PFIP, LLC v.
Vendetta Marketing
Claim Number: FA0612000861594
PARTIES
Complainant
is PFIP,
LLC (“Complainant”), represented by Theresa C. Tucker, of Grossman, Tucker, Perreault & Pfleger PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <boycottplanetfitness.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on December 6,
2006; the National Arbitration Forum received a hard copy of the
Complaint on December 11, 2006.
On December 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <boycottplanetfitness.com> domain
name is registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 13, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 2, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@boycottplanetfitness.com
by e-mail.
A timely Response was received and determined to be
complete on January 2, 2007.
On January 4, 2007, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed
James Bridgeman as Panelist.
RELIEFS SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
Respondent requests that the Panel make a determination of
reverse domain name hijacking on the part of Complainant and seeks his costs.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
asserts rights in the PLANET FITNESS mark through its trademark registrations
with the USPTO listed below.
Complainant
submits that Respondent’s <boycottplanetfitness.com>
domain name is confusingly similar to Complainant’s PLANET FITNESS mark. Complainant contends that Respondent’s domain
name contains Complainant’s entire PLANET FITNESS mark and merely adds the
generic term “boycott.” The addition of
the word element “boycott” to Complainant’s trademark is not sufficient to
distinguish it and avoid the possibility of confusion.
Many of
Complainant’s fitness clubs are located in areas of the
The
domain name resolves to a website that includes another permutation of
Complainant’s trademark namely “planet witless” which is also similar to
Complainant’s trademark. Complainant
submits that users of the Internet may be confused into believing that the
website is somehow associated with Complainant’s business.
Complainant contends that Respondent is neither commonly
known by the disputed domain name nor licensed to register domain names
featuring Complainant’s PLANET FITNESS mark.
Complainant contends that
Respondent is using the <boycottplanetfitness.com> domain name to operate a complaint site encouraging
Internet users not to purchase Complainant’s products. Complainant contends that Respondent’s use of
the trademark to operate a complaint site 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).
While the website to which the domain
name resolves has some of the characteristics of a “gripe site,” it is used for
commercial gain of Respondent in that it is for marketing the legal services of
Respondent. Respondent is therefore not
making legitimate non-commercial or fair use of the domain name without intent
for commercial gain to misleadingly divert consumers or to tarnish the
trademark at issue. In particular
Respondent calls himself “Vendetta Marketing” and has also registered the
domain name <vendettamarketing.com>.
This latter domain name resolves to the website of Respondent’s law
offices.
Visitors to the website to which the
domain name in dispute resolves are provided with links to the website of
Respondent’s law offices. There is
direct advertising of Respondent’s legal services by means of the domain name in
dispute. The principal of the law firm
is mentioned in almost all of the press coverage posted on the site. It is reasonable to assume that Respondent
registered the domain name in dispute and developed a website at that address
for the purposes of attracting visitors to the website of his law offices for
commercial gain and not for the purposes of comment or criticism.
By using the disputed domain name,
Respondent has intentionally attempted to attract for commercial gain, Internet
users to Respondent’s website or other on-line location, specifically the
website of his law firm by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s website or location.
By his use of the domain name at
issue, Respondent is intentionally trading on the goodwill associated with
Complainant’s PLANET FITNESS trademark in order to market his own business.
Respondent has used the disguise of a
“gripe site” to market his own services and thus to take advantage of the
public’s interest in or amusement by a “gripe site” to attract users to the
website for Respondent’s law firm.
Respondent’s choice of VENDETTA
MARKETING as a business name indicates that Respondent is engaged in a
marketing exercise as distinct from criticism and comment.
B. Respondent
Respondent
is a law firm. The name VENDETTA
MARKETING is used by the law firm as a name for its marketing division. Respondent
requests that the remedy requested by the Complainant be denied and further requests
that the Administrative Panel make a finding of reverse domain-name hijacking
and award Respondent his costs.
Respondent
represents a client who is engaged in a lawsuit against one of the franchisees
of Complainant arising out of an alleged confrontation between a gym manager
and Respondent’s client. Respondent
alleges that the confrontation was provoked by a gym manager that ended with
her request for the cancellation of Respondent’s client’s membership of the
gym.
On or
about November 5, 2006, Respondent was retained to provide representation in
relation to this dispute and formulated a “media plan” to provide support for
his client’s cause. Part of the media
plan included the registration of a domain and the construction of a website to
be used to support the case.
Soon
thereafter, the domain name in dispute was purchased and registered by
Respondent. The name was chosen
following considerable consideration of legal issues. Respondent, as an attorney familiar with
domain disputes and current ICANN Rules and Policies, specifically chose a
domain name that he believed would withstand legal scrutiny. Aside from the fact that the domain name was
being registered for a bona fide
expression of speech and legal freedoms, and not to profit from or exploit the
trademark of Complainant, Respondent understood that domain disputes have
become commonplace, and in some cases a source of legal abuse for overzealous,
overreaching or vindictive large corporations.
As to the
issue of confusing similarity, Respondent describes Complainant’s argument that
that non-English speakers may be confused by the use of the term
“BoycottPlanetFitness.com” or that non-English speakers may be otherwise
confused or misled by the domain name or the website itself, it should be
pointed out that Complainant does not purport to market its services in any
non-English speaking countries, nor does it provide any non-English translation
of its website or services anywhere on the Internet.
As a
result, the domain name <boycottplanetfitness.com> was specifically selected because of prior case law
generally supporting the use of “Boycott”-prefixed domain names, even in cases
where the respondent (domain-holder) was not engaged in a bona fide legal dispute with the complainant-corporation.
The
domain name is not confusingly similar to Complainants mark. The prefix
“boycott” was specifically designated by Respondent to avoid causing confusion
to the public. Substantial case law has
determined that the addition of the prefix “boycott” to a corporate name
substantially decreases the likelihood that a consumer will be confused or
misled into believing that the site is owned or operated by a trademark holder.
In the
recent UDRP decision, Wal-Mart Stores,
Inc. v. Traffic Yoon, D2006-0812 (WIPO Sept. 20, 2006), the panel
“concluded that [a boycott] case can also be distinguished from those cases in
which the term ‘sucks’ has been appended to a trade mark. In the present case the word ‘boycott’ is
used as a prefix. The ordinary meaning
of boycott is disparaging and critical, unlike ‘sucks’ which relies on an
understanding of idiomatic American slang.
Furthermore, where the concatenated word is a prefix rather than a
suffix, the emphasis normally placed on the initial portion of a domain name
tends to ‘bury’ the trade mark.
Conversely, if the appended word is a suffix, the trade mark is at the
beginning of the domain and therefore much more likely to retain its trade mark
effect on the reader.”
Respondent
submits that it has rights and legitimate interests in respect of the domain
name that are expressly protected by the First Amendment of the United States
Constitution. The website to which the
domain name <boycottplanetfitness.com>
resolves is utilizing the power of words,
pictures and video on a viewable page to express the legal and moral arguments
in support of a viable legal position and to parody the absurd, oppressive, and
discriminatory policies put forth by the Complainant’s business.
The
domain name is not being used in connection with the offering of Complainant’s
goods or services. Complainant’s
argument that the domain is being used by Respondent to offer his services is
absurd. Respondent is an attorney who is
upholding his ethical obligations by zealously representing his client. As the website is a service provided to the
client, Respondent is responsible for ensuring that his client is protected
from insulting, demeaning, and harassing phone calls and messages. To that extent, Respondent has taken it upon
himself to receive all e-mail and telephone correspondence on behalf of his
client to filter out any profane comments or non-credentialed media
inquiries. Respondent has a small link
on the site which allows users to send an e-mail to Respondent’s
attention. The site also has
Respondent’s contact information for media inquiries. Finally, the domain has a link to the website
of Respondent’s law firm, which itself is limited solely to general information
about Respondent’s law practice and contains no mention of the dispute or
references to Complainant.
There are
no solicitations to contact Respondent to file lawsuits against Complainant or
to hire Respondent to do other work.
Respondent
does not now claim nor has he ever claimed to have been commonly known by the
name <boycottplanetfitness.com>.
Respondent
is making a legitimate 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
is an attorney who is representing a client involved in a legitimate business
dispute with a franchisee of Complainant.
The Respondent-Attorney is utilizing the website for two primary
purposes: (1) to put forth its client’s legal and moral position as it relates
to his dispute with Complainant; and (2) to parody, through the use of social
commentary, professionally-drawn caricatures, and comedy, the absurd,
oppressive, and discriminatory policies of Complainant.
The
domain name is not being used in bad faith.
The website to which the domain name resolves was created solely to
support Respondent’s client, his supporters, and his legal position. There is no intent to mislead viewers into
believing they are at Complainant’s official website or a website sponsored by
Complainant. The colors on Respondent’s
website are not similar to the distinctive purple and yellow colors used at all
Complainant’s websites. The HTML title of the website clearly states:
“Boycott Planet Fitness!” The logo on the website itself parodies Complainant’s
logo by using the name “Planet Witless”
Having
regard to the content of Respondent’s website, no reasonable person would think
the website is owned or operated by Complainant.
Respondent did not
register or acquire the domain name for the purpose of selling, renting, or
otherwise transferring the domain name registration to the Complainant who is
the owner of the trademark or service mark or to a competitor of that
Complainant. On the contrary, the domain name was purchased by the marketing
branch of an established law firm immediately after being retained by a client
with a legitimate legal dispute with Complainant. Within days after registration of the domain
name, the website was developed and placed online to coincide with the
appearance of a front page New York Times article that covered the legal
dispute and specifically referred to the registration of the domain name.
The only discussion that
Respondent engaged in with Complainant regarding Respondent’s website was a
telephone conversation between Respondent and Complainant’s CEO in which
Complainant requested the removal of the gym manager’s caricature from the
website.
Respondent
has not registered the domain name at issue in order to prevent the owner of
the trademark or service mark from reflecting its mark in a corresponding
domain name and Respondent has not engaged in any pattern of such conduct. Besides the domain name in dispute,
Respondent controls only one other domain name that bears the name of another
third party corporation, which was purchased after this proceeding was
initiated for the purpose of providing marketing support, registration of
complainants as possible litigants, and information for a separate legal
proceeding against that third party. Prior to the filing of this Complaint,
Respondent had never utilized a corporate name in any of its more than 30
domain names currently registered.
Complainant
has been in business for 13 years and has had ample time to reflect its
trademark and service marks in corresponding domain names. Complainant is focused solely on silencing
opposition and expression rather than protecting its allegedly valued
trademarks and service marks. Despite
the apparent registration of the domain <planetfitnesssucks.com> by
another person, to Respondent’s knowledge, Complainant has never made any
attempt to retrieve <planetfitnesssucks.com> from its current
registrant. Furthermore, Complainant,
with knowledge of Respondent’s registration of <planetwitless.com>, has
taken no action with respect to that domain name. Notably, Complainant’s lack of action with
respect to the above undeveloped websites offers further evidence that it is
intent on silencing opposition and expression.
Respondent states that the primary
objectives in his use of the domain name are to explain the facts and arguments
that support his client’s legal and moral position, to parody the gym’s
oppressive policies, and to allow his supporters and other aggrieved members of
this gym chain to voice their experiences and complaints.
Respondent has not made any attempt to attract Internet
users to Respondent’s website by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship affiliation or endorsement of
Respondent’s website. In fact, just the
opposite is true. In determining which
domain to register, Respondent actually registered both <boycottplanetfitness.com> and
<planetwitless.com>, and decided that using the name
<planetwitless.com> in radio and television interviews might give rise to
confusion among media viewers and radio listeners as to whether the site
belonged to Complainant or someone else, because of potential audibility
issues. To the contrary, the domain <boycottplanetfitness.com> leaves no
doubt about its position, its ownership, and its clarity.
In fact, the <planetwitless.com> domain name remains
unused and does not now nor has it ever resolved to any website other than to a
standard “parked” page.
Respondent
requests a finding of reverse domain name hijacking by
Complainant pursuant to Rule 15(e) of Rules for Uniform Domain Name Dispute
Resolution Policy (as Approved by ICANN on October 24, 1999) (the “Rules”) for the following reasons:
(1) Complainant and/or Complainant’s counsel knew or should have known that
there was no legal basis to mandate the transfer of this domain considering the
facts known to all parties; (2) Complainant initiated this proceeding solely
for the purpose of harassment and intimidation; (3) Complainant did not have a
good faith basis to pursue this litigation; (4) Respondent made no formal
request or demand prior to initiating this proceeding; and (5) Complainant’s
actions in pursuing this litigation exemplify the exact meaning of attempted
“reverse domain name hijacking.”
Finally,
Respondent respectfully requests that, to the extent permitted by law and the
rules of this tribunal, the Panel award attorneys’ fees to the Respondent.
C. Additional Submissions
There were no Additional Submissions filed.
FINDINGS
For
reasons given below, Complainant is not engaged in reverse domain name
hijacking as alleged by Respondent.
DISCUSSION
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.”
Policy ¶ 4(a) requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
There are two lines of decisions as
to whether a domain name that incorporates a complainant’s trademark together
in combination with an abusive or hostile word is confusingly similar. The continuing disagreement among panelists
is continuing and this is illustrated by the following recent decisions.
In Homer TLC, Inc. v.
GreenPeople, FA 550345 (Nat. Arb.
Forum Oct. 25, 2005) where the domain name at issue was <homedepotsucks.com>,
the panel considered that the addition of the word element “sucks” was
sufficient to distinguish the disputed domain name from Complainant’s THE HOME
DEPOT mark.
On the other hand in Dell
Inc. v. Innervision Web Solutions c/o Domain Registrar, FA 445601 (Nat.
Arb. Forum May 23, 2005), a
three-member panel found that the domain name <dellcomputerssuck.com> was
confusingly similar to the Complainant’s DELL mark.
Similarly, in Ameridream, Inc. v. The Owners
Respondent has submitted that panels have accepted that the
addition of the word “boycott” as a prefix to a complainant’s mark in a domain
name, is sufficient to distinguish the domain name and the mark because of the
meaning of the word “boycott” and because the prefix dominates the domain name.
A simple test has emerged among
certain panelists. As recently as last
month, in Ryanair Ltd. v. Michael Coulston, D2006-1194 (WIPO December 12, 2006), the simpler view was put by the
panel, in a proceeding that was ultimately decided against the complainant on
other elements of the test in Policy ¶ 4(a). That case concerned the domain name <ryanaircampaign.org>. In circumstances where the complainant had
definitively proven ownership of trademark rights in the name RYANAIR, the
learned panelist held that
“[b]ecause the Domain Name incorporates that mark in its entirety
and adds an additional word (“campaign”), the Domain Name is confusingly
similar to Complainant’s trademark for purposes of the Policy.” See Covance, Inc. v. Covance Campaign,
D2004-0206
(WIPO April 30, 2004).
In the present
proceeding, the domain name was clearly chosen to refer to the Complainant’s
trademark and it is therefore similar.
As to whether they are confusingly similar, one can
understand the attraction of the view of the learned panel in Homer TLC, Inc. v. GreenPeople FA 550345
(Nat. Arb. Forum Oct. 25, 2005), where he stated: “The logic of panels who feel
non-English speakers will misunderstand the meaning of the word “sucks” escapes
this Panel. “Sucks” is a pretty short
word and it isn’t a compliment. Considering most beginning linguists learn curse words first, it is
likely anyone with any command of the English language knows “sucks” doesn’t
have a good connotation.”
On the
other hand similarity of marks and domain names or lack
thereof are context-specific concepts and those using the Internet are
not always either English speakers or “beginning linguists.”
In the
context of the present proceeding, the use of such a clearly similar name is
likely to result in the potential of at least initial interest confusion among
Internet users.
This
Panel finds that the domain name in dispute is confusingly similar to
Complainant’s trademark and Complainant has therefore satisfied the first
element of Policy ¶ 4(a).
There is
also division among panels on the question of whether a criticism website can
qualify as a legitimate or fair use when it is located at a domain name that is
identical to a complainant’s trademark. See Ryanair Ltd. v.
Coulston, D2006-1194 (WIPO Dec. 12, 2006); WIPO Overview of
WIPO Panel Views on Selected UDRP Questions (at http://www.wipo.int/amc/en/domains/search/overview/index.html).
There is
a theory that the conflicting views of panelists on this point may reflect a
difference in approach between cases involving parties and panels in the
There is
also a view that a distinction should be drawn between those cases where the
domain name and the complainant’s mark are identical and other cases where a
domain name may be confusingly similar but not identical to the mark. In the latter cases it has been suggested
that a more searching inquiry is indicated and a balance is to be struck
between the interests of the respondent in disseminating its criticism and the
extent to which a site is actually confusing consumers. See Ryanair
Ltd. v. Coulston, D2006-1194
(WIPO Dec. 12, 2006),
citing Covance, Inc. v. Covance Campaign, D2004-0206 (WIPO
April 30, 2004).
The
evidence in the present proceeding however indicates that Respondent is not simply
engaged in using the domain name as the address for a gripe site. It would appear that he has at least a dual
purpose in his registration and use of the domain name and his purposes are
primarily commercially motivated in both instances viz. to advance his clients position in litigation in which he has
taken instructions as a legal representative and to promote his legal
practice. Respondent’s site is not a
gripe site. Its purpose goes beyond
criticism or fair comment. It is
intended to bring leverage to Respondent’s client’s case and to promote the
business of Respondent simultaneously.
In the
circumstances Respondent has no rights or legitimate interest in the domain
name in issue and Complainant has therefore satisfied the second element of the
test in Policy ¶ 4(a).
Respondent
has submitted that the domain name at issue was registered to support his
client and his client’s associates. The
domain name however is owned by the attorney and not by the client. Respondent addresses this point submitting
that he holds the domain name to protect his client from unwanted communications, however he owns both the domain name
registration and owns the website to which it resolves and he does not indicate
that he is holding either for his client.
Furthermore the domain name was chosen by Respondent and not by his
client and the name VENDETTA MARKETING in which Respondent registered the
domain name, indicates that the domain was registered for a commercial
marketing as distinct from a “free speech” criticism function.
If the
site were a true gripe site relating to his clients case only, there would be
no necessity to include links to the website of Respondent’s law firm – a
contact facility would be sufficient.
Furthermore,
the choice of the word “boycott” goes beyond mere criticism or comment. It is an encouragement to others to act in a
manner that would have an adverse affect on Complainant’s business. “A boycott is the act of abstaining from
using, buying, or dealing with someone or some organization as an expression of
protest or as a means of coercion. The word boycott entered the English
language during the Irish "Land War" and is derived from the name of
Captain Charles Boycott, the estate agent of an absentee landlord, the Earl
Erne, in
The list of circumstances that shall be evidence of the registration and use of a domain
name in bad faith set out in Policy
¶ 4(b) is
not exhaustive and is expressly stated to be
without limitation. While Policy ¶ 4(b)(iii)
refers to registration of a domain name
primarily for the purpose of disrupting the business of a “competitor,” the
registration of a domain name for the purposes of disrupting (expressly the
encouragement to “boycott”) the business of the other party in a lawsuit, goes
beyond mere criticism and in the view of this Panel amounts to registration and
use of the domain name in bad faith.
Complainant
has satisfied the third element of the test in Policy ¶ 4(a) and is entitled to succeed in its application.
Finally,
for completeness, as Complainant has succeeded, it follows that Respondent has
failed to establish its claim that Complainant is engaged in reverse domain
name hijacking. The Panel has no
jurisdiction to award costs.
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that
the <boycottplanetfitness.com>
domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: January 18, 2007
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