WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutri/System IPHC, Inc v. Larry Mims
Case No. D2008-0657
1. The Parties
Complainant is Nutri/System IPHC, Inc., Wilmington, Delaware, United States of America, represented by High Swartz LLP, United States of America.
Respondent is Larry Mims, Wheaton, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <nutrasystemcom.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2008. On April 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 29, 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. No formal Response was filed, but on May 23, 2008, Respondent sent email correspondence to the Center as described below.1
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on June 16, 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’s parent company is a leading provider of weight-loss programs, which are marketed in many countries. Complainant owns many trademark registrations for NUTRISYSTEM in the United States of America (“U.S.”), and elsewhere, including U.S. Trademark Registration number 1,251,922 in Class 42, with first use dated July 1979.
Publicly available records indicate that the disputed domain name was registered on January 2, 2008. The web page to which the disputed domain name resolves is a parking page which provides sponsored links to weight-loss products of competitors of Complainant and makes negative references to Complainant’s products.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s marks. Complainant also alleges Respondent has no legitimate rights or interest in the disputed domain name, and that Respondent registered and is using the domain name in bad faith.
Complainant avers that on January 21, 2008, Complainant’s counsel sent an email letter to Respondent describing Complainant’s proprietary rights and demanding that Respondent cease use of and transfer the disputed domain name to Complainant. Complainant avers that Respondent contacted Complainant and agreed to transfer the domain name if Complainant “paid a bounty.” After Complainant rejected making a payment, Complainant alleges, Respondent agreed to transfer the domain name without payment of a bounty. Complainant states that “a number of weeks have past [sic] and Respondent has not transferred the domain name.”
On this basis, Complainant seeks transfer of the disputed domain name.
Respondent did not submit a formal Response to the Complainant’s contentions.
Three days before the deadline for submitting a Response, however, Respondent wrote to the Center by email indicating that he had “agreed to transfer this domain,” and had been trying to do so for several months. He also wrote that he had been an “affiliate” of Nutrisystems, and would transfer the domain name if Complainant paid “the $10 dollars that I paid for the domain and my affiliate earnings for selling Nutrisystems which I had not received.” Copying Complainant’s counsel in his email to the Center, Respondent also indicated he had been in communication with Complainant but that arranged conference calls between Complainant and Respondent, to resolve details of the transfer of the domain name, never materialized.
In his correspondence with the Center, Respondent did not address any of Complainant’s contentions or allegations.
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). A complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name <nutrasystemcom.com> is not identical to Complainant’s trademarks, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar.
Panels ordinarily disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. It would be absurd to permit use of the term “com” within the name (and not as a suffix), before the gTLD designation, to escape this rule and thereby to allow Respondent to create confusing similarity. The Panel therefore also disregards the use of “com” before the suffix in this case.
Moreover, as Complainant points out, the misspelling of Complainant’s NUTRISYSTEM trademark by using an “a” in place of the “i” is a typical approach to typosquatting, which panels have consistently found to create confusion with trademark holders’ rights. See, e.g., Nutri/System IPHC, Inc. v. Ms. Lacy Ana De Oliveira, WIPO Case No. D2008-0204; MasterCard International, Inc. v. Domain Services Pty. Ltd., Buy This Domain, WIPO Case No. D2007-1122; Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095.
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Complainant avers that Respondent was not commonly known by the disputed domain name, that Respondent necessarily knew of Complainant’s marks, and that Respondent was without any license or authorization by Complainant. Complainant also contends that Respondent’s use of the disputed domain name to route Internet users to a parking page with sponsored link advertising precludes any finding that Respondent is making legitimate non-commercial use of the name.
Since Respondent did not meet these particular allegations of the Complaint, and did not raise other pertinent contentions, the Panel accepts as true Complainant’s specific factual averments that: Respondent was not commonly known by the disputed domain name; that, through constructive notice, Respondent would have been aware of Complainant’s marks; and that Respondent lacked license or authorization by Complainant to use the disputed domain name. Complainant has established a prima facie case on these elements and Respondent has not addressed them in its email responses.
Respondent presumably receives revenues when it routes traffic through its sponsored link advertising. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied
C. Registered and Used in Bad Faith
The Panel also finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a list of circumstances that suggest bad faith registration. That list is not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the complainant has particularly strong trademark rights, and whether there exists a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the Panel is convinced that Respondent was aware of the good will of Complainant’s trade and service marks before registering the disputed domain name. In his email to the Center and Complainant, Respondent states that he was an “affiliate” of Complainant, which strongly suggests that Respondent had knowledge of Complainant’s marks before registering a confusingly similar domain name.
Respondent also wrote that he would transfer the disputed domain name to Complainant if he received the cost of registration plus his “affiliate earnings.” The Panel finds that this communication by Respondent evidences an intent by Respondent to sell the domain name to Complainant for a value in excess of the cost of registration. See Policy Paragraph 4(b)(i).2
The Panel concludes, therefore, that Respondent registered the domain name in bad faith.
The Panel further infers that Respondent intended to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Policy Paragraph 4(b)(iv).
Moreover, under these circumstances, the Panel agrees that there is no conceivable good faith use for the disputed domain name by Respondent.3 See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Telstra Corp., supra. Cf. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of well-known mark suggested opportunistic bad faith).
The Panel concludes, therefore, that Respondent is using the disputed domain name in bad faith and the Panel finds for Complainant on the third element of the Policy.
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 <nutrasystemcom.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: June 30, 2008
1 After receiving Respondent’s emails, on May 26, and May 30, 2008, the Center wrote to the parties suggesting that Complainant might wish to suspend proceedings to explore a settlement. Complainant never responded to these suggestions, however.
2 Complainant’s allegations respecting the “bounty” demanded by Respondent to transfer the name are too vague for the Panel to rely upon. Whether there may be some other basis for payments between the parties, such as “affiliate earnings,” is beyond the scope of this proceeding.
3 Respondent’s use of the domain name to earn click-through revenues, as explained above, proves the commercial nature of Respondent’s interest in the name.