WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION GoFit LLC v. Dom Administration, DI S.A. and International Services Company SA Case No. D2010-0367 1. The Parties
The Complainant is GoFit LLC of Tulsa, Oklahoma, United States of America, represented by Plager Schack LLP, United States of America.
The Respondent is Dom Administration, DI S.A. and International Services Company SA of Leudelange, Luxembourg, represented by Paul R. Keating, Spain. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with EuroDNS S.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2010. On March 11, 2010, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the Disputed Domain Name. On March 12, 2010, EuroDNS S.A. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2010 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 March 19, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response April 11, 2010. The Response was filed with the Center April 11, 2010.
The Center appointed Alistair Payne, Steven L. Snyder and Diane Cabell as panelists in this matter on May 5, 2010. The Panel finds that it was properly constituted. Each member of 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.
The Respondent filed a supplemental submission on May 10, 2010 and the Complainant filed an objection to this submission on May 12, 2010. 4. Factual Background
The Complainant has owned since 2000 a United States combination word and device mark registered under number 2402055 which incorporates the mark GoF and also a pending United States trade mark application for the trade mark GO FIT. The Complainant has also owned the “www.gof” domain name since 1999.
The Respondent has owned the Disputed Domain Name since 2001. 5. Parties' Contentions A. Complainant
The Complainant says that it owns registered trade mark rights in its combination word and device mark as noted above and that the dominant element of this trade mark is “Go Fit”. It submits that the fact that its registered trade mark contains design elements and the word “.net” does not lessen its right to rely on “GoFit” as the dominant element of the trade mark registration and relies in this regard on the decision in Aspis Liv Forsakrings AB v. Neon Network LLC,WIPO Case No. D2008-0387. It further says that the Disputed Domain Name is confusingly similar to its registered trade mark.
As to the second element of the Policy, the Complainant says that it has not authorised or permitted the Respondent to use its mark or any similar mark. It says that the Respondent is a “domainer” who has never used the Disputed Domain Name other than for a parking site through Sedo to divert Internet users to websites that advertise goods competitive with those of the Complainant for commercial gain. The Complainant maintains that this does not constitute a nominative fair use; rather, it appears to constitute deceptive bait and switch advertising practices. Accordingly, the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant submits that the Respondent's use of the Disputed Domain Name has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship and affiliation and endorsement of the Respondent's web site and products under paragraph 4(b)(iii) of the Policy. The Complainant says that because the Disputed Domain Name resolves to a landing page at which competitive services are offered, the Complainant has met its burden of establishing the Respondent's use in bad faith and relies in this regard on the decision in Asian World of Martial Art Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Complainant further submits that additional negative inferences may be drawn against the Respondent based on the fact that the Complainant's trademark was registered and had an Internet presence and therefore at the date of registration of the Disputed Domain Name the Respondent had constructive knowledge of its rights and yet chose to register the Disputed Domain name and to allow it to be used for a parking page which features links to competitive good and services and generates revenue for it. The Complainant says that trading on its goodwill in this way is not a bona fide offering of goods or services and there is no evidence that the Respondent is commonly known as “GoFit” or “GoF”.
In summary the Complainant says that bad faith should be inferred based upon the reputation of the Complainant and the fact that the Respondent is a sophisticated dealer in domain names which should have searched the United States trademark registry and Internet domain registry before adopting the Disputed Domain Name. It is more likely than not that the Respondent targeted the Complainant by using the Disputed Domain Name to intentionally attract web users through a likelihood of confusion with the Complainant's trademark as in Russell Frey d/b/a edHelper v. International Services Company SA c/o Administration Dom, NAF Claim No. FA0910001288396 (December 8, 2009). B. Respondent
The Respondent submits that the Complainant has not demonstrated trade mark rights for the purposes of the first element of the Policy. It says that the registered trade mark that the Complainant relies upon is primarily a device mark containing words which were expressly chosen to be identical to the Complainant's domain name . The Respondent says that the Complainant cannot rely in this combination mark which is substantially different and more complex than the essential element of the Disputed Domain Name to claim exclusive rights in “GoFit”. In any event, according to the Respondent, the term “Go Fit” is commonly used in the fitness industry with millions of Google search hits showing for the term and 1443 domain registrations incorporating the term.
The Respondent also submits that the Complainant has not demonstrated common law rights as it does not use “GoFit” as a word mark, provides contradictory sales revenue evidence and provides no evidence of actual use and marketing activities. Further the Respondent alleges that “GoFit” is a descriptive term and that the Complainant has not provided evidence of use or of acquired secondary meaning to support any inference of trade mark rights.
The Respondent maintains that it is using the Disputed Domain Name for a bona fide purpose in that it forms part of its large portfolio of health related domain names which it does not use itself but permits an advertising consolidator (in this case Google) to return search results based on a contextual understanding of the Disputed Domain Name. The Respondent submits that searching does not target the Complainant but operates to locate generally associated links in the area of fitness and health corresponding to the descriptive meaning of the Disputed Domain Name. Accordingly the Respondent is making a bona fide offering of goods and services in relation to the Disputed Domain Name.
The Respondent further says that in view of the descriptive nature of the Disputed Domain Name it does not require any permission from the Complainant to use it and in the manner and context in which it is using the Disputed Domain Name has not demonstrated any real likelihood of confusion and as a consequence the Respondent is making a fair use of the Disputed Domain Name.
As far as bad faith is concerned, the respondent maintains that it had no knowledge of the Complainant upon registration of the Disputed Domain Name and consequently cannot be said to have targeted the Complainant's trademark rights.
The Respondent says that in the circumstances of the descriptive nature of the “GoFit” mark, the fact that the Complainant's registered trade mark is a combination word and device mark with other elements, that many other traders use “GoFit”, that the parties do not carry on business in the same countries and that the Complainant has not demonstrated common law rights, there is nothing to suggest that the Respondent should have known or been aware of Complainant's activities when it registered the Disputed Domain Name and there is nothing to now prevent the Respondent from continuing to use the Disputed Domain Name in a manner that does not target the Complainant.
Further the Respondent says that it did not register the Disputed Domain Name for the purpose of resale and the correspondence between the parties supports this assertion as it refused to sell the Disputed Domain Name to the Complainant. Nor is there any evidence that it has used the Disputed Domain name in bad faith or that there is any confusion. In summary the Respondent says that this is not a case of cybersquatting which the Policy was designed to address but is rather an example of a Complainant deciding after the fact that it wishes to obtain a domain name which was not available when it initially chose its domain name and brand. In its Supplemental filing the Respondent submits that the circumstances of this case are analogous to the newly published case of CNRV, Inc. v. Vertical Axis, Inc., NAF Claim No. FA01300901 (May 3, 2010) which supports its case that in these circumstances no bad faith is present. 6. Discussion and Findings
The Respondent filed a submission late after the appointment of the Panel and the Complainant filed a submission in reply objecting to the submission primarily on the grounds that it was too late to be considered. The Respondent's submission did not concern additional matters of fact but rather sought to bring to the Panel's attention to a relevant newly issued UDRP decision of May 3, 2010.
The Panel is entitled under the Rules to accept or decline additional submissions at its own discretion. On the basis that the Respondent's submission concerns a decision which is relevant to the circumstances of this case and had not been published when the Response was filed, the Panel has exercised its discretion to take both the submission and the Complainant's reply into account in reaching its decision. A. Identical or Confusingly Similar
The Complainant's registered trade mark is a combination device and word mark. Although the expression “Go Fit” is a significant element of the trade mark, it also contains both visual device elements and the additional word “.net”. In the Panel's view there is insufficient evidence before it to find that apart from its registered rights the Complainant has developed a separate goodwill and reputation attaching to the GoFit mark which will support a claim to common law rights.
Previous panels have found that where there is a combined device and word mark then provided that the text is the dominant element then the combined mark will typically suffice to support trade mark rights for the purposes of the Policy. For example in Aspis Liv Forsakrings AB v. Neon Network LLC,WIPO Case No. D2008-0387 the panel had no difficulty in finding that the domain name was confusingly similar to a combined device and word mark which featured the term “aspic”.
In this case the Complainant's trade mark also includes the addition of the term “.net”, however the Panel considers that the inclusion of this element does not dispel a finding of confusing similarity in this case. This is for two reasons, firstly the “.net” element is not as prominent as the main “GoFit” element in the Complainant's registered trademark and secondly, previous panels have generally found confusing similarity between a trademark with a top-level domain name element and a corresponding domain name that incorporates the trademark's main elements otherwise. The Respondent submits that the panel in AZ Interactive S. L. v. Feniwel S.A.,WIPO Case No. D2009-0975 (September 3, 2009) made a distinction where the top level domain name suffix was incorporated within the registered trade mark, however in similar circumstances the panel in that case was also ultimately prepared to find confusing similarity.
Accordingly, this Panel finds that the Complainant has demonstrated that it has registered trade mark rights for the purposes of the Policy and that the Disputed Domain name is confusingly similar to the dominant “GoFit” element of that trade mark. As a result the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
In view of its findings under the third element below the Panel is not required to make a finding under this element of the Policy. C. Registered and Used in Bad Faith
The Panel does not consider that there is enough evidence before it to support a finding that the Respondent either registered or used the Disputed Domain Name in bad faith.
The Panel accepts on the balance of probabilities that the Respondent was not aware of the Complainant and did not target the Complainant at the date of registration of the Disputed Domain Name. Supporting circumstances include that the Respondent is not based in the United States of America and does not operate in the same jurisdictions as the Complainant, that it obtained registration of the Disputed Domain Name soon after the Complainant obtained its United States registration but that the Complainant left the matter in abeyance for many years before deciding to pursue the Respondent, that the Respondent has demonstrably had a policy of developing a portfolio of health and fitness related domain names and is not obviously competing with or targeting the Complainant's business. In addition it appears from the evidence before the Panel that the term “GoFit” is in common usage with 1443 domain names incorporating the term which suggests that even had the Complainant undertaken some degree of Internet or trademark searching at the time of registration it would have found numerous co-existing users of marks or domain names incorporating “GoFit”. The panel notes that its findings in this regard are consistent with the findings in relation to registration in bad faith by the three person panel in the recent decision in CNRV, Inc. v. Vertical Axis, Inc., NAF Claim No. FA01300901 (May 3, 2010).
As far as use is concerned, although the Respondent does not use the Disputed Domain Name itself and allows it to defer to a parking page featuring associated links, there is nothing to suggest that the Respondent has actively sought to trade off the Complainant's trade mark rights or to profit from the Disputed Domain Name at the expense of the Complainant. Notably, the Respondent did not take up the Complainant's offer to purchase the Disputed Domain Name nor to immediately profit at the Complainant's expense. The Respondent's parking page does not appear to be in direct competition with the Complainant's business and overall there are insufficient circumstances in evidence before the Panel to support a finding of use in bad faith.
In the Panel's view the circumstances of this case do not indicate a case of cybersquatting by the Respondent. On the contrary it appears to be a case in which the Complainant is trying to obtain the Disputed Domain Name after the fact. When it originally tried to register the Disputed Domain Name , the Complainant found that it was already registered by a third party other than the Respondent and consequently chose as its domain name and developed its website at this domain name and used GoF as its actual trademark. This trademark, complete with “.net,” is the mark that it registered as a combination word and device mark in the United States and is the mark that appears on its merchandise.
It seems unlikely based on these circumstances that the Respondent purchased the Disputed Domain Name in order to exploit the similarity of that mark to “gof.” Instead, it is far more likely that the Complainant now feels constrained by ”.net” and in an effort to expand its rights is trying to establish itself as having rights in simply “gofit.” This conclusion is supported by Complainant's pending application to the USPTO, filed in November 2009, to register “gofit.”
In this light and considering the many other entities that use the “go fit” mark, the Panel is unable to conclude that the Respondent has sought to trade off the Complainant's GoF mark or otherwise acted in bad faith when it purchased the Disputed Domain Name.
Further, in this Panel's view had the Complainant really thought that the Respondent was cybersquatting and been truly concerned to protect its rights, then it might have been expected to make a complaint under the Policy soon after the Respondent's registration of the Disputed Domain Name in 2001, instead of waiting many years to attempt to institute its claim.
Accordingly, the Panel finds that the Disputed Domain Name was not registered and has not been used in bad faith and the Complaint fails under this element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
Steven L. Snyder
Panelist
Diane Cabell
Panelist
Dated: May 19, 2010
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