WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reveille LLC v. Theodore Lazier / Registrant c/o thebiggestloser.com / Whois Privacy Service
Case No. D2011-0601
1. The Parties
Complainant is Reveille LLC, Los Angeles, California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is Theodore Lazier / Registrant c/o thebiggestloser.com/Whois Privacy Service, Homestead, Florida, United States of America and Vancouver, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thebiggestloser.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2011. On April 5, 2011, the Center transmitted by email to Dotster, Inc a request for registrar verification in connection with the disputed domain name. On April 5, 2011, Dotster, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which supplemented information regarding Respondent in the Complaint. The Center sent an email communication to Complainant on April 11, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 12, 2011.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. On May 3, 2011 Respondent requested an extension to the due date of response. Taking into account that the request was received close to the due date for Response and that there did not appear to be exceptional circumstances, as required by Rules, paragraph 5(d), the Center declined to extend the period for Response. The due date for submitting a Response remained May 3, 2011. On May 5, 2011 Respondent filed a supplemental filing. The Center acknowledged receipt of the submission on May 9, 2011.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 10, 2011. 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.
As noted above, Respondent filed a supplemental filing shortly following the due date for submission of a response. In its supplemental filing, Respondent recited what it considers to be facts sufficient to support rejection of Complainant's request. The Panel takes Respondent's submission into account in making its determination.
4. Factual Background
Complainant has registered the trademark and service mark THE BIGGEST LOSER on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3319941, dated October 23, 2007, in international class (IC) 6, covering “metal key chains and metal key rings”, claiming date of first use and first use in commerce of January 2007; registration number 3406678, dated April 1, 2008, in IC 9, covering, inter alia, prerecorded DVDs, claiming date of first use and first use in commerce of December 2004; registration number 3573962, dated February 10, 2009, in IC 16, covering, inter alia, nonfiction books, claiming date of first use and first use in commerce of July 29, 2005; registration number 3624682, dated May 19, 2009, in IC 25, covering, inter alia, T-shirts, claiming date of first use and first use in commerce of March 14, 2005; registration number 3644948, dated June 23, 2009, in IC 28 covering sporting goods, as further specified, asserting date of first use and first use in commerce of January 1, 2009, and; registration number 3509926, dated September 30, 2008, in IC 29, covering various food products, claiming date of first use and first use in commerce of April 1, 2008.
Complainant publicly announced the launch of a television program named “The Biggest Loser” to the media trade press on May 25, 2004. Complainant has provided substantial evidence that this announcement was widely circulated by news media reporting on television industry developments (e.g., Daily Variety), and that this news report was picked up and reported by major newspapers (e.g., the Chicago Tribune) on May 26, 2004. Complainant has also submitted evidence that “open casting calls” for the new program were held in various major metropolitan areas in the United States prior to the public announcement of the launch of the program (e.g., “NBC Seeks Nations 'Biggest Loser”, Zap2it, May 26, 2004).
Complainant produces a television program broadcast in the United States by NBC under the name The Biggest Loser. The television program was first broadcast on October 19, 2004. The program is heavily advertised on network television and in print media, and is among the more highly viewed television programs in the United States, with current viewership averaging 8.9 million viewers per week. The program is broadcast in numerous countries outside the United States. Complainant operates several commercial Internet websites offering goods and services relating to weight loss and healthy lifestyle, including at <biggestloser.com> <thebiggestloserclub.com>, and <thebiggestloserstore.com>. These websites prominently display a distinctive logo adopted by Complainant that incorporates its trademark and service mark. These websites provide links to products licensed by Complainant and that incorporate or refer to its trademark, service mark and logo. Complainant reports sales of THE BIGGEST LOSER branded products in the United States of over US D175 million since the first broadcast of the television program.
According to the registrar, Dotser, Inc., Respondent is registrant of the disputed domain name. According to a DomainTools WhoIs record provided by Complainant, and confirmed by a Dotster, Inc., WhoIs record provided by the Center, the record of registration of the disputed domain name was created on May 26, 2004.
Starting on or about October 24, 2006, the disputed domain name was used to redirect Internet users to Internet websites identifying Complainant's program and certain of Complainant's branded ancillary services. In 2008, a representative of Complainant contacted Respondent seeking transfer of the disputed domain name, and Respondent indicated it would be willing to discuss its sale. Respondent did not, however, respond to a follow-up offer by Complainant of US D1000 for transfer of the disputed domain.
As of the date of commencement of this administrative proceeding, the disputed domain name was used to direct Internet users to a website headed “The Biggest Loser”, referring in subheadings to “Biggest Loser”, “The Contestants”, “Trainers”, “Show Summary”, “Season 9” and “Winners” . The subheadings link to content regarding the television program. The website operated by Respondent includes Complainant's distinctive logo that incorporates its trademark. The homepage of the website incorporates a substantial number of links to third-party operated websites, including websites sponsored or licensed by Complainant, and websites offering diet plans, products and lifestyle related services that are not sponsored by Complainant or Its licensees. For example, a prominent graphical representation and link on Respondent's website directs Internet users to <fatburningfurnace.com>, a weight-loss program that is not affiliated with or licensed by Complainant, and is a competitor of Complainant. There are a number of advertisements placed by Google Ads to third-party providers of diet programs. There is a prominent photograph and links to the website of a trainer participating in Complainant's “The Biggest Loser” television program.
There is a disclaimer at the base of the website operated by Respondent, stating “This site is not affiliated with nor endorsed by The Biggest Loser TV show, NBC Universal, NBC Studios, Inc., or Reveille LLC.“ There is a copyright notice stating “Copyright © 2009 – 2010 The Biggest Loser: Lose Weight and Get in Shape. All rights reserved”.
The registration agreement in effect between Respondent and Dotster, Inc., subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark THE BIGGEST LOSER, as evidenced by registration on the Principal Register of the USPTO. Complainant further alleges that rights in that trademark arose prior to registration by Respondent of the disputed domain name based on public announcement of a new television program using that term as its name, and earlier “casting calls” for the program.
Complainant argues that the disputed domain name is identical or confusingly similar to its trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been authorized by Complainant to use its trademark; (2) Respondent was not known by the disputed domain name, nor did Respondent make a bona fide use of the trademark in the disputed domain name prior to notice of the dispute; (3) Respondent is not making a legitimate noncommercial or fair use of the trademark in the disputed domain name because, inter alia, it is using Complainant's trademark to identify and direct Internet users to third-party products and services competing with Complainant, and; (4) use of a privacy shield indicates that Respondent is attempting to shield its activities from scrutiny under the Policy.
Complainant alleges that the disputed domain name was registered and has been used in bad faith because (1) Complainant's rights in the trademark arose prior to registration of the disputed domain name; (2) registration of the disputed domain name one day following Complainant's announcement of its new television program indicates an intention to opportunistically exploit Complainant's rights in its trademark; (3) use of a privacy shield suggests bad faith; (4) Respondent is using the disputed domain name to generate pay per click revenues through links to third-party providers of goods and services; (5) the disclaimer used on Respondent's website is insufficient to overcome the intentional generation of confusion with respect to association with Complainant; (6) registration of the disputed domain name one day following Complainant's announcement of a new television program using the identical name clearly implies an intent to take advantage of Complainant's rights in its trademark, and; (7) Respondent expressed an interest in selling the disputed domain name, soliciting excessive profits.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions in the form of a formal Response. Respondent made two points in a supplemental filing. First, the disputed domain name was registered “prior to the debut of the TV show”. Second, a contact at The Biggest Loser Club, affiliated with Complainant, gave permission for Respondent to use the disputed domain name, and “paid out affiliate commissions for about two years after these discussions.”
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings. Respondent Requested an extension of the due date for a Response that was denied by the Center because the request was received shortly prior to the due date for a Response, and because Respondent had not provided any indication of exceptional circumstances to justify its request (referencing paragraph 5(d) of the Rules). The Panel is satisfied that Respondent received adequate notice of these proceedings and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark THE BIGGEST LOSER on the Principal Register of the USPTO, and of substantial use of that mark in commerce in the United States (see Factual Background, supra). Respondent has not challenged the validity of Complainant's claim to ownership of trademark rights in THE BIGGEST LOSER. The Panel determines that Complainant has rights in the trademark THE BIGGEST LOSER in the United States.
The disputed domain name <thebiggestloser.com> directly incorporates Complainant's trademark, adding only the generic top-level domain identifier “.com”. For purposes of the Policy, the disputed domain name is identical to Complainant's trademark.
The Panel determines that Complainant holds rights in a trademark and that the disputed domain name is identical to that trademark.
The question when Complainant's trademark rights arose will be addressed under the element of bad faith registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant alleges that Respondent has failed to establish rights or legitimate interests in the disputed domain name because Respondent has not been commonly known by the disputed domain name, has not been authorized by Complainant to use its trademark, did not use the disputed domain name for a bona fide offering of goods or services prior to notice of the dispute, and has not made legitimate noncommercial or fair use of the disputed domain name. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has provided no evidence that it was commonly known by the disputed domain name when it undertook registration.
Respondent has stated it was authorized by an entity affiliated with Complainant to use the disputed domain name in association with its website. However, Respondent has not provided evidentiary support for this assertion. The Panel does not accept Respondent's mere assertion of authorization as sufficient to establish rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name immediately following announcement by Complainant of a television program using Complainant's trademark. Respondent should have been aware that Complainant would object to its registration of the disputed domain name incorporating the name of that television program, and to Respondent's subsequent use of the disputed domain name In connection with the advertisement of third-party goods and services competitive with those of Complainant. Respondent did not make a bona fide offering of goods or services prior to notice of a dispute.
Respondent has used the disputed domain name in connection with a website that conveys the substantial appearance of sponsorship, affiliation with or endorsement by Complainant. This appearance is conveyed by use of Complainant's trademark as the heading of the website, provision of relatively current information about the program and its cast, use of Complainant's distinctive logo, and link to a website of a prominent trainer/cast member of the program. The website includes a substantial number of links to third-party providers of goods and services, a number of which are not affiliated with Complainant and/or are competitors of Complainant. This does not constitute legitimate noncommercial use of Complainant's trademark because Respondent presumably is earning pay per click fees from the links. This does not constitute fair use of Complainant's trademark because Respondent is using Complainant's trademark to advertise goods and services of third parties that include competitors of Complainant (even though part of the content on Respondent's website addresses Complainant's television program in an informational way). See, e.g., LEGO Juris A/S v. Lothar Evers, WIPO Case No. D2009-1711.
Respondent has failed to rebut Complainant's prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name, or; (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
As a general proposition, a complaining party must have established rights in a trademark prior to registration by a respondent of a domain name in order to establish that the registration was undertaken in bad faith. This sole panelist, alone and as a member of three-person panels, has addressed the problem of sequencing and its relationship to bad faith on numerous occasions. See, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033, and decisions cited therein,1 and Xbridge Limited v. Marchex Sales, Inc, WIPO Case No. D2010-2069 (John Swinson, presiding). This sole panelist does not subscribe to the minority view that absent the existence of trademark rights at the time of registration, subsequent bad faith use of a domain name may establish bad faith registration and use within the meaning of the Policy (see, e.g. Xbridge, id., Andrew Christie, dissenting).
In the present proceeding, Respondent registered the disputed domain name one day following the public announcement by Complainant of the launch of THE BIGGEST LOSER television program. Complainant has argued that the announcement is sufficient to establish common law (or unregistered) rights in THE BIGGEST LOSER in the United States as of the time of the announcement. Complainant relies particularly on True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930 as precedent for the proposition that common law trademark rights may be established in a single day based on announcement of a new television program. In its decision in True Blue Productions, the sole panelist (Peter Michaelson) based his finding of common law trademark rights in “Fat Actress” on that term's association in a press announcement with the very well-known lead actress slated to appear in the program, Kirstie Alley. He suggested that combination of the name of the lead actress with the trademark term “Fat Actress” would be sufficient to create an enduring impression in the minds of the public such as to establish common law rights effective immediately.
Judicial precedent in U.S. trademark law recognizes distinct bases for the establishment of common law trademark rights. In order to establish common law trademark rights in “descriptive” terms, the party asserting those rights must establish secondary meaning among the consumer public (as well as use of the trademark in commerce). In order to establish common law trademark rights in terms which are “suggestive”, “fanciful” or “arbitrary”, a party asserting common law rights need only show that the terms have been used in commerce in association with the goods or services. So-called “inherently distinctive” marks do not require a demonstration of secondary meaning. (See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)) There is nothing to preclude the establishment of common law rights in an inherently distinctive trademark promptly upon use in commerce in the United States.
Complainant has acknowledged that the terms ”the’, “biggest” and “loser’ each are dictionary terms with a meaning in the English language. The phrase ”the biggest loser” has a meaning in the English language, but not a meaning that is descriptively tied to a television reality show involving a weight-loss competition. In common language “the biggest loser” would be understood to refer to a person (individual or corporate) that had done the most poorly in some endeavor.2 For example, “the biggest loser” might be a gambler that lost the most money at the gaming tables, or it might be a basketball team that suffered the worst loss, or an individual who had tried and failed at the most tasks. Until given the context of a television program involving a weight loss competition, the natural English language descriptive meaning for “THE BIGGEST LOSER” would not be a television program involving a weight-loss competition. Once the terms are understood to be associated with a television weight-loss competition, they do take on a descriptive meaning. This is in the nature of so-called “suggestive” terms constituting trademarks. There is some descriptive relationship, but only upon the exercise of some imagination. (See Qualitex v. Jacobson, 514 U.S. 159 (1995).
Courts in the United States have often noted that there is no bright line that distinguishes “descriptive” from “suggestive” terms constituting trademarks. The Panel here determines that “The Biggest Loser” is a suggestive term, and that upon using that term in national commerce on May 25, 2004, Complainant established common law rights in that term. When Respondent registered the disputed domain name on May 26, 2004, Complainant had common law rights in the trademark THE BIGGEST LOSER in connection with its television program. It was thus possible for Respondent to register the disputed domain name in bad faith on May 26, 2004 because Complainant had established rights in its trademark.
The close timing sequence between Complainant's announcement of its new television program and Respondent's registration of the disputed domain name strongly suggests that Respondent registered the disputed domain name in reaction to Complainant's announcement. Respondent had the opportunity, but failed to provide an alternative rationale for its registration of the disputed domain name. Respondent's subsequent use of the disputed domain name takes direct advantage of the goodwill established by Complainant in its television program and related products and services. Respondent has used the disputed domain name in connection with a website that conveys the appearance of sponsorship, affiliation with or endorsement by Complainant with the intention to profit from Internet user confusion.
The Panel determines that Respondent registered and used the disputed domain name in bad faith by intentionally for commercial gain using Complainant's trademark to create Internet user confusion regarding Complainant's sponsorship, affiliation with or endorsement of Respondent's website.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name,<thebiggestloser.com>, be transferred to Complainant.
Frederick M. Abbott
Dated: May 15, 2011
1 In Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033, this sole panelist acknowledged – without expressing an opinion – that there are panel decisions involving sequencing that take into account exceptional factual circumstances.
2 The Panel’s analysis is supported by dictionary definition of the term ”loser” provided by Merriam-Webster's online dictionary, including illustrative examples of use of the term.
”Definition of LOSER
1: a person or thing that loses especially consistently
2: a person who is incompetent or unable to succeed; also: something doomed to fail or disappoint
Examples of LOSER
1. The team had a reputation for being a loser year after year.
2. The loser of the bet has to buy drinks for the winner.
3. Whoever benefits from the new government programs, the real loser will be the American taxpayer.
4. That guy is a born loser.
At http://www.merriam-webster.com/dictionary/loser , Panel visit of May 14, 2011.