IDENTICAL OR CONFUSINGLY SIMILAR; GENERIC WORDS; REGISTRATION OF DOMAIN NAME BEFORE TRADEMARK REGISTERED AND BEFORE COMPLAINANT INCORPORATED; REVERSE DOMAIN NAME HIJACKING.
Claim Number: FA1808001799942
FORUM Case, 20 August 2018
Complainant was in the business of health and fitness training, particularly for airline pilots.
Respondent provided similar training activities, but did not charge for them. He was also a pilot.
Complainant’s PILOTFITNESS ELEVATE YOUR HEALTH trademark was registered on June 3, 2014. Respondent’s domain name, <pilotfitness.net> was registered on or about March 21, 2012, so it was first in time.
The Complainant made a valiant attempt to wrest the domain name from the Respondent but was unsuccessful. It is interesting that so many separate points arose in the one case[1]. Here they are.
(1) Was the domain name identical or confusingly similar to the trademark? No. If you compared the two, you would see instantly that it was not identical, because the trademark included so much and so many concepts, like health and elevate, whereas the domain name kept to the bare minimum of Pilot Fitness, so the two were clearly not the same. Nor was the domain name confusingly similar to the trademark.There was no reason why anyone looking at the domain name would think that the ‘pilot fitness’ of the domain name, might be the same as the ‘pilot fitness’ in the trademark, especially as it is very clear that the expression ‘pilot fitness’ is generic and there might be lots of other people or businesses using the name or the concept embodied in the term ‘pilot fitness’. So the Complainant failed on both prongs. In fact, the only point the Complainant succeeded on was that it did have a trademark.
(2) The second question is whether the respondent, who of course was the registrant of the domain name, had a right or legitimate interest (an RLI) in it. The panel held that the Complainant had not even made out a prima facie case that the Respondent did not have an RLI. The domain name was a generic term, made up of two generic or descriptive words. It was more likely than not that the Respondent registered the domain name because he was using normal language, in fact a generic expression, to describe the field he was in, i. e, pilot fitness. There had also been no targeting of the Complainant by the Respondent. He could scarcely have registered the domain name because of the Complainant’s trademark, as at that time, when he registered the domain name, the Complainant had not registered or even applied for its trademark. Indeed, at the time the domain name was registered the Complainant had not even been incorporated.
(3) There was no bad faith registration because Respondent registered the disputed domain name before Complainant registered its trademark and the Complainant had not even been incorporated by then. There was also no bad faith use as the Respondent had clearly registered and used the domain name for legitimate reasons.
(4) This was also a case where the Panel felt that the case should never have been brought and it therefore found Reverse Domain Name Hijacking.
It is rare to find a decision where the Respondent has lost on so many grounds, so it would be wise for all who work in this field to read the decision and learn what not to do
[1] This case was decided by The Honourable Neil Brown QC