World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Freelife International Holdings, LLC and Freelife International Australia Pty Ltd. v. Nick Nastevski dba Health Doctor

Case No. DAU2012-0017

1. The Parties

The Complainants are Freelife International Holdings, LLC (the “First Complainant”) and Freelife International Australia Pty Ltd. (the “Second Complainant”) of Phoenix, Arizona, United States of America and Cannon Hill, Australia, respectively, represented by Christopher A. Reid, United States of America.

The Respondent is Nick Nastevski dba Health Doctor of Templestowe, Victoria, Australia.

2. The Domain Names and Registrar

The disputed domain names <chi3.com.au>, <gochiaustralia.com.au>, <go-chi.com.au>, <gochi.com.au>, <gochi-juice.com.au>, <gochijuice.com.au>, <gochi.net.au>, <gochishop.com.au>, <gojikids.com.au>, <himalayangojijuice.com.au>, <tai-slim.com.au>, <taislimskinnys.com.au> (the “Domain Names”) are registered with MYOB Australia E1 Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2012. On June 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2012, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on June 27, 2012.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on July 26, 2012. 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 First Complainant is an international marketing company that sells health and wellness products including products such as CHI3 Energy, Gochi Juice and Himalayan Goji Juice. The First Complainant was established in the United States in 1995. In 2004 its Australian subsidiary, the Second Complainant, was established. The Complainants have sold their products, including Himalayan Goji juice, in Australia since 2004.

The Respondent was a distributor (Marketing Executive) for the Complainants at the time the Domain Names were registered. The Respondent’s account with the Complainants has now been terminated.

The First Complainant is the owner and the Second Complainant is the authorised user of the following Australian Trade Mark Registrations (collectively the “Complainants’ Marks”).

Mark

Registration Number

Date of Registration

CHI3 ENERGY

1282875

January 30, 2009

GOCHI

1212358

November 28, 2007

THE GOCHI EFFECT

1214512

December 11, 2007

GOCHI

1214515

December 11, 2007

GOCHI

1220328

January 22, 2008

GOCHI THE NEXT GENERATION OF HIMALAYAN GOJI JUICE

1220329

January 22, 2008

GOJIKIDS

893090

January 31, 2006

HIMALAYAN GOJI

973019

October 6, 2003

TAISLIM

1276551

December 10, 2008

The disputed domain name <chi3.com.au> was created on July 21, 2010. It currently resolves to a site at “www.googli.com.au” that provides a number of links to third-party commercial sites and Google advertisements.

The disputed domain name <gochiaustralia.com.au> was created on March 13, 2011. It currently resolves to “www.googli.com.au”.

The disputed domain name <go-chi.com.au> was created on January 9, 2008. It currently resolves to “www.googli.com.au”.

The disputed domain name <gochi-juice.com.au> was created on January 10, 2008. It currently resolves to “www.googli.com.au”.

The disputed domain name <gochijuice.com.au> was created on October 5, 2008. It currently resolves to “www.googli.com.au”.

The disputed domain name <gochishop.com.au> was created on January 9, 2008. It currently resolves to “www.googli.com.au”.

The disputed domain name <himalayangojijuice.com.au> was created on April 23, 2007. It currently resolves to “www.googli.com.au”.

The disputed domain name <tai-slim.com.au> was created on August 6, 2011. It currently resolves to “www.googli.com.au”.

The disputed domain name <taislimskinnys.com.au> was created on July 21, 2010. It currently resolves to “www.googli.com.au”.

The disputed domain names <gochi.com.au> and <gochi.net.au> were created on July 21, 2010. They currently resolve to a site at “www.hqd.com.au/gochi-developments.htm” that provides a number of links to third-party commercial sites and Google Advertisements.

The disputed domain name <gojikids.com.au> was created on September 23, 2006. It currently resolves to “www.doctors.com.au”, a site that provides a directory of doctors in Australia.

5. Parties’ Contentions

A. Complainants

The Complainants make the following contentions:

(i) that each of the Domain Names is identical or confusingly similar at least one of the Complainants’ Marks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainants are the owner of Complainants’ Marks being the registrant and authorised user of each of the Complainants’ Marks in Australia. Each of the Domain Names is identical or confusingly similar at least one of the Complainants’ Marks.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent has no trade mark rights or licence to use the Complainants’ Marks. The Respondent has not used or made preparations to use the Domain Names in connection with a bona fide offering of goods and services, nor is the Respondent making a legitimate noncommercial or fair use of the Domain Names. The Respondent was formerly a distributor of the Complainants’ products when he registered the Domain Names however his account with the Complainants has since been terminated.

The Domain Names have been registered and are being used in bad faith. The Respondent, despite the termination of his account with the Complainants, has refused to terminate or transfer the Domain Names. Furthermore, the Respondent uses the Domain Names to link to other sites that contain advertisements for companies, such as Dubli that are in direct competition with the Complainant. Finally, the Respondent is advertising that the Domain Names are for sale at his website at “www.goji.com.au”.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainants must have trade or service mark rights and each of the Domain Names must be identical or confusingly similar to a trade or service mark owned by the Complainant.

The First Complainant is the owner of each of the Complainants’ Marks, having registrations for each of the Complainants’ Marks in Australia. The Second Complainant is the authorised user of the Complainants’ Marks in Australia.

The disputed domain name <chi3.com.au> is confusingly similar to the Complainants’ registered trade mark CHI3 ENGERGY. The Domain Name simply replicates the first (and more distinctive) part of the CHI3 ENERGY Mark. An Internet user viewing the disputed domain name <chi3.com.au> would easily be confused into thinking that it was registered by or otherwise connected with the Complainants.

The disputed domain name <gojikids.com.au> is identical to the Complainants’ registered trade mark GOJIKIDS.

The disputed domain name <himalayangojijuice.com.au> is confusingly similar to the Complainants’ registered trademark HIMALAYAN GOJI since it consists of the HIMALAYAN GOJI trade mark in its entirety with the addition of the word “juice”, which is descriptive of Complainants’ Himalayan Goji product.

The disputed domain names <tai-slim.com.au> and <taislimskinnys.com.au> are confusingly similar to the Complainants’ registered trademark for TAISLIM since each of these names contain the TAISLIM mark in its entirety, and add a dash or the word “skinnys” respectively. As the Complainants produce a product called Taislim Skinnys product, neither the addition of the dash or the word “skinnys” would prevent an Internet user from being confused into thinking that the disputed domain names <tai-slim.com.au> and <taislimskinnys.com.au> were registered by or are otherwise connected with the Complainants.

The disputed domain names <gochi.com.au> and <gochi.net.au> are identical to the Complainants’ registered trade mark GOCHI.

The disputed domain names <gochiaustralia.com.au>, <go-chi.com.au>, <gochi-juice.com.au>, <gochijuice.com.au> and <gochishop.com.au> are each confusingly similar to the Complainants’ registered trade mark for GOCHI. The disputed domain name <gochiaustralia.com.au> consists of the GOCHI trade mark with the addition of a geographical term. The disputed domain name <go-chi.com.au> consists of the GOCHI trade mark with the addition of a dash. The disputed domain names <gochi-juice.com.au>, and <gochijuice.com.au> consist of the GOCHI trade mark with the addition of the word “juice” which is descriptive of the GOCHI product. The disputed domain name <gochishop.com.au> consists of the GOCHI trade mark with the addition of the descriptive word “shop”. An Internet user viewing any of these disputed domain names would easily be confused into thinking that they were registered by or otherwise connected with the Complainants.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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 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.”

The Respondent has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the Complainants’ marks. At the time of the registration of the Domain Names the Respondent was a distributor of the Complainants’ products. The Respondent was granted a limited licence to use the Complainants’ Marks. This licence prohibited the registration of domain names incorporating the Complainants’ Marks. In any event the licence has now been revoked.

There is no evidence that the Respondent is commonly known by the Domain Names or any similar names. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Respondent is using the Domain Names to link to various third party websites that consist of a series of pay-per-click advertising links to third party sites that promote products, services and companies some of which are in competition with the Complainants. Such use is not a bona fide offering of goods or services.

The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, 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 Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on Respondent’s web site or location.

The Panel finds that the Respondent, at the time of registration of the Domain Names, knew of the existence of the Complainants’ Marks. The Respondent was a distributor of the Complainants’ products and had signed an agreement that prohibited him from registering Domain Names that were identical or similar in sound or spelling to the Complainants’ Marks. The Respondent’s conduct in registering the Domain Names when it was aware of the Complainants’ Marks and lacked rights or legitimate interests of its own amounts to registration in bad faith.

The websites that all the Domain Names other than <gojikids.com.au> resolve to consist of portal websites that contain of a series of advertisements and links to third party sites, some of which appear to offer products in competition with the Complainant. The <gojikids.com.au> re-directs to a doctors directory site, which appears to be a commercial undertaking.

Such portal websites are operated for commercial gain, as advertisers generally pay on a pay-per-click basis for Internet users redirected to their sites. Consequently, the Respondent registered and is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainants’ Marks as to the source, sponsorship, affiliation or endorsement of its website.

The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

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 Names <chi3.com.au>, <gochiaustralia.com.au>, <go-chi.com.au>, <gochi.com.au>, <gochi-juice.com.au>, <gochijuice.com.au>, <gochi.net.au>, <gochishop.com.au>, <gojikids.com.au>, <himalayangojijuice.com.au>, <tai-slim.com.au>, <taislimskinnys.com.au> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: July 30, 2012

 

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