WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Planet Fitness Franchising LLC v. Domain Administrator, See PrivacyGuardian.org / Bo Yu
Case No. D2021-4402
1. The Parties
The Complainant is Planet Fitness Franchising LLC, United States of America (“United States”), represented by Day Pitney LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Bo Yu, China.
2. The Domain Name and Registrar
The disputed domain name <planatfitness.com> (“the Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 7, 2022.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022. On January 4, 10, and 31, 2022, the Center received apparent automated messages from the Respondent in reply to various communications by the Center. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 31, 2022.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 2, 2022. 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
The Complainant is the owner of the mark PLANET FITNESS registered, inter alia, in the United States for fitness services under Registration No. 2438677, registered on March 27, 2001, with first use recorded as 1993.
The Domain Name, registered on May 12, 2021, has been used for pornography. As cited in the Complaint, the Respondent has been the subject of two adverse decisions under the Policy for using domain names containing the trade marks of others in relation to gambling and/or pornography.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark PLANET FITNESS registered, inter alia, in the United States for fitness services under Registration No. 2438677.
The Domain Name is confusingly similar to the Complainant’s mark replacing only the first letter “e” with the letter “a” and adding the generic Top‑Level Domain (“gTLD”) “.com”, and so appears to be a typosquatting registration.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it, and has not been authorised by the Complainant.
The Domain Name has been used for pornography which is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is bad faith registration and use per se. The Domain Name is a registration made in opportunistic bad faith with full knowledge of the Complainant’s rights and its mark with a reputation. Typosquatting is bad faith per se. The Respondent has been the subject of two adverse decisions under the Policy for registering and using domain names containing the trade marks of others in relation to gambling and/or pornography (see Fiorucci Holdings Limited v. Domain Administrator, See PrivacyGuardian.org / Bo Yu, WIPO Case No. D2020-3359; Skyscanner Limited v. Domain Administrator, PrivacyGuardian.org / Bo Yu, WIPO Case No. D2021-1970).
The Respondent did not reply to the Complainant’s contentions. However, the Center received several automated messages in Chinese from the Respondent inviting parties interested in advertising cooperation to contact the Respondent at an incomplete email address.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of a misspelled version of the Complainant’s PLANET FITNESS mark (which is registered in the United States since 2001 for fitness services, with first use recorded as 1993) and the gTLD “.com”.
The Panel notes that misspellings, such as substitution of a letter, and the addition of a gTLD do not prevent a domain name from being confusingly similar to a complainant’s trade mark pursuant to the Policy. As such, the replacement of the first letter “e” in the Complainant’s mark with a letter “a” and the addition of the gTLD “.com” do not prevent a finding of confusing similarity in this case.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to the PLANET FITNESS mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name as the Respondent is named as “Bo Yu” in the WhoIs database details. The use of the Domain Name is commercial and so is not legitimate noncommercial or fair use.
The Domain Name has been used for pornographic material. The use of a domain name containing an established trade mark to resolve to unrelated adult orientated material without explanation does not constitute a bona fide offering of goods or services or use. The Respondent has not explained why it would be permitted to use a domain name containing a misspelling of the Complainant’s PLANET FITNESS mark in this way.
The Domain Name also appears to be a typosquatting registration changing one letter of the Complainant’s mark to take advantage of Internet users who mistype the Complainant’s mark. In this case, typosquatting is also indicative of a lack of rights or legitimate interests in the Domain Name.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
Use of a domain name containing a trade mark in relation to a web page hosting adult material may constitute evidence of bad faith registration and use. Here, the use by the Respondent of the typosquatted Domain Name to point to pornography with pay‑per‑click advertising appears intended to attract Internet users for profit by creating a likelihood of confusion with Complainant’s mark and also tarnishes the Complainant’s mark, and as such constitutes registration and use in bad faith.
There is also evidence that the Respondent has been the subject of two other adverse decisions under the Policy for registering domain names containing the trade marks of others and using the same in relation to gambling and/or pornography showing a pattern of bad faith activity.
Typosquatting generally supports a finding of bad faith registration and use under the Policy and may indicate a respondent’s knowledge of a complainant’s business rights and services. As held above the Domain Name appears to be a typosquatting registration changing one letter of the Complainant’s widely‑used mark to take advantage of Internet users who mistype the Complainant’s mark. In these circumstances it is more likely than not that the Respondent had actual knowledge of the Complainant and its rights.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <planatfitness.com>, be transferred to the Complainant.
Date: February 4, 2022