Intellectual Property Law

Chapter 7 Case Study Answers

Case Study: Fit Forever has recently discovered that an individual named Blake Taylor
has registered the domain name fitforevar.com, and there is some content on the site
relating to fitness services. Taylor has approached Fit Forever and stated, “Why don’t
you make me an offer and I’ll sell you the domain name.” Fit Forever has also paid
Google to display its mark and website address when users search for “fitness classes.”
When consumers search for “fitness classes,” Fit Forever’s site is ranked first; however,
to the right of the reference to Fit Forever are references to other fitness studios,
displayed under a heading “People Also Search For.”

Activities: What should Fit Forever do to recover the domain fitforevar.com from Taylor
as quickly as possible? Is it permissible for other fitness studios to have their marks
displayed alongside of Fit Forever’s when users search for “fitness classes” on Google?

To recover the domain name from Taylor, Fit Forever should initiate an
action under the UDRP. (An action under the URS system is not appropriate
because the domain name is not one of the “new” gTLDs. Moreover, the facts
state that Fit Forever wants to recover the domain name quickly. Thus, a
court action under ACPA for cybersquatting or an action for trademark
infringement does not satisfy that goal. In sum, a complaint filed under the
UDRP would achieve Fit Forever’s goals.) To prevail under the UDRP, Fit
Forever must demonstrate an identical or confusingly similar mark.
“FitForevar” would be confusingly similar because it is spelled nearly the
same and is pronounced nearly the same. Taylor is using the domain
(because there is some content on the site). Finally, the name was registered
by Taylor in bad faith (because he has no connection with Fit Forever) and is
being used in bad faith (as shown by Taylor’s offer to sell the domain name
to Fit Forever). Thus, an action under the UDRP would likely be successful
and would result in a transfer of the domain name to Fit Forever.
It is likely permissible for other fitness studios’ marks to be displayed when
users search on Google for “fitness classes.” There is likely no infringement
(because there is no likelihood of confusion. The other marks are displayed
under a banner that doesn’t reference “Fit Forever” but under a banner that
is separate from the search results and clearly identifies that these are other
companies/search results.