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.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.

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.

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. 

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. 

“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.””