Complainant is PFIP, LLC of New Hampshire, United States of America, represented by Grossman, Tucker, Perreault & Pfleger PLLC, United States of America.
Respondent is Igor Golub of Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 13, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On September 14, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 7, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on October 13, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is the owner of several trademark registrations with the United States Patent and Trademark Office all of which include the name or design “Planet Fitness” (collectively the “PLANET FITNESS Mark”). Complainant has been using its PLANET FITNESS Mark in connection with its business for over sixteen (16) years and has over 353 club locations through out the United States. Complainant offers health and fitness services, among others, under its PLANTET FITNESS Mark. 5. Parties’ Contentions A. Complainant
Complainant contends that as a result of its marketing efforts and growth of its franchising business, the PLANET FITNESS Mark has become famous. Complainant further contends that the principal feature of the PLANET FITNESS Mark is the name “planet fitness,” making the Disputed Domain Name identical with only the addition of “.co” which is nondistinctive.
Complainant alleges that the Disputed Domain Name resolves to a website that appears to be a web portal disguised as a search results page showing various “hits” for websites and third party websites providing health and fitness services, including competitors of Complainant and “pop-up” advertisements. Because Complainant offers health and fitness services, Complainant alleges that consumers and Internet users believe or are being deceived into thinking that Respondent’s website originates with or is associated with Complainant.
Complainant alleges that Respondent does not own any right in the PLANET FITNESS Mark. Nor does Respondent have a license to use the PLANET FITNESS Mark granted by the Complainant. Complainant further alleges that Respondent is using the Disputed Domain Name for commercial profit.
Complainant alleges that Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services, but is used for attracting Internet users to Respondent’s website for the purpose of promoting the sale of third party products.
Complainant alleges that Respondent has never been known by the term “Planet Fitness.” Complainant further alleges that because of the well known and famous nature of the PLANET FITNESS Mark, Respondent likely had actual notice of the PLANET FITNESS Mark, or, because of the trademark registrations, Respondent had at least constructive notice of Complainant’s rights before the registration of the Disputed Domain Name.
Complainant alleges that Respondent is not making a legitimate noncommercial or fair use of the Disputed Doman Name and is misleadingly diverting consumers to Respondent’s own website.
Complainant alleges that Respondent’s use of the Disputed Domain Name is for the purpose of attracting, for commercial gain, Internet users who are looking for Complainant’s website. Complainant further alleges that Respondent’s actions are disrupting the business of Complainant and tarnishing the distinctiveness and reputation of Complainant’s PLANET FITNESS Mark and its business. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,WIPO Case No. D2000-1772 (WIPO April 10, 2001), footnote no. 3.
A respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify whether the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that the Disputed Domain Name is identical with or confusingly similar to the PLANET FITNESS Mark pursuant to the Policy paragraph 4(a)(i). Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the PLANET FITNESS Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
Complainant contends that it has numerous registrations constituting the PLANET FITNESS Mark as defined herein. Complainant further contends that it has been using its PLANET FITNESS Mark in connection with its business for over sixteen (16) years and has over 353 club locations through out the United States.
The Panel notes that the entirety of the PLANET FITNESS Mark is included in the Disputed Domain Name.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the PLANET FITNESS Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing, e.g., that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).
Respondent does not appear to have any relationship with or permission from Complainant for the use of the PLANET FITNESS Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.
Complainant has sustained its burden of coming forward with allegations that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the PLANET FITNESS Mark. The Panel can find no evidence in the file that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily 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, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product
Complainant alleges that Respondent’s use of the Disputed Domain Name is for the purpose of attracting, for commercial gain, Internet users who are looking for Complainant’s website. Complainant further alleges that Respondent’s actions are disrupting the business of Complainant and tarnishing the distinctiveness and reputation of Complainant’s PLANET FITNESS Mark and its business.
The Panel finds that Complainant has satisfied the elements of the Policy paragraph 4(b)(iv). Therefore, the Panel concludes that Respondent registered and is using the Disputed Doman Name in bad faith in violation of the Policy paragraph 4(a)(iii). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: October 29, 2010
Full & Egal Universal Law Academy