In PFIP, LLC v. Blast Fitness Group, LLC an NAF Panel denied  transfer of the domain, finding that the Complainant failed to present a prima facie case of bad faith and that Respondent had legitimate rights and interests in the domain, largely due to the fact that Complainant had abandoned its trademark rights.

The Complainant, PFIP, LLC (aka “Planet Fitness”), operates fitness centers around the country. Its predecessor company owned and operated fitness centers under the mark BLAST FITNESS before transferring its interest to the Complainant.  At that point Complainant began to operate as Planet Fitness and the trademark BLAST FITNESS was abandoned – the USPTO registration lapsed on March 7, 2010.

Thereafter, the Respondent, Blast Fitness Group LLC, purchased from a third party in November 2010 to use with its BLAST trademark.  Once Respondent started doing so the Complainant sought to regain its rights in the BLAST FITNESS mark and filed on June 27, 2011 to re-register the mark with the USPTO.  Blast Fitness operates 57 fitness centers, and recently purchased 39 clubs from Bally Fitness.  In contrast, Planet Fitness is a franchise operating over 500 clubs and is the national sponsor of the reality show the Biggest Loser.

The Panel found that at the time Respondent bought the domain it believed that the BLAST FITNESS mark had been abandoned, and had a good faith belief that it was legally available for use. The Panel did not feel the need to address the Respondent’s argument that its registration pre-dated Complainant’s rights in the mark. Such a determination is not necessary under this section as this portion of the UDRP Policy considers only whether Complainant has rights in the mark. See AB Svenska Spel v. Zacharov, D2003-0527 (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under the Policy but may prevent a finding of bad faith).

The panel further clarified that Planet Fitness was not guilty of reverse domain hijacking, as it owned a registered trademark identical to the disputed domain name at the time of filing. However, practically speaking, it can’t be a coincidence that Complainant filed to retrieve the BLAST FITNESS mark only once its competitor began using the domain.  Considering that the two parties are now using the same mark for competitive services in the exact same market, it will be interesting to see how this situation ultimately resolves itself and/or if this winds up in litigation.  A simple Google search for the term “blast fitness” lists both parties’ sites on the first two pages along with a number of other sites that use the terms, a few of which appear to be based in the U.S.  In order for the BLAST FITNESS mark to retain its ability to distinguish a single source of origin one of the parties will have to stop using it and also work on preventing third-parties from infringing the mark...