WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Commercestream Corp.

Case No. D2013-0579

1. The Parties

The Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.

The Respondent is Commercestream Corp. of Hollywood, California, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <jennycraig.net> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2013. The Response was filed with the Center on April 25, 2013.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 1, 2013. 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

The Complainant Societe des Produits Nestlé S.A. acquired Jenny Craig Inc. in 2010. Jenny Craig Inc. was founded in 1983 by Jenny and Sid Craig. The Craigs opened their first weight loss center in Australia in 1983. By 1985, 69 Jenny Craig Weight Loss Centers were operating in Australia. In 1985, Jenny Craig Inc. opened 13 weight loss centers in the Los Angeles area. By 1987, Jenny Craig Inc. had established 46 centers in the United States and 114 centers in countries around the world. The Jenny Craig business experienced rapid growth in the 1990’s and by 1998 it was operating 643 company-owned weight loss centers and 138 franchised centers in 45 different States in the United States. Since that time, the Jenny Craig business has extended its products and services to include cookbooks and exercise equipment, and has also been active in the world of e-commerce.

The Complainant owns several trademark registrations for JENNY CRAIG, including the following:

U.S. Registration No. 1,774,337 dated June 1, 1993 for JENNY CRAIG;

U.S. Registration No. 1,967,798 dated April 16, 1996 for JENNY CRAIG;

U.S. Registration No. 2,760,695 dated September 9, 2003 for JENNY CRAIG;

Australian Registration No. 399943 dated November 15, 1983 for JC WEIGHT LOSS CENTRES JENNY CRAIG;

CTM Registration No. 002105500 dated April 24, 2003 for JENNY CRAIG.

The Complainant also owns the following domain name registrations:

<jennycraig.com>

<jennycraig.us>

<jennycraig.com.au>

<jennycraig.co.uk>

<jennycraig.co.nz>

The Complainant operates the website “www.jennycraig.com’’ as its primary web portal for global promotion, but the Complainant also operates web pages on the main social networks such as Twitter.com; Facebook.com; YouTube.com and Pinterest.com.

The Respondent registered the disputed domain name <jennycraig.net> on March 22, 2005, which reverts to an inactive website.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns several registrations for the trademark JENNY CRAIG, including U.S. Registration No. 1,774,337; U.S. Registration No. 1,967,798; U.S. Registration No. 2,760,695; Australian Registration No. 399943; and CTM Registration No. 002105500.

The Complainant contends that the domain name <jennycraig.net> is identical to the Complainant’s JENNY CRAIG trademark except for the addition of the gTLD “.net”. The Complainant submits that the addition of the gTLD does not distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered JENNY CRAIG trademark.

Rights or Legitimate Interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name <jennycraig.net>. The Respondent is not commonly known by the name “Jenny Craig”, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the domain name for a bona fide offering of goods and services, and that it is unrealistic to believe that the Respondent was unaware of the Complainant’s reputation in the JENNY CRAIG trademark and its operations around the world, when the disputed domain name was registered.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <jennycraig.net> in bad faith, because (i) Respondent must have been aware of the Complainant’s registered trademark rights in JENNY CRAIG, when the Respondent registered the confusingly similar domain name; (ii) Respondent registered and is using a confusingly similar domain name to interfere with the commercial business of the Complainant; and (iii) Respondent attempted to sell the confusingly similar domain name for more than Respondent’s out-of-pocket expenses.

B. Respondent

In its Response, the Respondent is represented by an individual named Jorg Schmidt. Mr. Schmidt agrees that the disputed domain name is confusingly similar to the Complainant’s trademark JENNY CRAIG.

The Respondent’s representative contends that the Respondent has rights and legitimate interests in the disputed domain name. The Respondent claims to work routinely with individuals and small business entrepreneurs setting up internet presence. The Respondent states that from time-to-time he will register and hold domain names, to keep them available for such businesses to use. The Respondent claims to have registered the disputed domain name to hold it until a potential new user wanted the name.

The Respondent further submits that he has not registered and used the disputed domain name in bad faith. The Respondent claims that the Complainant’s submission that the JENNY CRAIG trademark is in fact a “famous” trademark is false because the Complainant has not provided sufficiently detailed evidence of use. The Respondent claims that the absence of details, such as traffic statistics to Complainant’s main website <jennycraig.com>, means that the “famous” status of the mark has not been established.

The Respondent also claims that the passive holding of a domain name does not constitute bad faith under the policy, because the Complainant’s trademark JENNY CRAIG was not proven to be well-known at the time it was registered in March, 2005.

The Respondent also claims that the Complainant executed an unethical scheme to trap the Respondent, by hiring a third party to contact the Respondent with a ruse to purchase the disputed domain name. The Respondent contends that he did not target the Complainant, but was the victim of an entrapment.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark JENNY CRAIG by virtue of its Trademark Registrations, including the following:

U.S. Registration No. 1,774,337 – JENNY CRAIG

U.S. Registration No. 1,967,798 – JENNY CRAIG

U.S. Registration No. 2,760,798 – JENNY CRAIG

Australian Registration No. 399943 – JENNY CRAIG

CTM Registration No. 002105500 – JENNY CRAIG

The Panel further finds that the domain name <jennycraig.net> is confusingly similar to the Complainant’s registered trademark JENNY CRAIG, as conceded by Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel is prepared to find that the Complainant’s trademark JENNY CRAIG was well-known when the Respondent registered the disputed domain name in March, 2005. In fact, the Panel is prepared to accept the Complainant’s evidence that the JENNY CRAIG trademark was well-known since the 1990’s when it expanded its weight loss centers across the U.S. and around the world to a total number of 781 operating centers and franchises. The extensive marketing and sales of JENNY CRAIG products and services also supports a finding of substantial reputation for the JENNY CRAIG trademark prior to March, 2005. The Panel finds that by 2005 the Respondent must have been aware of the JENNY CRAIG trademark and the Complainant’s products and services, as Respondent himself was located in the State of California where the Jenny Craig business had a long prior history of operations.

The Panel notes that Respondent did not deny his awareness of the JENNY CRAIG mark, and in fact acknowledged that the <jennycraig.net> domain name “obviously … could have a huge value for someone who uses it in the appropriate way.”

In the circumstances, the Respondent claims that the JENNY CRAIG trademark was not well-known simply does not ring true.

The Complainant submits that the Respondent was never authorized or licensed to use the Complainant’s JENNY CRAIG trademark. It is obvious that the Respondent is not commonly known by the name “Jenny Craig”. However, the Respondent’s principal defence is that the names “Jenny” and “Craig”, alone and in combination, are very common, and that it was entirely lawful for him to acquire and hold the domain name for the purposes of conveying it to one of the hundreds of persons named Jenny Craig who he imagined to exist. The Panel finds this position to be untenable, in that it is speculative and entirely unsupported by actual evidence. The bald assertion that there are hundreds of other Jenny Craig’s has no probative value unless supported by proof, which should have been readily available to the Respondent if it actually existed. The evidence in this proceeding clearly shows that the name and trademark JENNY CRAIG has become distinctive of one source of weight loss products and services. At this point, after so many years of use by Complainant in the U.S. and international markets, the Respondent’s failure to put forward tangible evidence to support his claims to rights and legitimate interests is noteworthy. The absence of credible evidence in this regard is fatal to the Respondent’s protestations of legitimacy both in respect of rights to the “Jenny Craig” name, and in respect to his intentions.

In light of the Complainant’s well-established reputation in its JENNY CRAIG trademark, the Panel is prepared to find that the Respondent must have been aware of the Complainant’s rights in JENNY CRAIG trademark, when the domain name <jennycraig.net> was registered, and that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark JENNY CRAIG when the disputed domain name was registered on March 22, 2005. In the face of compelling evidence that the JENNY CRAIG trademark was well-known, the Respondent has failed to provide any probative evidence to justify his conduct in registering the domain name, as fully described in these reasons in paragraph 6.B. above. The Panel finds that this is an abusive registration, and that the Respondent acted in bad faith by appropriating a confusingly similar domain name and thereby interfering with the operations and business of the Complainant.

In all these circumstances, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <jennycraig.net> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: May 15, 2013