There can be two independent reasons for unawareness of a complainant or its trademark. One is the trademark’s lexical composition – generic through fanciful; the other is geographic distance. A lexically unrecognized trademark outside its territorial market is less likely to be known to a domain name registrant. Both these reasons are present in GoFit LLC v. Dom Administration, DI S.A. and International Services Company SA, D2010-0367 (WIPO May 19, 2010). The disputed domain name <gofit.com> and the trademark “GOFIT.NET” is (as the Respondent alleges) an expression in common use, meaning “getting fit” or relating to “fitness.” The parties are respectively in the United States and Europe. They could also be in different states of the United States, CNRV, Inc. v. Vertical Axis, Inc., FA01300901 (Nat. Arb. Forum May 3, 2010).
The Panel held that the domain name in GoFit was confusingly similar to the trademark, but the Complainant offered “no evidence that the Respondent used the disputed domain name in bad faith or that there is any [likelihood of] confusion.” The case illustrates the uphill battle for a holder whose trademark interest is later in time, not the only user of the registered term and whose market reach is limited. “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 Respondent argued and the Panel agreed 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.” The Panel held that in its view
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 <gofit.net> as its domain name and developed its website at this domain name and used GoFit.net 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.
The argument that the Respondent (a transferee of the domain name) should have known of Complainant’s right based on its trademark when it registered the domain name was properly rejected. While there may be circumstances invoking willful blindness – it must be carefully calibrated – there is no imputation of knowledge under the UDRP. If constructive knowledge is applied at all it would be where both parties are U.S. citizens. The argument that the Respondent “allows [the domain name] to defer to a parking page featuring … links” associated with the everyday understanding of “go fit” would be relevant only if 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.”
The argument that a respondent rejected a complainant’s offer to buy the domain name is rather evidence of good faith than bad. The “Respondent evidences its intention to continue to use the domain name as it has” which affects the Complainant only in the sense that it covets the domain name. Otherwise, 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.”
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com