PFIP, LLC v. Sergey Medvedev
Claim Number: FA1208001460689
Complainant is PFIP, LLC (“Complainant”), represented by Teresa C. Tucker of Grossman, Tucker, Perreault & Pfleger PLLC, New Hampshire, USA. Respondent is Sergey Medvedev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bigplanetfitness.com>, registered with NicReg 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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on August 30, 2012.
On September 7, 2012, NicReg LLC confirmed by e-mail to the National Arbitration Forum that the <bigplanetfitness.com> domain name is registered with NicReg LLC and that Respondent is the current registrant of the name. NicReg LLC has verified that Respondent is bound by the NicReg 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 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2012 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@bigplanetfitness.com. Also on September 7, 2012, 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 October 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 name be transferred from Respondent to Complainant.
A. Complainant’s Allegations
a. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PLANET FITNESS mark (e.g., Reg. No. 2,698,976, registered March 25, 2003).
b. Complainant uses the PLANET FITNESS mark in connection with its athletic club business. The mark has become synonymous with such services.
c. The <bigplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark because it contains Complainant’s mark and merely adds the generic term “big”.
d. Respondent is not known by the <bigplanetfitness.com> domain name.
e. Respondent uses the <bigplanetfitness.com> domain name to resolve to a website offering to sell the disputed domain name.
f. Respondent registered and uses the <bigplanetfitness.com> domain name for the purpose of attracting, for commercial gain, Internet users to a third-party website with the intention of selling the disputed domain name. Respondent aims to mislead Internet users in to thinking that the third-party resolving website is connected with Complainant.
g. Respondent had knowledge of Complainant’s rights in the PLANET FITNESS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <bigplanetfitness.com> domain name on September 10, 2011.
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.”).
Complainant asserts that it owns trademark registrations with the USPTO for the PLANET FITNESS mark (e.g., Reg. No. 2,698,976, registered March 25, 2003). The Panel determines that Complainant’s trademark registrations with the USPTO are sufficient to establish Complainant’s rights in the PLANET FITNESS mark under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that the <bigplanetfitness.com> domain name is confusingly similar to Complainant’s PLANET FITNESS mark. Complainant further asserts that the disputed domain name mainly consists of Complainant’s mark together with the generic term “big”. Mere addition of the generic descriptor “big” does not distinguish the disputed domain name from Complainant’s mark. See Stanwurth Development Ltd. v. Paulson, case No. D2009-0259 (WIPO May 5, 2009) (finding the domain name <bigjackpotcity.com> confusingly similar to complainant’s JACKPOT CITY mark).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not known by the <bigplanetfitness.com> domain name. The Panel notes that the WHOIS information identifies “Sergey Medvedev” as the registrant of the disputed domain name. The Panel also notes that Respondent did not present any affirmative evidence contradicting Complainant’s allegation. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the <bigplanetfitness.com> domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent uses the <bigplanetfitness.com> domain name to resolve to a website offering to sell the disputed domain name. Complainant contends, and this Panel agrees, that such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel notes that the screenshot provided by Complainant for the website resolving from the <bigplanetfitness.com> domain name shows that the website also hosts hyperlinks. The Panel further notes that these hyperlinks are entitled “PEER TO PEER CAR RENTALS,” “20 YEAR OLD RENTERS,” “PAYLESS CAR RENTAL,” etc., which are unrelated to Complainant’s athletic club business. The Panel concludes that the hosting of unrelated hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <bigplanetfitness.com> domain name. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant has thus satisfied Policy ¶ 4(a)(ii).
Complainant has alleged, and Respondent does not contest, that its mark is well known in connection with athletic club services. The Panel accepts this allegation and concludes that Respondent registered the <bigplanetfitness.com> domain name in bad faith.
Complainant further contends that Respondent registered and uses the <bigplanetfitness.com> domain name for the purpose of attracting, for commercial gain, Internet users to a third-party website with the intention of selling the disputed domain name. Complainant argues that Respondent aims to mislead Internet users into thinking that the third-party website is connected with Complainant. The Panel finds that Respondent creates confusion as to Complainant’s affiliation with the disputed domain name by incorporating Complainant’s mark in the domain name. The Panel also finds that Respondent is attempting to commercially benefit by selling the disputed domain name, hosting unrelated hyperlinks, and collecting pay-per-click fees. The Panel holds that Respondent registered and uses the <bigplanetfitness.com> domain name in bad faith pursuant to 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).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigplanetfitness.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 12, 2012
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