Survival of the Fittest

Steve Levy ⬥ 11 June

Gym chain Planet Fitness’ UDRP complaint against competitor Blast Fitness Group, filed with the National Arbitration Forum (NAF) over the domain name, appeared to be a clear case of Reverse Domain Name Hijacking (RDNH), but the case was not that simple. The Complainant used to actually own the BLAST FITNESS mark, which was given to it by a predecessor who operated gyms as “Blast Fitness”, but changed the name to “Planet Fitness” and cancelled the trademark. It was at that point that the Respondent registered and began to use the domain name, resulting in the re-filing of the BLAST FITNESS mark by the Complainant.

The NAF Panelist ultimately ruled in favor of the Respondent despite the fact that the Complainant owns the BLAST FITNESS mark, because it found that the Respondent has legitimate rights to the domain name due to its operation of an established brand of gyms under the same name, nor did it think that the domain was registered in bad faith. Brands should take note that owning a trademark does not always ensure a favorable decision when it comes to the UDRP as evidence by this case, in which the rights and legitimate use on the part of the Respondent trumped the Complainant’s trademark ownership.

The case is interesting for a couple of reasons. First, although the Complainant claims its “trademark registration with the USPTO was active at the time Respondent registered the disputed domain name” the facts show that the domain name was registered in the window between the cancellation of the Complainant’s old trademark registration and the filing of its new application. Second, this case highlights the fact that the UDRP was not designed for disputes of this complexity with subtle, factual questions going to the intent of the parties (the Complainant’s intention in abandoning its trademark and whether the Respondent intended to start up a competing fitness business at the time it registered the domain). Such matters are more properly considered in a courtroom where witnesses may be cross-examined and the veracity of evidence contested. In fact, it wouldn’t surprise me a bit if that’s where this case goes next.

Tags: Blast Fitness Group, domain names, enforcement, NAF, National Arbitration Forum, Planet Fitness, RDNH, Reverse Domain Name Hijacking, trademark ownership, UDRP, USPTO

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