A respondent’s honest concurrent use of a term generally qualifies as a legitimate interest in a domain name identical or confusingly similar to a trademark, particular where the parties’ goods or services are in different classes, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) [<autocar.com], or the term is composed of common words formed into a common phrase, Intersections Inc. v. Jasper Developments Pty Ltd., D2009-0795(WIPO July 20, 2009) [<creditcompare.com], but good faith is undermined when the parties are competitors and the respondent redirects the domain name to another landing page. Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited, FA0910001289603 (Nat. Arb. Forum November 25, 2009).
Life Extension Foundation submitted its application to the USPTO for LIFE EXTENSION MAGAZINE in 1995. The mark was not published for opposition until 2003 and registered on the Principal Register later in the same year. The terms LIFE EXTENSION and LIFE EXTENSION FOUNDATION were registered subsequent to the domain name, but carried first use in commerce dates of 1980. The Respondent registered <lifeextensionfoundation.com> in 1999 several months after the Complainant registered <lifeextension.com>. Laches was argued and tacitly rejected. Proof of honest concurrent use requires evidence to support bona fide offering of goods and services before notice of the dispute [paragraph 4(c)(i) of the Policy].
The word “foundation” has several meanings, although two are uppermost in the context of the parties’ businesses. The obvious one is an institution supported by an endowment, which is the Complainant’s meaning. However, both parties produce an anti-aging unguent [Class 5], so “foundation” could also apply to the unguent itself, which appears to be the Respondent’s use of the word. The Respondent’s argument (aside from denying knowledge of the Complainant or its trademark) was that the Complainant “cannot own worldwide exclusive use of the term Life Extension as this is descriptive and in common daily use.” The first part of this argument confuses trademark and domain name law; the second part – “descriptive and in common daily use” – could be a good defense but it depends on the respective goods and services of the parties.
Choosing a string of syllables that also happens to be a trademark is not necessarily the result of an abusive registration and is not improbable, but a respondent who is also a competitor has a heavier burden than one offering different goods or services. Honest concurrent use of the term is less likely to have been accidental and more likely to have been opportunistic under these circumstances.
Although the parties in Life Extension are geographically distant from each other (British Channel Islands and Florida), both market their unguents in the United States. It is not sufficient to deny knowledge, equivocally. “We did not[e] that a `foreign` entity would subsequently appear and … then tell us they had pre existing common law rights since 1980,” which is a tacit acknowledgment that it knew of the “foreign entity.” Redirecting the Internet user to another landing page, <primehealthdirect.com> further supports the conclusion that the Respondent was aware that a third party was already using the phrase in a trademark sense. The Panel found both that the Complainant was exclusively associated with the LIFE EXTENSION mark and that the Respondent’s concurrent use was an abusive registration under paragraphs 4(b)(iii) (competitors) and 4(b)(iv) (taking commercial advantage of the trademark).