Wrong WIPO decision - generic domain name transfer to the complainant!

[M.U.]

Hello dear DNF-members

I subscribe to WIPO's mailinglist to get latest Domain Name Decisions.

I am not in any way involved with the domain name mentioned here, but just thought it was a weird decision by WIPO.

In one of them I read about a domain name that WIPO decided should be transfered to the complainant.

http://www.wipo.int/amc/en/domains/s...ase=D2012-0363

LA Fitness Prices (dot)org

WIPO decided that this domain name was confusingly similar to the LA Fitness trademark.
"This Panel agrees with the Complainant’s contention and previous UDRP decisions that the addition of a generic term to a trademark is not sufficient to avoid confusing similarity."

But is the term LA Fitness not a generic term also? LA, short for Los Angeles, everybody says LA when they want to mention Los Angeles, and the word fitness how more generic can a word be.

I would say that the domain name is based on a geo+two generic word, so how come WIPO made this decision?

Would this not be a "threat" to domain names we learn in lessons from Adam to register, Geo-domains with a high rich keyword? Like f.ex. LALawyer, would'nt this ruling by WIPO make it possible for a law company in LA that uses the term "LA Lawyer" to get the domain name also?

I look forward to your opinions, to learn and maybe understand why WIPO made this decision. Thanks.

Best regards,

M. Unal
diCEPT ApS Ltd.
Digital Concept Development

[Cartoonz]

that's a good decision, actually.
LA Fitness is a strong mark... and the respondent did not bother to respond.

[Dave Zan]

But is the term LA Fitness not a generic term also?

That depends on what it's generic for. Being a so-called generic, common word doesn't make it
generic or common for every other context other than its generic or common one.

Shell, tide and head and shoulders are generic for the mollusk, the waves, and a person who is
considered above the rest. But they're not generic for petroleum, detergents and shampoo.

A problem with some domainers is they get so hung up with that generic thing, only to become
needlessly frustrated when something like this happens later on by their own doing itself.

[M.U.]

That depends on what it's generic for. Being a so-called generic, common word doesn't make it
generic or common for every other context other than its generic or common one.

Shell, tide and head and shoulders are generic for the mollusk, the waves, and a person who is
considered above the rest. But they're not generic for petroleum, detergents and shampoo.

A problem with some domainers is they get so hung up with that generic thing, only to become
needlessly frustrated when something like this happens later on by their own doing itself.

that's a good decision, actually.
LA Fitness is a strong mark... and the respondent did not bother to respond.

Just as a reminder I have not any relationship or some partnership with the former owner of the domain name. I am only curious to why WIPO decided in favor of the complainant and ruled this domain to be transfered.


Thanks both for the reply.

As a non-american I have never heard of the company LA Fitness, for me the "LA" stands for "Los Angeles" and "Fitness" for "Fitness".

For me this would be like "USA Fitness" I don't know the USA trademark rules, but I know in Denmark it is not possible to get trademark for a term that is descriptive for the service/goods you want trademark in.

F.ex. it would not be possible to get a trademark for the term "Dansk Fitness" (Danish Fitness) because it is descriptive for the product, you can get it as a figurative/logo/design, but not as a term.

So how is it possible for "LA Fitness" to be trademark as a term at all?

An my point is exactly like what you write Dave. If the term "LA Fitness" was trademarked as a term for selling clothes, drink or some other products that has nothing to do with fitness I would understand it. But they have trademark "LA Fitness" for this:
http://www.trademarkia.com/la-fitness-75665303.html

And as I understand this page, there is a field named Disclaimer where the word ("FITNESS") is in, does this not mean that the company that applied for the trademark have accepted that the term is not illegible for the service "Fitness".?

Imo the term is descriptive and should not be accepted as a trademark for the service "fitness". But thats only my opinion Im not a trademark lawyer. It just don't seem right.

But thanks anyway for your input.

Best regards,

[Dave Zan]

As a non-american I have never heard of the company LA Fitness, for me the "LA" stands for "Los Angeles" and "Fitness" for "Fitness".

That's probably because you're treating them separately. LA Fitness Int'l wants their mark known in its entirety or as
a whole rather than as separate words.

So if someone in the U.S. sees a knee pad with the logo or words LA Fitness, they'll probably know who's making it or
is the source. The latter is what trademarks also aim to do, anyway: identify the source of its good in commerce.

OTOH, LA Fitness doesn't want to "restrict" its goods to just Los Angeles or the U.S. alone. We also have some here,
albeit not as popular as other brands.

Finally, LA Fitness isn't claiming just the word fitness alone for their mark, which is what their disclaimer is for.

[EvPal]

If he registered lafitnessprices. org prior to LA Fitness mark being applied for and granted would the decision still be possible?

[M.U.]

That's probably because you're treating them separately. LA Fitness Int'l wants their mark known in its entirety or as
a whole rather than as separate words.

So if someone in the U.S. sees a knee pad with the logo or words LA Fitness, they'll probably know who's making it or
is the source. The latter is what trademarks also aim to do, anyway: identify the source of its good in commerce.

OTOH, LA Fitness doesn't want to "restrict" its goods to just Los Angeles or the U.S. alone. We also have some here,
albeit not as popular as other brands.

Finally, LA Fitness isn't claiming just the word fitness alone for their mark, which is what their disclaimer is for.

Thank you Dave.

I think I understand it more now.

-> EvPal
I am sure that if they had registered the domain name before the trademark, then the decision from WIPO would not have been the same.

Best regards,

[STEPHAN]

The mark LA FITNESS was registered since November 1993. The respondent did not even answer. Both made it easy for the panelist.

However, there was not much to win for the respondent anyway. If he would have sold the domain below arbitration cost all would have been happy.