In-Shape Health Clubs, LLC. v. JBDO, Inc / iVenture
Claim Number: FA1311001529944
Complainant is In-Shape Health Clubs, LLC (“Complainant”), represented by Scott Hervey of Weintraub Tobin, California, USA. Respondent is JBDO, Inc./ iVenture (“Respondent”), California, USA, represented by Jeff Busche.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inshape.com>, registered with MarkMonitor, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 15, 2013.
On November 18, 2013, MarkMonitor, Inc. confirmed by e-mail to the National Arbitration Forum that the <inshape.com> domain name (the “Domain Name”) is registered with MarkMonitor, Inc. and that Respondent is the current registrant of the name. MarkMonitor, Inc. has verified that Respondent is bound by the MarkMonitor, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@inshape.com. Also on November 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 10, 2013.
Complainant filed a timely Additional Submission, which was received on December 13, 2013, and found to be compliant on December 16, 2013.
Respondent filed a timely Additional Submission, which was received on December 18, 2013, and found to be compliant on December 18, 2013.
On December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its IN SHAPE mark with the United States Patent and Trademark Office ("USPTO") for use in the field of physical fitness instruction and health services (Reg. No. 2,105,607 filed March 17, 1997, registered October 14, 1997). It registered the mark IN SHAPE CITY for physical fitness instruction and health services with the USPTO (No. 1814118, registered December 28, 1993) and for health club services with the State of California (No. 41879, registered April 23, 1993).
Complainant operates sixty-eight fitness clubs in the state of California. Each of these fitness clubs uses the trademark IN SHAPE to describe the goods and services offered through the clubs. Complainant first started business in 1981, although it first used the IN SHAPE mark to identify its fitness business as “In-Shape City” in 1990. Complainant failed to obtain the disputed <inshape.com> domain name back in 1997, but has used <inshapeclubs.com> as its Internet presence.
Respondent’s <inshape.com> domain name, registered December 26, 1995, is identical to Complainant’s IN SHAPE mark. The mere addition of the generic top-level domain (“gTLD”) “.com” does not provide a distinction from Complainant’s mark.
Complainant has never authorized or licensed Respondent to use the IN SHAPE mark in a domain name.
Respondent is using the Domain Name to redirect Internet users to third-party websites that offer competing fitness gear. This does not constitute a bona fide offering of goods or a legitimate noncommercial or fair use of the Domain Name under Policy ¶¶4(c)(i) or 4(c)(iii).
Respondent is known as “iVentures.com” and as “JBDO, Inc.” It is not known as “In Shape” or anything similar.
Respondent is intentionally using the Domain Name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s IN SHAPE mark. Respondent’s website offers “Health and Fitness Products to get you InShape and keep you InShape” and the website goes on to note that Respondent is partnered with “Left Lane Sports.” Respondent’s use of the two capital letters and no space between the words “InShape” on its website enhances the likelihood of confusion with Complainant’s mark and is further evidence of Respondent’s intent to create such confusion. Respondent thus causes Internet users to believe that Complainant’s IN SHAPE fitness services are somehow affiliated with the independent and competing fitness enterprise promoted through the Domain Name’s website. Respondent’s failure to use any type of disclaimer on its website further evidences Respondent’s hope that Internet users will mistakenly associate the content of the Domain Name’s website with Complainant’s IN SHAPE mark.
Complainant’s registered trademarks and the notoriety of its California-based health clubs make it likely that Respondent had actual knowledge of Complainant’s rights in that name when it registered the Domain Name. The trademark registrations support a claim of constructive knowledge in any event.
B. Respondent
Respondent is in the business of owning and developing websites on generic and highly descriptive domain names. It developed <VacationRentals.com> into one of the top travel sites on the Internet, while Respondent’s <PersonalTrainer.com> domain name is a top resource for Internet users seeking a directory of trainers. Respondent owns other descriptive domains such as <Motivation.com>, <SelfImprovement.com>, <Swimsuits.com>, <ProSurfing.com> as well as the <inshape.com> Domain Name. It partners or joint ventures with other entities on many of its sites.
The term “in shape” is so descriptive and widely used in the fitness and other industries that the public does not associate the term with any one company.
Indeed, many companies not affiliated with Complainant use that term in their names.
When Respondent registered the Domain Name on December 26, 1995 it had no knowledge of Complainant or anyone else who believed that it had exclusive rights to the term “in shape.” It registered the Domain Name solely in connection with its business of developing websites based upon descriptive and generic domain names. It developed the website resolving from the Domain Name long before it was ever contacted by Complainant.
Respondent uses multiple capital letters and no spaces between words in many of its domain names. Examples are <VacationRentals.com>, <SelfImprovement.com>, <ProSurfing.com>. Using this format for the Domain Name on Respondent’s website is no evidence of bad faith, or of intent to create confusion between Complainant’s mark and the website resolving from the Domain Name.
In waiting some 16 years after Respondent registered the Domain Name to object to Respondent’s use of it, Complainant is barred by laches.
C. Additional Submissions
Complainant
Complainant’s trademark registrations are presumptive evidence that its marks are distinctive, and not merely descriptive or generic.
The registration of Complainant’s mark confers constructive notice on those seeking to register or use the mark. Respondent is charged with that constructive notice of Complainant’s rights.
Complainant is not barred by laches because Respondent failed to show any prejudice caused by the delay.
Respondent has failed to meet its burden of showing that it has rights or legitimate interests in the Domain Name. It is not commonly known by the name “In Shape,” nor is its use of the Domain Name a bona fide offering of goods and services or a legitimate noncommercial or fair use of the name.
Respondent
With the phrase “In Shape” used by so many companies, including those that have registered various forms or uses of that term with the USPTO, it is clear that no one of them, Complainant included, can claim exclusive use of that phrase. “In shape” is a descriptive, generic term.
The Domain Name is not identical or confusingly similar to Complainant’s mark.
Complainant’s delay in bringing this proceeding is relevant for other purposes, such as determining whether Respondent has been able to build up legitimate rights in the Domain Name and whether it is being used in bad faith.
Respondent registered and is using the Domain Name in good faith, as part of its overall business plan and strategy.
Complainant is guilty of reverse domain name hijacking by bringing this case, given the delay in bringing it, and given the fact that so many other entities use the phrase “in shape” in their names.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant registered its IN SHAPE mark with the United States Patent and Trademark Office ("USPTO") for use in the field of physical fitness instruction and health services (Reg. No. 2,105,607 filed March 17, 1997, registered October 14, 1997). It registered the mark IN SHAPE CITY for physical fitness instruction and health services with the USPTO (No. 1814118, registered December 28, 1993) and for health club services with the State of California (No. 41879, registered April 23, 1993). Complainant operates sixty-eight fitness clubs in the state of California, each of which uses the trademark IN SHAPE to describe the goods and services offered through the clubs. Complainant first started business in 1981, and has used the IN SHAPE mark to identify its fitness business since 1990. Complainant’s USPTO registrations and its use of the mark in commerce for more than 20 years satisfy the Policy ¶ 4(a)(i) requirement that Complainant show rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <inshape.com> Domain Name is identical to Complainant’s IN SHAPE mark. The mere addition of the gTLD “.com” does not distinguish it from Complainant’s mark. Nor does Respondent’s removal of the space between the two words in the Domain Name distinguish it from Complainant’s IN SHAPE mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD and removal of spacing was insufficient to differentiate the disputed domain name from the mark).
Respondent contends that the <inshape.com> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, but such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Likewise, while Respondent argues that its registration of the Domain Name predates Complainant’s alleged rights in the mark, such a determination is not necessary under Policy ¶ 4(a)(i) because, again, this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Based upon the foregoing, the Panel concludes that the <inshape.com> Domain Name is identical or confusingly similar to Complainant’s IN SHAPE mark under Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug.
18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by the following: (1) Complainant has not licensed or authorized Respondent to use the IN SHAPE mark or any domain names incorporating that mark, (2) Respondent uses the Domain Name to misdirect consumers searching for Complainant to a competitor’s website, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and (3) Respondent is not commonly known by the name “In Shape.” On these allegations and the facts offered in support of them by Complainant, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
To this end, Respondent shows that its business consists of owning and developing websites based upon generic and descriptive domain names. It developed <VacationRentals.com> into a travel site on the Internet, and its website at <PersonalTrainer.com> is a resource for Internet users seeking a directory of trainers. Respondent owns other descriptive domains such as <Motivation.com>, <SelfImprovement.com>, <Swimsuits.com>, as well as the <inshape.com> Domain Name. It partners or joint ventures with other entities on many of its sites.
Using a domain name for a website that does nothing more than furnish links to other websites in exchange for click-through revenues is often held not to constitute a bona fide offering of goods or services when the domain name contains a mark that is associated with a specific business and is likely to create confusion as to source, sponsorship or affiliation of the domain name with the owner of the mark. Trading on the goodwill or reputation of the owner of the mark in this fashion cannot confer rights or legitimate interests in the domain name. In this case, however, Respondent registered the Domain Name in December 1995 and has used it as part of its business operations ever since. At that time, Complainant had registered the mark IN SHAPE CITY with the USPTO and the State of California. Complainant claims that Respondent is therefore charged with constructive knowledge of Complainant’s use of and rights in the phrase “in shape,” but this factor applies more to the bad faith provisions of Policy 4(b). Policy 4(c)(i) permits a respondent to establish rights or legitimate interests by showing, “before notice . . . of the dispute, your use of . . . the domain name . . . in connection with a bona fide offering of goods or services.” Respondent registered and began using the Domain at least 16 years before Complainant first brought this dispute to its attention. Prior to that time, Respondent had no knowledge of Complainant’s business or its use of “in shape” in connection with that business.
Further, it appears from the evidence that Respondent’s business has in fact been operated as a bona fide offering of goods or services. There is no evidence that Respondent was actually aware of Complainant’s business or that in selecting its <inshape.com> Domain Name it was attempting to trade on Complainant’s goodwill or reputation. On the contrary, its selection of that name is more consistent with its custom and methodology in selecting its other domain names, e.g., <ProSurfing.com>, <motivation.com>, <SelfImprovement.com>, <PersonalTrainer> than with an intent to benefit from any fame or reputation of Complainant. Respondent believed that the term “in shape” was sufficiently generic and descriptive that its use of it would not create infringement issues or confusion with another business entity. In the absence of evidence that Respondent was attempting to trade on the goodwill or reputation of Complainant the Panel concludes that Respondent was using the Domain Name in connection with a bona fide offering of goods or services.
Based upon the foregoing, the Panel concludes that the Respondent has rights and legitimate interests in respect of the Domain Name.
In light of the Panel’s finding and determination with respect to the rights or legitimate interests element of the Complaint, the Panel declines to review or comment upon the allegations regarding bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief shall be DENIED.
Accordingly, it is Ordered that the <inshape.com> Domain Name REMAIN WITH Respondent.
Reverse Domain Name Hijacking
Respondent claims that Complainant brought this proceeding in bad faith and is guilty of reverse domain name hijacking. While Complainant failed to satisfy its burden as to all three elements specified by the Policy, this does not necessarily support a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”). In order for a claim of reverse domain name hijacking to prevail, the Respondent must show that the Complainant knew or should have known that none of the elements of its claim under the Policy could be proven. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
In this case, Complainant prevailed on the Policy ¶ 4(a)(i) identical or confusingly similar element. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy). Moreover, there is no evidence that it knew or should have known the facts Respondent would bring forward in this proceeding to demonstrate its rights and legitimate interests in the Domain Name. Even if Complainant was aware of Respondent’s business strategy of using descriptive and generic terms in domain names as described above, Complainant still had a reasonable basis for going forward with the case, given its registered trademarks and long history of using the IN SHAPE mark in commerce, in Respondent’s home state. Based upon the foregoing the Panel concludes that there is no basis for a finding of reverse domain name hijacking, and finds in favor of the Complainant on this issue.
Charles A. Kuechenmeister, Panelist
Dated: January 3, 2014
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