WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutri/System IPHC Inc. v. Monumental Trading, LCC, Domains by Proxy Inc.
Case No. D2008-0276
1. The Parties
Complainant is Nutri/System IPHC Inc., Delaware, United States of America.
Respondents are Monumental Trading, LCC, Baldwin Park, California, United States of America; and Domains by Proxy Inc., Scottsdale, Arizona, United States of America. Hereinafter, the Respondents may be referred to, jointly and severally, as “Respondent”.
2. The Domain Name and Registrar
The disputed domain name, <nutrisystemprogram.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2008, naming Domains by Proxy Inc. as Respondent. On February 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On February 26, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on February 27, 2008 and March 7, 2008. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2008. An informal communication from Young Chu at the email address “[…]@gmail.com’ (the email address given to the Center for Monumental Trading LLC) was received by the Center on March 17, 2008. The email referenced the case by case number and domain name and was a reply to the Notification of Complaint. The email stated in its entirety: “I don’t understand what this is regarding? [sic] Does nutrisystem want me to cancel the domain? I’ll be more than happy to cancel the domain.”
The Center appointed M. Scott Donahey as the sole panelist in this matter on April 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the registrant of the mark NUTRISYSTEM and the NUTRISYSTEM family of marks. Complainant has registered twenty-five trademarks for NUTRISYSTEM or in combination with other terms or designs or in stylized forms. Complaint, Annex 9. Complainant also holds numerous other registrations in the mark NUTRISYSTEM or for that mark in combination with other terms in the United Kingdom, Australia, and Canada. Complaint, Annex 5. The earliest United States Patent and Trademark Office registration issued September 20, 1983. The marks are used in conjunction with dietary and dietary supplement services and products and weight-loss programs. Complainant has operated its business under the trademark and trade name NUTRISYSTEM since 1972. In the year 2007, Complainant generated total net revenues of US$775 million. Complainant spent US$180 million marketing the NutriSystem name and marks in calendar year 2007.
Respondent registered the domain name at issue on June 28, 2007. Complaint, Annexes 1 and 2. The domain name at issue resolves to a web page headed “Nutrisystem – Your weight loss starts here!” The page purports to have links to “more info” on Complainant’s products and services, but links to wholly unrelated websites such as Blockbuster Video and “Amateur.Match.net”. Complaint, Annex 7.
On January 21, 2008 Complainant’s counsel sent to Respondent Domains by Proxy a cease and desist letter. Complaint, Annex 8. Complainant received no response to this letter.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainant’s registered mark NUTRISYSTEM, that Respondent has no right or legitimate interest in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. Complainant seeks transfer of the registration of the domain name at issue.
Respondent made no formal response to the complaint, but rather expressed a willingness to cancel the registration of the domain name at issue.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(2) respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s registered mark to which the common term “program” is appended and the gTLD suffix .com. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. Nokiagirls.com aka IBCC WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104 (<eautomotive.com>). The Panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name. Respondent has indicated a willingness to cancel the registration of the domain name at issue and has not asserted any rights or legitimate interests in respect of the domain name at issue, which the Panel takes as an acknowledgment that Respondent has no rights or legitimate interests in respect of the domain name at issue. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent is using the domain name at issue to resolve to a website on which Complainant’s NUTRISYSTEM mark is prominently featured and which contains links to other sites that are wholly unrelated to complainant but which undoubtedly provide revenue in the form of pay-per-click payments to Respondent. Respondent’s use of <nutrisystemprogram.com> to resolve to a parking website cannot be regarded as a right or legitimate interest in respect of the domain name. Burberry Limited v. Startelecom, WIPO Case No. D2005-1114. This is a clear case of a violation of paragraph 4(b)(iv) of the Policy by using the domain name at issue to intentionally attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks. The Panel finds that the domain name at issue has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nutrisystemprogram.com> be transferred to Complainant.
M. Scott Donahey
Dated: April 28, 2008