In-Shape Health Clubs, LLC who operates under the domain name inshapeclubs.com, just lost its bid to get the domain name inshape.com which was registered way back in 1995.
The one member panel however failed to find Reverse Domain Name Hijacking
Here are the relevant facts and findings by the one member panel:
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.…
