Pilot Fitness, LLC v. Max Wettstein / Max Wettstein Fitness
Claim Number: FA1808001799942
Complainant is Pilot Fitness, LLC (“Complainant”), represented by Lauren Dils, California, USA. Respondent is Max Wettstein / Max Wettstein Fitness (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilotfitness.net>, registered with FastDomain Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2018; the Forum received payment on August 3, 2018.
On August 3, 2018, FastDomain Inc. confirmed by e-mail to the Forum that the <pilotfitness.net> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@pilotfitness.net. Also on August 13, 2018, 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.
On August 23, 2018, Respondent filed a timely Response.
On August 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
On August 28, 2018 , Complainant filed a timely additional submission pursuant to the Forum's Supplemental Rule #7. The Panel has taken the additional submission into account in considering its decision.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Complainant
Complainant made the following contentions.
1. Complainant, Pilot Fitness, LLC, uses the PILOTFITNESS mark in connection with all aspects of Complainant’s business, namely, providing services and products, including educational courses and informational writings, related to improving the health and wellness of members of airline flight crews and traveling professionals.
2. Complainant has rights in the PILOTFITNESS ELEVATE YOUR HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,543,182 registered June 3, 2014). See Compl. Annex. A.
3. Respondent’s <pilotfitness.net> domain name is identical/confusingly similar to Complainant’s mark because Respondent incorporates the mark, less the descriptive portion of the mark (ELEVATE YOUR HEALTH), in the disputed domain name and adds the “.net” generic top-level domain (“gTLD”).
4. Respondent lacks rights and legitimate interests in the <pilotfitness.net> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to draw customers away from Complainant’s webpage by offering goods and services that compete directly with Complainant.
5. Respondent registered and uses the <pilotfitness.net> domain name in bad faith. Respondent attempts to mislead internet users by creating a false association between itself and Complainant. Complainant sent Respondent multiple cease and desist letters from which Respondent failed to respond or comply with Complainant’s demands. See Compl. Annexes D-G. Additionally, Complainant offered to purchase the disputed domain name from Respondent, which Respondent also never responded. See Compl. Annexes E-G.
B. Respondent
Respondent made the following contentions.
1. Respondent registered the <pilotfitness.net> domain name on March 21, 2012. See Resp. Correspondence.
2. Respondent has a reputation in the fitness community, being a pilot who submits that he is passionate about fitness, and has been featured in numerous fitness magazines. See Resp. Correspondence.
3. Respondent comes from a background of fitness and health, leading to Respondent’s passion for fitness. Respondent wanted to add a Pilot Fitness Page to its online fitness site because Respondent is passionate about fitness, not to earn any income from this activity. To that end, Respondent registered the disputed domain name.
4. Respondent did not register or use the domain name in bad faith.
5. Respondent purchased the disputed domain name before Complainant acquired rights in the PILOTFITNESS ELEVATE YOUR HEALTH trademark.
6. Respondent rejected Complainant’s offer to purchase the disputed domain name, and instead offers it for sale for the price of $10,000.00.
C. Additional Submissions.
Complainant
Complainant made the following additional contentions.
1. Complainant rejects the contention, as has been alleged by Respondent, that its attorney ever said to Respondent that Respondent owned the disputed domain name before Complainant registered the domain name <pilotfitness.com>.
2. Complainant had unsuccessfully offered to negotiate with Respondent to purchase the disputed domain name.
3. Respondent’s offer to sell the domain name for $10,000.00 was not an attempt to negotiate in good faith.
4. Complainant rejects the contention that it has harassed Respondent.
5. Respondent has used Complainant’s trademark evidenced in the Complaint and has also used Complainant’s FIT FLYER trademark showing Complainant’s bad faith.
6. Since the Complaint was filed, Respondent has continued to use Complainant’s trade name Pilot Fitness.
1. Complainant is a United States company engaged in the business of providing services and products, including educational courses and informational writings, related to improving the health and wellness of members of airline flight crews and travelling professionals.
2. Respondent is a pilot and an adviser and consultant on health and fitness.
3. Respondent registered the disputed domain name on or about March 21, 2012.
4. Complainant’s PILOTFITNESS ELEVATE YOUR HEALTH trademark was registered on June 3, 2014.
5. The disputed domain name is neither identical nor confusingly similar to Complainant’s PILOTFITNESS ELEVATE YOUR HEALTH trademark.
6. The evidence establishes that Respondent at all material times had a right and legitimate interest in the disputed domain name.
7. There is no evidence showing that Respondent registered and used the disputed 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(f), 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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PILOTFITNESS ELEVATE YOUR HEALTH trademark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in the mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant has adduced in evidence a copy of its registration of the mark with the USPTO ( Reg. No. 4,543,182, registered June 3, 2014). See Compl. Annex. A. Therefore, the Panel finds that Complainant has rights in the PILOTFITNESS ELEVATE YOUR HEALTH mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PILOTFITNESS ELEVATE YOUR HEALTH mark. Complainant argues that the <pilotfitness.net> domain name is identical to Complainant’s mark because the words ELEVATE YOUR HEALTH in the trademark are merely a “tagline” to Complainant’s trade name and its company name, and that it is confusingly similar to the trademark because the words PILOTFITNESS are present in the domain name and the trademark. The Panel does not agree that either of those arguments is correct, essentially because it is not appropriate simply to ignore part of a registered trademark. The question must always be: on a straight comparison between the domain name and the trademark as it is, is the former identical to the latter or, if it is not, is it nevertheless confusingly similar to the trademark? It is true that in making the comparison, panels have on occasions disregarded a descriptive portion of a trademark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). However, the question must always remain whether the domain name is identical or confusingly similar to the whole of the trademark. Clearly, in the present case, the domain name is not identical to the trademark, so that issue may be put to one side. Turning to confusing similarity, it is of course conceivable that some internet users might think that the reference to PILOT FITNESS in the domain name meant the Pilot Fitness of the trademark, i.e. the business operated by Complainant under that name and that they may therefore be confused between the two. But such questions, requiring to be proved as they are, must be established on the balance of probabilities. That being so, the question is whether it is more probable than not, that internet users would assume that the reference to PILOT FITNESS in the domain name meant the Pilot Fitness in the trademark. The Panel’s view is that such an interpretation is unlikely. An internet user, faced with the domain name and even ignoring part of the trademark as Complainant suggests should be done, would realize that the expression “pilot fitness” is a generic or generalized term and the evidence is that it is in wide and common use to mean exactly what the words convey, i.e. the notion of aircraft pilots being fit to the standard expected of pilots or the fitness standards of pilots that others might like to attain whether they are pilots or not. Put in somewhat different words, there is no reason why any internet user would assume that the domain name was referring to Complainant’s Pilot Fitness, rather than to any other business named Pilot Fitness or the general notion of the fitness of pilots. The Panel therefore concludes that the domain name is not confusingly similar to the trademark.
Complainant has thus failed to establish the first of the three elements that it must prove.
The Panel will now turn to the second of the three elements.
Rights or Legitimate Interests
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Having regard to those principles, the Panel finds that Complainant has not made out a prima facie case against Respondent on this issue. Such a prima facie case must show that Respondent has adopted Complainant’s trademark for his domain name, that he has done so without authority and is using it for some illegitimate or improper purpose. In the present case, Complainant can show that Respondent has used part of its trademark, namely the PILOT FITNESS portion, but there is no evidence to show that he was adopting those words because they are in Complainant’s trademark or that there is anything untoward in his registration or the use that he has made of the domain name. Indeed, the evidence is to the contrary. The term used is essentially generic or descriptive, being made up of two generic words with widely understood meanings over which no-one has an exclusive entitlement and they have, on the unchallenged evidence, been used by Respondent on his website within their generic meaning, namely to offer services relating to the fitness of aircraft pilots and others who may want the same standard of fitness services. Indeed, the totality of the evidence shows that it is extremely unlikely that Respondent used the words because they were in Complainant’s trademark or that he even knew of the existence of Complainant, its business or its trademark at the time he registered the domain name. After all, he registered his domain name before Complainant came into existence and, consequently, before Complainant applied for or registered its trademark.
As is often the case, it is more likely than not that Respondent used the words for its domain name because they are the normal and usual words used to describe his activities of providing fitness services to the standard of pilots. His evidence is that those words are in wide use by numerous other parties to provide the services covered by the expression and that this was the reason why he used them in his domain name, not because they are part of Complainant’s trademark, of which in any event he could not have been aware when he registered the domain name.
The Panel therefore finds that the case presented by Complainant does not show, even prima facie, that Respondent had no right to register and use domain name or no interest in it. The evidence as a whole shows that the high probability is that he had and has the right to use the expression in a domain name and that his interest in registering the domain name is a very substantial one which comes from the proposition that in domain names, the first to register one has a right to do so, provided the registrant does not use it for an improper purpose. There is no evidence to show that Respondent registered the domain name for any improper or illegitimate purpose.
The result of that analysis is that it shows Respondent does in fact have a right or legitimate interest in the domain name, thus negating one of the three essential elements that a complainant must prove if it is to succeed. See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to meet its burden of proof satisfactorily suggests that the respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
In any event, even if Complainant had made out a prima facie case, which it has not, Respondent has rebutted that case by a series of valid arguments that establish beyond any doubt that he has a right and legitimate interest in the domain name. The Panel will therefore turn to the defences relied on by Respondent to show how this is so.
The first of them has already been alluded to, namely that Respondent has registered a domain name consisting of generic or descriptive words, a principle usually applied also to dictionary or common words. This principle is firmly established and has been applied in many previous UDRP decisions. In the present case, the domain name consists of two generic words. Evidence of this has been furnished by Respondent and is to be found in the strong evidence tendered by Respondent which he correctly summarises by stating that “hundreds of fellow fit pilots are hashtagging #pilotfitness every day on social media…” and that “Nobody can trademark the phrase ‘Pilot Fitness’. Its everywhere and pilots have been saying it and posting about it for decades.” In any event, this is a submission on which the Panel is able to make its own judgment and that judgment is that the entire domain name is generic.
That principle, however, is not to be used by the registrant of a domain name to damage or degrade a similar trademark nor, as it is sometimes put, to “target” a trademark owner and do it damage. The Panel has examined all of the evidence and finds that there is no evidence to show that Respondent has used the domain name in any such way. Indeed the evidence is all to the effect that Respondent’s website, to which the domain name resolves, is devoted solely to activities coming with the ordinary, generic meaning of the words “pilot fitness” and there is nothing on the website referring to Complainant or its business in any way. Indeed, Respondent’s website, <http://www.maxwettsteinfitness.com/Travel%20Fitness.htm>, to which the disputed domain name resolves, contains a wealth of text and video information and instruction by Respondent which specifically refers to his programs to promote fitness for his work as an airline pilot and for other airline pilots and those interested in the same advice.
The Panel therefore finds that Respondent has established a right and legitimate interest in the domain name on that basis.
Secondly, Respondent has a separate defence that he comes within Policy ¶ 4(c)(i) . That provision gives a defence to a claim such as the present one if the registrant can show, in effect, that before any notice it had of the dispute, it used, or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Such an offering will be bona fide provided the goods or services are not counterfeit or unauthorized products or offered as part of an attempt at passing off, or some other such impropriety. Respondent presumably first had notice of the dispute on or about March 15, 2016, the date of the first cease and desist letter sent on behalf of Complainant. By that date, of course, Respondent had registered the domain name in the following circumstances, described by Respondent in the Response:
“In 2012 I decided I wanted to add to my online fitness site, MaxWettsteinFitness.com, with a Pilot Fitness Page. I had already been featured in several men’s health mags, as the ‘Fit Pilot’, and ‘Fit Flyer’. So I bought the domain PilotFitness.NET in March of 2012 (verify on Whois.com), and published my content which was already written and posted on my site MaxWettsteinFitness.com, but now I directed its own respective, specific domain to point to it.”
The domain name was registered on March 21, 2012. The Wayback Machine at www.archive.org shows that as early as June 14, 2013, Respondent had caused the domain name to resolve to <http://www.maxwettsteinfitness.com/Travel%20Fitness.htm>, which carried detailed advice and related material offered by Respondent on the fitness of pilots and others. It is clear therefore that before notice of the dispute, Respondent was using the domain name for a bona fide offering of goods and services, giving him a defence to the claim. The Panel adds that the defence is available to Respondent although he was not charging for his advice, then or subsequently; the services he was offering were still a bona fide offering of goods or services, bringing him within the provisions of Policy ¶ 4(c)(i).
The fact that Respondent was performing in effect a voluntary service without charge, would also appear to give him a further defence under paragraph 4(c)(iii), as he was making “a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent, therefore, has registered a domain name consisting solely of a generic expression; he has done so before Complainant was incorporated and before it applied for its trademark; has used the domain name for purposes that come entirely within the meaning of the words “pilot fitness” and has done so without targeting Complainant, copying it or pretending that he is Complainant. For all of these reasons, Respondent has established a right or legitimate interest in the disputed domain name.
Complainant has thus failed to establish the second of the three elements it is required to make out.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Panel finds that Complainant has not established that Respondent registered or used the domain name in bad faith, let alone both of those situations. That is so for the following reasons.
First, there is no evidence that Respondent acted in bad faith in either registering or using the domain name. The Panel has already decided that Respondent had a right to register the domain name and to use it and that at all times it acted legitimately. In particular, Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use. See Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)). Respondent seems at all times to have acted in good faith in registering a domain name that accurately reflected the nature of the activity he proposed carrying out and in using it for exactly that purpose. There is therefore no factual basis for finding bad faith.
Secondly, Respondent argues that he purchased the disputed domain name before Complainant registered its trademark with the USPTO. The Panel agrees. That is so because the domain name was registered on March 21, 2012 which was before the trademark was registered on June 3, 2014 and actually before the trademark was filed, October 22, 2013. A finding of bad faith may be precluded where a respondent registered the disputed domain name prior to Complainant acquiring rights to the mark under Policy ¶ 4(a)(iii). See Aqua Engineering & Equipment, Inc. v. DOMAIN ADMINISTRATOR / PORTMEDIA HOLDINGS LTD, FA 1805001785667 (Forum June 25, 2018) (“Respondent registered the DDN prior in time to Complainant acquiring rights in and to its trademark, thereby precluding a finding of bad faith registration and use.”). Respondent provides a photo showing its registration of the disputed domain name dating March 21, 2012. See Resp. Correspondence. This date is over two years prior to Complainant’s registration of the mark on June 3, 2014. See Compl. Annex. A. Therefore, the Panel concludes that Respondent’s rights in the domain name predate Complainant’s rights in the PILOTFITNESS ELEVATE YOUR HEALTH mark. As there was nothing to which any bad faith could be directed, it was clearly impossible for Respondent to have registered the disputed domain name in bad faith.
Indeed, as the website of the California Secretary of State shows that Complainant was not registered as a company until February 13, 2013, a year after the domain name was registered, Respondent could have had no bad faith directed to a complainant that did not even exist at the time the domain name was registered.
It should also be added here that the fact Respondent has now offered to sell the domain name to Complainant for $10,000 does not constitute bad faith. If Respondent establishes his right to the domain name, as he has done, he may use it for any lawful purpose, including selling it and for whatever price he may obtain.
For all of those reasons, Complainant has failed to show that Respondent registered and use the domain name in bad faith and has thus failed to establish the third of the three elements that it must prove.
REVERSE DOMAIN NAME HIJACKING
Respondent has alleged that Complainant, or at least the owners of Complainant, have harassed him in respect of their claim for the domain name. That is tantamount to a request that the Panel should make a finding of Reverse Domain Name Hijacking (“RDNH”) under Rule 15(e). In any event, the Panel is entitled to consider that issue, and on one view is obliged to do so whether it is requested or not.
As the making of a finding of RDNH is discretionary, it is not necessary to embark on a long discussion of previous decisions where the finding has been made. The Panel will cite only one decision, Walker Edison Furniture Company LLC v. WARNE, MARTIN, FORUM decision, Claim Number: FA1804001784459, (May 23, 2018), as it is a convenient summary of the principles involved and not dissimilar to the present case. In that decision, the Panel said:
“Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <forestgate.com> domain name, of its rights to use the disputed domain name. The Panel finds that Complainant knew or should have known that it was unable to prove its claim. The Panel finds there is sufficient evidence to this effect, and finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).”
The same can be said of the present case as Complainant must have known of the date of its own Incorporation and when it applied for and was granted its trademark and must thus have known that it could not prove either that Respondent had no right to or interest in the domain name, or that Respondent had registered or used the domain name in bad faith. However, it persisted with its demands for two years and offered trifling sums to buy the domain name. Having failed, it then moved to Plan B to try to enforce a transfer. It is therefore fair to say, in the words used in Rule 15(e), that Complainant brought the claim “primarily to harass the domain-name holder…”. Accordingly, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the proceeding.
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 <pilotfitness.net> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 30, 2018
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