WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NutriSystem IPHC, Inc. v. Craig Rosenfeld
Case No. D2008-0336
1. The Parties
Complainant is NutriSystem IPHC, Inc., Wilmington, Delaware, United States of America, represented by Spector Gadon & Rosen, PC.
Respondent is Craig Rosenfeld, New York, New York, United States of America, represented by itself.
2. The Domain Name and Registrar
The domain name at issue, <joinnutrisystem.com>, is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2008. On March 7, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On March 10, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. The Response was filed with the Center on April 5, 2008.
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 holder of numerous trademark registrations in respect of the mark NUTRISYSTEM. These include numerous registrations with the United States Patent and Trademark Office (“USPTO”), the earliest of which issued on September 20, 1983. Complaint, Annex 4. Complainant also has trademark registrations for the mark NUTRISYSTEM in eight other countries. Complaint, Annexes 3 and 5. Complainant has used the marks in conjunction with the provision of diet services and foods, body and beauty care products, weight loss programs, vitamins and minerals, and related products and services. Complaint, Annexes 3, 4, and 5.
Respondent registered the domain name at issue on November 10, 2007. Respondent has purchased over 50 domain names similar to the domain name at issue in that they all begin with the term “join________.” The domain name at issue is not currently being used.
5. Parties’ Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainant’s registered mark NUTRISYSTEM, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
Respondent contends that it is not using the domain name at issue, but that it intends to use the domain name in the future to help Complainant acquire qualified customers, and that the domain name at issue was not registered for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for a profit, and that Respondent is not a competitor of Complainant. Respondent purchased the domain name and the other domain names for “a unique & legitimate business idea that [Respondent] can’t share in detail without being under a non-disclosure agreement.”
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 the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the 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 preceded by the common term “join” and followed by 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 a domain name is confusingly similar to a mark. Nokia Corporation v. IBCC aka Nokiagirls.com, WIPO Case No. D2000-0102; Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104. 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 a 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 a 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 the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name. Respondent has asserts that he has a “unique & legitimate business idea” that cannot be disclosed “in detail without being under an NDA.” The Panel finds that such a vague and self-serving assertion is insufficient to demonstrate rights and 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
Complainant’s allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy. However, the Examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In Telstra it was established that “inaction” can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
Telstra established that whether “inaction” could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In the present case, Complainant’s mark has been registered numerous times with the USPTO, the earliest registration dating to 1983. The mark has also been registered in eight other countries. Respondent has not used the domain name at issue to resolve to a website. Respondent failed to adequately disclose his alleged business plans for the use of the domain name at issue. Respondent has failed to use the domain name at issue since its registration. Under these circumstances, the panel finds that Respondent registered the domain name in bad faith and that Respondent’s inaction constitutes bad faith use of the domain name at issue.
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, <joinnutrisystem.com>, be transferred to Complainant.
M. Scott Donahey
Dated: April 21, 2008