DECISION

PFIP, LLC v. Progetti International

Claim Number: FA0211000135015

PARTIES

Complainant is PFIP, LLC, Dover, NH (“Complainant”) represented by Teresa C. Tucker, of Tucker Perreault & Pfleger PLLC.  Respondent is Progetti International, Columbia, MD (“Respondent”) represented by Chet Vienne, of Progetti International.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <planetfitness.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Richard Hill as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 26, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On November 27, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <planetfitness.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 30, 2002 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@planetfitness.com by e-mail. On December 30, 2002, an Extension of Time to Respond to Complaint was granted to Respondent, setting a deadline of January 20, 2003 by which Respondent could file a Response to the Complaint.

A timely Response was received and determined to be complete on January 20, 2003.

On January 27, 2003, Complainant submitted an Additional Submission, under Supplemental Rule 7(a).

On January 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that the disputed domain name <planetfitness.com> is identical or confusingly similar to its trademark PLANET FITNESS.

Complainant alleges that the registration information shown in the WHOIS is incorrect, and states:

With respect to the identity of the Respondent, up until at least as recently as November 22, 2002, the registrant of the disputed domain name was identified by a fictitious name, “Planet Fitness,” at 5212 Farm Pond Lane, Columbia, Maryland 21045.  The administrative contact was identified as Chet Vienne at the same address. A check of the WHOIS data on November 25, 2002, shows that the registrant information was changed to identify the registrant as Progetti International at the same Maryland address. 

Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, and has acted in bad faith for the following reasons:

· by providing incorrect WHOIS information;

· by using the domain name to point to a website consisting of a single page stating "site under construction" (passive holding of the domain name);

· because any use of the disputed domain name by Respondent would be in violation of Complainant's trademark, or in violation of unfair competition laws;

· because Respondent offered to sell the disputed domain name to Complainant for US $ 50,000, a sum in excess of out-of-pocket costs.

In its Additional Submission, Complainant further alleges that the Response was not properly authorized by the owner of the disputed domain name and disputes the facts and evidence presented by the Respondent.

B. Respondent

Respondent alleges that it registered and used the disputed domain name before the Complainant obtained its trademark, concedes that the domain name is not actively used at present, but presents evidence to the effect that it has been used in the past, in particular from March 1996 through 1997.  The Respondent also presents evidence of plans to create a new web site at the disputed domain name.

Regarding the WHOIS information, Respondent replies that the address is his personal home, still occupied by his mother, and that he neglected to change the address when he moved to Italy to pursue business opportunities.

Respondent alleges that the Complainant's trademark is not famous or well-known and should therefore enjoy protection only for the specific classes for which it is registered in the USA.

Respondent denies having offered to sell the disputed domain name for US $ 50,000, but concedes that it refused an offer to sell for US $ 3,000 and informed the Complainant that it had invested over USS $ 50,000 in the disputed domain name.

Respondent denies that it has acted in bad faith.

FINDINGS

The Complainant has a filed a US trademark application for PLANET FITNESS, claiming first use in June 1995.  Final review had been completed as of 20 November 2002 and the application will be published for opposition.

On the basis of the evidence presented, the Panel finds that the Complainant has at least a common law trademark for PLANET FITNESS.

On the basis of the evidence presented, the Panel finds that the Respondent also has a common law trademark for PLANET FITNESS.

On the basis of the evidence presented, the Panel finds that there is no reason to doubt that the Respondent is validly representing the owner of the disputed domain name.

On the basis of the evidence presented, the Panel finds that the error in the WHOIS data with respect to Respondent is due to an oversight rather than a deliberate attempt to induce others in error.

On the basis of the evidence presented, the Panel finds that the Respondent did actively use the disputed domain name in the past, and does have plans to use it again in the future.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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.

Identical and/or Confusingly Similar

The fact that Complainant's trademark registration has not yet been accepted is not relevant to this case, since the Panel finds that the Complainant has common law trademark rights.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

The disputed domain name <planetfitness.com> is identical or confusingly similar to the Complainant's trademark PLANET FITNESS.

Both Complainant and Respondent present arguments concerning actual confusion by consumers for certain types of products.  Such arguments are irrelevant for the present case, since the domain name and the trademark are practically identical, and this is sufficient under the Policy.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Rights or Legitimate Interests

The Panel holds that the Respondent has provided sufficient evidence to show that it had legitimately used the disputed domain name in the past and plans to use it in the future.  See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development); see also Bharatplanet.com Ltd v. Adnet Solutions, AF-0290 (eResolution Sept. 18, 2000) (finding that Respondent actively uses the contested domain name and has plans to expand its business and services upon fulfillment of a pending merger as evidence that Respondent has legitimate interests in the contested domain name and is not using it in bad faith).

The Panel notes the Complaint's contention, made in its Additional Submission, that the print-outs of web pages provided by the Respondent in its Exhibit D are print-outs of files stored on a PC hard disk, not print-outs of active web pages.  But Respondent has admitted that the site is no longer active, and it would be normal to have archived the site on a PC hard disk.  The Complainant might further allege that the Respondent has fabricated evidence for the purposes of this proceeding.  However, the procedural rules of the Policy are not such that Panels can explore in any depth the validity of the evidence presented.  The Panel must make a prima facie evaluation of the validity of the evidence presented by both parties.  In this case, the Panel sees no reason to believe that the Respondent would have gone to the considerable work required to produce, just for this proceeding, the extensive documentation presented in its Exhibits D, C, and E.  Finally, but importantly, the Panel notes the notarized act of incorporation presented as Exhibit F and notes that, in Italy, such a document has considerable formal status and must be given considerable weight as evidence of the Respondent's good faith intent to operate a business.

On the basis of the evidence presented, the Panel finds that the Respondent was or is operating under the trade name "Planet Fitness" and that it therefore has a legitimate interest in the disputed domain name.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).

The Complaint's argument that any use of the disputed domain name would violate its trademark is obviously untenable, since the trademark is for specific product classes in the USA.  Whether or not Respondents' actual use of the disputed domain name violates Respondent's trademark rights is a question for national courts and not a question for this Panel.

Registration and Use in Bad Faith

The Panel holds that the errors in the WHOIS are not sufficient to allow finding bad faith behavior.  It notes that the Complainant had no real difficulty in reaching the Respondent, since the Respondent's mother resides at the address given in the WHOIS, and Respondent's mother readily provided up-to-date contact information for the Respondent.

With respect to the offer to sell the disputed domain name, the Panel is willing to accept the Respondent's contentions that it registered the disputed domain name for its own business purposes, that it has never had the intention to sell its registration to Complainant, and that its $50,000 “offer” was no more than a statement of costs incurred in the development and marketing of the web site.  These facts support the conclusion that Respondent’s behavior does not fall under the ambit of Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of trademark for an amount in excess of out-of-pocket expenses); see also PRIMEDIA Special Interest Publ'n. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the Respondent did not register the domain names in bad faith where there is no evidence that the Respondent intended to sell the domain name or disrupt the Complainant’s business); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent).

DECISION

The claim is dismissed.

Richard Hill, Panelist
Dated: 2 February 2003

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