain name with the intent to create confusion with Complainant’s marks. Neither of these inferences is supported by the evidence. Complainant uses its marks in connection with its Planet Fitness clubs in the United States, and makes no claim that the marks are known elsewhere; Respondent is located in Switzerland.[1] Furthermore, as a cursory Internet search readily demonstrates (even when the search is performed within the United States), Complainant’s JUDGMENT FREE mark corresponds to a relatively common phrase in the English language, one that seemingly is used much more commonly in other senses than it is as a mark associated with Complainant.
Finally, the printout of Respondent’s web page submitted by Complainant does not support its allegations either. It appears to be merely a standard default parking page generated by GoDaddy.com, the registrar. Complainant does not specify which of the linked sites on that page are claimed to compete with Complainant’s business, and the Panel is unable to identify any links having anything whatsoever to do with Complainant or its industry. (As noted above, the links and advertisements contained on that page all appear to relate to travel and tourism, dietary supplements, financial services, virtual office space, or domain name registration services.)
The Panel therefore concludes that Complainant has failed to meet its burden of proving that the disputed domain name was registered and is being used in bad faith.
Under Paragraph 1 of the Rules, “Reverse Domain Name Hijacking” (RDNH) is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., Edward Smith v. Douglas Bates, FA 1483682 (Nat. Arb. Forum Mar. 27, 2013).
Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed.
Proto Software, Inc. v. Vertical Axis, Inc./PROTO.COM, D2006-0905 (WIPO Oct. 10, 2006).
Merely failing to prevail on the merits is insufficient; a finding of RDNH should be reserved for egregious cases truly warranting a declaration “that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding” (the language used in Paragraph 15(e) of the Rules). Compare, e.g., Trudeau Corp. 1889 v. Web Team, FA 1475125 (Nat. Arb. Forum Jan. 29, 2013) (declining to find RDNH absent clear evidence of bad faith), with Proto Software, Inc. v. Vertical Axis, Inc./PROTO.COM, supra (finding RDNH, where Complainant was “represented by Counsel who even on a rudimentary examination of the Policy and its’ application in this area should have appreciated that the Complaint could not succeed”) and Pick Enters., Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Ctr. f/k/a Woman to Woman Health Ctr., D2012-1555 (WIPO Sept. 22, 2012) (holding that a finding of RDNH may be appropriate “if the face of the complaint itself demonstrates a settled reason why the complaint must be denied,” and noting that “[t]he fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable”).
As noted above, the inferences upon which Complainant’s case rests are unsupported by the evidence, and Complainant’s assertion regarding the website to which the disputed domain name resolves are belied by its own evidence. Complainant and its counsel are experienced participants in the UDRP process, and each independently should have recognized that Complainant’s claim was groundless.
For the foregoing reasons, the Panel finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <judgmentfree.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: September 26, 2014
[1] One of Complainant’s exhibits includes a reference to “World Headquarters Career Opportunities,” but this link leads to a web page that describes Complainant as having “more than 825 clubs nationwide” and contains a list of various positions located in Newington, New Hampshire. Complainant’s “world,” therefore, appears to be coterminous with the United States.
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