DECISION
Global Affiliates, Inc. (a Corporation of the State of
Claim Number: FA0708001053370
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@globafit.com
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.
RELIEF SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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).
DECISION
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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