Global Affiliates, Inc. (a Corporation of the State of
Claim Number: FA0708001053370
Complainant is Global Affiliates, Inc. (a Corporation of the State of Delaware,
d/b/a GlobalFit ) (“Complainant”),
represented by John F. Letchford, of Archer & Greiner, P.C.,
One Centennial Square, Haddonfield, NJ 08033.
Respondent is Texas International Property Associates - NA NA (“Respondent”),
represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <globafit.com>, registered with Compana, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2007.
On August 10, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <globafit.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 August 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 4, 2007.
A timely Additional Submission was submitted by Complainant and determined to be complete on September 10, 2007.
On September 12, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following assertions:
Respondent’s domain <globafit.com> is confusingly similar to Complainant’s proprietary trademarks and service marks (whether registered or unregistered) and its registered domain name <globalfit.com>. But for the letter “l”, which is present in Complainant’s trademarks, Respondent’s disputed domain is otherwise identical. Thus, Respondent is engaging in typosquatting.
Respondent has no rights or legitimate interests in the disputed domain, in that it has never been commonly known by the domain name <globafit.com>, nor by its dominant term “globafit” and Respondent has never been licensed or otherwise authorized by Complainant to use the Complainant’s proprietary mark.
Respondent registered and used the domain <globafit.com> in bad faith in that it is merely a portal website which offers competing goods , and that it is presumed that Respondent is getting paid a fee by its “sponsors” for each internet user it directs to a third party website.
Respondent is a repeat offender, in that is had been named as a Respondent with the NAF in 22 domain name arbitration proceedings since February of 2007. Of those 22 proceedings, the NAF ordered transfer of the disputed domain in 20 of those cases. Complainant submits these decisions as an attachment.
Respondent makes the following assertions:
Respondent registered the disputed domain on November 27, 2004. Respondent registered the name at a time when there was no federally registered trademark filed for same.
Complainant has not established nor substantiated any trademark rights in the term — thus the domain name is not identical to, or confusingly similar to any mark held by Complainant.
Respondent claims a legitimate use of the name as an advertising portal that provides access to a broad range of services. Respondent cites case law for the proposition that there is nothing wrong with using the generic phrase to connect these generic concepts with search keywords in order to provide advertisers with targeted customer traffic.
Respondent alleges that Complainant has not demonstrated Respondent’s bad faith registration and use for the following reasons: Complainant did not have a registered or unregistered trademark at the time of the filing of the disputed domain name. Respondent is in the business of providing locator services and did not register the name with the intent to disrupt Complainant’s business. Or to confuse customers. Or to sell the domain name to Complainant. Nor did Respondent register the domain name to prevent Complainant from owning a domain name incorporating its trademark.
Rather, Respondent registers domain names that become available through expiration and deletion, names which incorporate common words, descriptive and generic terms. Respondent hosts the disputed domain on a website that provides sponsored links by Yahoo.
Respondent alleges that it has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well known generic, descriptive and geographically descriptive terms.
C. Additional Submissions
Complainant’s additional submission was received on September 10, 2007, and it was timely.
Complainant submits that the 178 mark is not fatally defective because the word mark has design elements, and that Complainant’s marks have achieved secondary meaning through extensive and secondary use. Complainant has submitted data showing how the mark functions as a specific identifier for goods and services. Complainant indicates the critical distinction between the marks and contends that the omission of “l” is simply typosquatting. Complainant refutes Respondent’s contentions that Respondent did not attempt to target Complainant’s customers. Complainant disputes that Respondent is simply using descriptive and/or generic terms. Complainant has superior rights in prior usage, in that it registered GLOBALFIT FITNESS SOLUTIONS on November 27, 2004, which occurred more than one month after Complainant’s October 12, 2004 178 registration. Respondent was not commonly known by the domain name in dispute.
Panel found Complainant’s additional submission, and in particular its data supporting common law rights, to be persuasive.
Based upon the facts and arguments presented to it, the Panel finds that:
1. Respondent’s <globafit.com> domain name is confusingly similar to Complainant’s GLOBALFIT common law based, mark, and Complainant’s registered GLOBALFIT FITNESS SOLUTIONS registered mark.
2. Respondent does not have any rights or legitimate interests in the <globafit.com> domain name.
3. Respondent registered and used the <globafit.com> domain name in bad faith.
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
Complainant has submitted evidence of several pending trademark applications in the GLOBALFIT mark with the United States Patent and Trademark Office (“USPTO”) for use in the marketing and promotion of corporate and group health benefit plans. Complainant’s pending marks are not sufficient, in and of themselves, to legally establish Complainant’s service mark rights in the mark, such as to satisfy Policy¶ 4(a)(i). Complainant owns a federal trademark registration with the USPTO in the GLOBALFIT FITNESS SOLUTIONS mark (Reg. No. 2,893,178 issued October 12, 2004) (“178”). As it is undisputed by Respondent that the dominant literal term in the 178 Registration is clearly “GLOBALFIT”, the Panel will limit its confusingly similar analysis to the domain name mark <globafit.com> as compared and contrasted to Complainant’s federally registered mark of GLOBALFIT
Complainant’s word mark contains two stylized elements: that is, the letter “O” in GLOBAL is comprised of a shaded circle, presumably representing a globe; and the complete mark is encompassed beneath a curved band. The drawing is coded as “design plus words, letters and/or numbers.” The design search code is indexed for globes, circles, ovals, and bands, as well as for objects forming letters or numerals. Thus, the mark can be searched and accessed both as a word mark and as a design mark.
Respondent alleges that on November 27, 2004, when the disputed domain was registered, that Complainant had no registered trademark for the term “GLOBALFIT” but only a design mark, which incorporated them.
Complainant’s registration 178 consists of a word mark and a stylized drawing, due to the inclusion of two design elements, as discussed above. Although design marks are “distinct” from word marks, when applying the “confusingly similar test” the focus of the test is the impression left in the mind of the purchasing public. Here, the consumer is simply exposed to a straightforward roman typeface (with filled in letter “O”) underneath a stylized band. The filled in “O” (presumably representing a globe) does no more than reiterate the image imposed from the word “globe.” The limited stylization of the mark does not add any additional elements to the mark, such as to distinguish the mark from the disputed mark. As an additional test, the consumer would have no problem “calling for” the merchandise or service in a linguistic manner.
The Panel, therefore, finds that
Complainant has established rights in the mark for purposes of Policy ¶
4(a)(i). See Metro. Life Ins. Co. v.
Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the
METLIFE mark as a result of its registration with the
Additionally, Complainant asserts common law rights in the GLOBALFIT mark through continuous use, since at least as early as February 1, 1994, in that fitness consumers have come to associate the term GLOBALFIT with Complainant. Since 1995, Complainant has enrolled approximately 106,000 members to its fitness clubs and currently has 31,000 active members.
Although Complainant has not offered any surveys, which indicate consumer’s linkage of the GLOBALFIT mark to Complainant, it can be inferred from the saturation of the advertising that an association does arise in the minds of consumers. Here, Complainant has spent $1.2 million dollars in marketing expenses which has assisted in the generation of over $62 million in revenues since 1996. Complainant also has submitted evidence of a previous trademark registration in the GLOBALFIT mark (Reg. No. 1,908,746 issued August 1, 1995) with the USPTO which it contends was inadvertently canceled in July of 2002. The Panel rules that the registered mark has also contributed to consumer awareness of the mark, albeit it’s limited reign.
The Panel finds that Complainant has established secondary meaning in the GLOBALFIT mark, through continuous and extensive use in commerce, at least since 1994, and the mark functions as a specific identifier of Complainant’s products and services. The Panel further finds that Complainant’s secondary meaning in the GLOBALFIT mark establishes common law rights under Policy ¶ 4(a)(i). 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); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services.
Complainant contends that Respondent’s <globafit.com> domain name is confusingly similar to Complainant’s marks. As the Panel finds that Complainant has established both registered and common law rights in the GLOBALFIT mark, the Panel further finds that the omission of the letter “l” from Complainant’s otherwise identical mark fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
The Panel also finds that
Respondent’s omission of the letter “l” along with the terms “fitness” and
“solutions” fails to distinguish Respondent’s <globafit.com>
domain name from Complainant’s GLOBALFIT FITNESS SOLUTIONS mark for purposes of
Policy ¶ 4(a)(i) and is a clear case of typosquatting. See Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262
(WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is
confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY
marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat.
Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
The Panel also rejects Respondent’s arguments that the mark GLOBALFIT is generic. A reasonable argument may be made that the severed words “global” and “fit” could individually considered to be generic. However, this Panel finds that the creation of <globafit.com> domain name is not the result of mere coincidence, but the strategic creation of an unholy alliance, designed to deceive. Consequently, the alliance of these two unrelated words has created a confusingly similar, distinctive mark.
Rights or Legitimate Interests
Once Complainant makes a prima facie case in support of its allegations, the burden of production shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
From a review of the submitted evidence, it is obvious that Respondent is using the <globafit.com> domain name to operate websites featuring links to commercial websites, which offer products in competition with those offered by Complainant. The Panel therefore finds that Respondent is not using the <globafit.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that were a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Moreover, Respondent has not submitted any credible evidence that it is commonly known by the <globafit.com> domain name or licensed to register names featuring the GLOBALFIT or GLOBALFIT FITNESS SOLUTIONS marks or any derivation thereof.
As a result, Respondent has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Registration and Use in Bad Faith
Complainant contends that Respondent is using the <globafit.com> domain name to operate a website that provides links to various websites offering products that compete with Complainant’s business. This contention is not rebutted. The Panel infers that Respondent is profiting from such use through the collection of referral fees for each redirected Internet user. The Panel finds that such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, Complainant contends that Respondent’s manner of use of the <globafit.com> domain name will likely lead to confusion among internet users as to Complainant’s sponsorship of, or affiliation with, the resulting websites. Such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regards to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that Respondent has been party to at least twenty-two previous domain name disputes with the National Arbitration Forum since February of 2007.
Moreover, Complainant contends that arbitrators in twenty of those twenty-two decisions found Respondent had registered the disputed domain names in bad faith. Therefore, the Panel rules that Respondent has shown a pattern of registering domain names identical or confusingly similar to established marks. This finding is further evidence of bad faith registration and use under Policy ¶ 4(a)(i). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug 17, 2000) (finding that respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exchange v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <globafit.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: September 26, 2007
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