PFIP, LLC v. Frank Wong
Claim Number: FA1005001324183
Complainant is PFIP, LLC (“Complainant”), represented by Teresa
C. Tucker, of Grossman, Tucker, Perreault & Pfleger
PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <planetfitnessonline.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2010.
On May 12, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <planetfitnessonline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2010 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@planetfitnessonline.com by e-mail. Also on May 14, 2010, 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 June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <planetfitnessonline.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark.
2. Respondent does not have any rights or legitimate interests in the <planetfitnessonline.com> domain name.
3. Respondent registered and used the <planetfitnessonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PFIP LLC, offers health and fitness services in
its 280 club locations throughout the
Respondent, Frank Wong, registered the <planetfitnessonline.com> domain name on March 16, 2010. Respondent’s disputed domain name resolves to a website located at <truthaboutabs.com> that promotes and markets weight loss aids unrelated to Complainant.
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."
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.”).
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.
The Panel finds that Complainant has established rights in its PLANET FITNESS mark under Policy ¶ 4(a)(i), through its trademark registrations with the USPTO (e.g., Reg. No. 2,438,677 issued March 27, 2001). Further, the Panel finds that Complainant’s trademark registrations do not need to be in the same country that Respondent resides in under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <planetfitnessonline.com> domain name
contains Complainant’s mark in its entirety with the addition of the generic
term “online” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that such additions are
not adequate to distinguish the disputed domain name from Complainant’s mark and
that the disputed domain name should be considered confusingly similar to
Complainant’s mark. The Panel finds that
Respondent’s disputed domain name is confusingly similar to Complainant’s
PLANET FITNESS mark under Policy ¶ 4(a)(i), where the disputed domain name
contains Complainant’s entire mark and the addition of the generic term
“online” and the gTLD “.com.” See Broadcom Corp. v. Domain
Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com>
domain name is confusingly similar to the complainant’s BROADCOM mark); see also Am.
Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to 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)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding
that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶
4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights or
legitimate interests in the <planetfitnessonline.com>
domain name under Policy ¶ 4(a)(ii). Complainant must make a prima facie case in support of its assertions. Upon a finding that Complainant has
established a prima facie case the
burden of proof shifts to Respondent to show that it does have rights or
legitimate interests in the <planetfitnessonline.com>
domain name. See Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see
also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by
the complainant, the burden then shifts to the respondent to demonstrate its
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)). The Panel finds that Complainant
has met its burden and has produced a prima
facie case to support its allegations.
Due to Respondent’s failure to submit evidence to show that it possesses
rights or legitimate interests in the disputed domain name the Panel may assume
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertions in this regard.”); see
also Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the evidence
on record to determine if Respondent has rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain name and that Respondent has not been granted permission to use Complainant’s mark in any way. The WHOIS information for the <planetfitnessonline.com> domain name identifies “Frank Wong” as the registrant of the name. Respondent offers no evidence or argument to counter Complainant’s assertions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and all other evidence on record. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent is not making a
legitimate noncommercial or fair use of the disputed domain name, nor is
Respondent using the disputed domain name for a bona fide offering of goods or services. Complainant argues that Respondent is using
the disputed domain name to market the goods and services of a third-party, and
that such use is evidence that Respondent lacks rights and legitimate interests
in the disputed domain name. The Panel
finds that Respondent’s use of the disputed domain name to resolve to the
<truthaboutabs.com> domain name where unrelated third-party products are
marketed and sold, is not a use in connection with a bona fide offering of products or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (finding that the respondent’s use of a domain name to
redirect Internet users to websites unrelated to a complainant’s mark is not a bona
fide use under Policy ¶ 4(c)(i)); see
also Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a
confusingly similar domain name suggests that the respondent lacks rights or
legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed domain name to unfairly attract and redirect Internet users to an unrelated third-party website for commercial gain. Complainant argues that Respondent is attempting to confuse Internet users, who are seeking Complainant’s business and products, into believing that Complainant is affiliated with or sponsoring the content displayed through the <planetfitnessonline.com> domain name. Complainant contends that such use by Respondent is evidence of bad faith registration and use. The Panel finds that Respondent’s use of the disputed domain name to resolve to website that markets and sells unrelated products to Complainant, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <planetfitnessonline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 11, 2010
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