WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nutri/System IPHC Inc. v. Soft Essentials

Case No. D2008-0447

 

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 Soft Essentials, Pleasant Grove, Utah, United States of America.

 

2. The Three Domain Names and Registrar

The disputed domain names:

<nutrassystems.com>
<nutrasystms.com> and
<nutrissystems.com>

are all registered with GoDaddy.com Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2008. On March 25, 2008, the Center transmitted by email to GoDaddy.com, Inc., a request for Registrar verification in connection with the domain names at issue. On March 25, 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 31, 2008. The Center notice together with copy of Complaint were sent to Respondent by facsimile on March 31, 2008 and delivered by courier to Respondent on April 2, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 20, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 21, 2008.

The Center appointed John E. Kidd as the sole panelist in this matter on May 2, 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

The Complaint is based on the following grounds:

Complainant, its parent corporation, and its related companies are the owners of all right, title, and interest in and to the NUTRISYSTEM trademark and the family of NUTRISYSTEM Marks (scheduled and defined in Paragraph 20 of the Complaint).

Complainant’s parent corporation is a leading provider of weight-loss programs based on quality foods and nutritionally balance meal plans. Complainant’s business features the trademark/service mark and/or trade name NUTRISYSTEM, either alone, in combination with other terms or designs, or in stylized form. NutriSystem has operated its business under the trademark and trade name NUTRISYSTEM since 1972 and provides its services throughout the United States of America (U.S.) and around the world. In the year 2007, NutriSystem generated total net revenues of USD775 million and is a publicly traded company on the NASDAQ Stock Exchange. NutriSystem spent USD180 million marketing the NutriSystem name and marks as well as its website, “www.nutrisystem.com”, in calendar year 2007. Through longstanding and continuous use, the NUTRISYSTEM trademark has acquired substantial fame and goodwill.

NutriSystem has owned the domain name <nutrisystem.com> since at least as early as 1996 and has maintained a website identified by this domain name since that time.

Complainant is the owner of numerous U.S. federal trademark registrations and pending applications for the NUTRISYSTEM mark, either alone, in combination with other terms or designs, or in stylized form. In particular, NutriSystem owns 25 U.S. federal registrations featuring the NUTRISYSTEM mark, many of which have achieved incontestable status. Complainant notably owns U.S. federal trademark registrations for NUTRISYSTEM.COM. Complainant is also the owner of many foreign trademark registrations in jurisdictions around the world.

A Google search conducted for “Nutrisystem” on March 14, 2008 produced approximately 1,950,000 hits, the majority of which appear to refer to Complainant or its products and services. According to the WHOIS database records for the <nutrissystems.com>, <nutrassystems.com> and <nutrasystms.com> domain names, Respondent registered all three domain names on November 14, 2007.

On November 28, 2007, Complainant’s counsel sent an email/letter to Respondent asserting Complainant’s rights in the NUTRISYSTEM trademark and demanding that Respondent cease all use of, and transfer, the <nutrissystems.com> and <nutrassystems.com> domain names.

Respondent has not responded to the November 28 email/letter.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain names in dispute are likely to confuse consumers and cause them to mistakenly believe that these domain names are associated with Complainant. More specifically, Complainant submits that (i) the domain names are substantially identical or confusing similar to marks which Complainant has rights; (ii) the Respondent is not using the domain names in dispute with a bona fide offering of goods or services and has no rights or legitimate interests in the domain names in dispute; and (iii) the domain names in dispute have been registered and are being used in bad faith.

Complainant contends that the domain names in dispute immediately forward the Internet consumer to one of two web pages. The domain names <nutrissystems.com> forwards the consumer to “www.gocleanse.com” and the two other domain names, <nutrassystems.com> and <nutrasystms.com>, forward the consumer to “http://ex.isagenix.com”. These web pages relate to weight loss programs and weight loss testimonials that are not related to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusing Similar

The Panel finds that the NUTRISYSTEM Marks referenced above are currently valid and are not the subject of any challenge to their validity. As noted above, many of these U.S. federal registrations have achieved incontestable status. In particular, Registration Nos. 1,251,922; 1,297,847; 1,429,657; 1,625,052; 1,731,373; 1,767,562; 1,776,989; and 1,956,649 are incontestable pursuant to the provisions of Section 15 of the Lanham Act, 15 U.S.C. 1065, and thus provide conclusive evidence of NutriSystem’s ownership of and exclusive right in the U.S. mark NUTRISYSTEM in commerce in connection with the goods and services specified in these registrations.

The Panel finds that based on the evidence presented the NUTRISYSTEM trademark has acquired substantial recognition and goodwill through longstanding and continuous use.

Previous panels have recognized that the requirements of paragraph 3(b)(viii) are met by a complainant’s ownership of trademark registrations and related domain name registrations, as well as longstanding common law rights. See Argyle Winery, Inc. v. Telmex Management Services, NAF Case No. 104480; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds that here, Complainant owns numerous trademark registrations for the virtually identical mark featured in Respondent’s domain names, namely, NUTRISYSTEM along with numerous other NUTRISYSTEM formative marks as stated above.

In the opinion of the Panel the domain names <nutrissystems.com>, <nutrassystems.com> and <nutrasystms.com> are obvious misspellings of Complainant’s trademark. UDRP panels have consistently decided that typosquatting of this nature does not serve to distinguish a domain name from a trademark. See MasterCard International, Incorporated v. Domain Services Pty, Ltd., Buy This Domain, WIPO Case No. D2007-1122 (addition of “s” between Master and Card held confusingly similar); Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095 (addition of a second “m” o the mark EDMUNDS was confusingly similar); Bits & Pieces Inc. d/b/a Bits and Pieces v. LaPorte Holdings, Inc., WIPO Case No. D2006-0244 (<bitesandpieces.com> confusingly similar to <bitsandpieces.com>); Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952; America Online, Inc. v. John Zuccarini also know as Cupcake Message, Cupcake Messenger, The Cupcake Street, Cupcake Patrol, Cupcake City and The Cupcake Incident, WIPO Case No. D2000-1495.

Therefore, the Panel finds that the Complainant succeeds on the first element under the Policy.

B. Rights or Legitimate Interest

There is no evidence to suggest that Respondent has any right or legitimate interest in the <nutrissystems.com>, <nutrassystems.com> and <nutrasystms.com> domain names or the NUTRISYSTEM Marks. In accordance with the Policy, paragraph 4(c), the Panel finds that there is no evidence that Respondent: (a) has used or engaged in any demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services; (b) is not commonly known by the domain names; and (c) is not making a legitimate noncommercial or fair use of the domain names (without intent to tarnish the trademark at issue or to divert Internet users for commercial gain).

Moreover, the Panel finds that Respondent is not using the domain names in dispute with a bona fide offering of goods and services, but rather immediately forwards the Internet consumer to web pages that contain information and alleged testimonials regarding weight loss programs that are not related to Complainant. Numerous UDRP panels have held that this type of activity is not a legitimate use of a domain name under the Policy, paragraph 4(c)(i) and (iii). See Neenah Paper, Inc. v. Wang Lee Domains Ltd., NAF Case No. 756890 (finding use of domain name <neenapaper.com> to lead to Internet website composed of links to third-party websites through which respondent received pay-per-click fees, is neither a bona fide offering of goods or services, nor a legitimate use); CareerBuilder, Inc. v. John Zuccarini, WIPO Case No. D2002-0282 (forwarding an Internet consumer to another Internet address is not a protected right or legitimate interest). Accordingly, it cannot be said that Respondent is using the domain names in connection with a bona fide offering of goods and services, because no goods or services are offered. See UBS AG v. Hok Sun Chan, NAF Case No. 755015 (finding no rights or legitimate interests because the webpage at issue contained only links to third-party websites, and did not offer any goods or services for sale).

Furthermore, the Panel concludes that it cannot be said, that Respondent is making a legitimate noncommercial or fair use of the domain names because it appears to the Panel that Respondent presumably is deriving “click-through” income whenever an Internet user types in one of the three domain names because the consumer is immediately forwarded to another web page. See Jerry Damson, Inc. v. Texas International Property Associates, NAF Case No. 916991 and David Hall Rare Coins v. Texas International Property Associates, NAF Case No. 915206 (admitting that Respondent derived advertising revenue from portal websites connecting users to a broad range of services set up under the disputed domain names); see also Neenah Paper supra; Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262.

At the time of registering the domain names, the Panel finds that the evidence clearly suggests that Respondent was at the very least on constructive notice of the Complainant’s rights in the NUTRISYSTEM trademark, based on Complainant’s numerous U.S. federal registrations and substantial fame and goodwill in the mark. However, given that the domain names in dispute incorporate Complainant’s NUTRISYSTEM mark, the Panel concludes that it is inconceivable that Respondent did not have actual notice. See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that a registration on the United States Patent and Trademark Office’s Principal Register provides constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption pursuant to 15 U.S.C 1072); see also Victoria’s Secret v. Hardin, NAF Case No. 096694 (finding that in light of the notoriety of Complainant’s famous marks, respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain names and such knowledge constituted bad faith).

The Panel finds that Respondent intentionally, and without authorization, registered the trademark of another party as domain names without any justification and, therefore, misappropriated that mark to his own use. See Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241 (finding that the fame of the YAHOO! mark negated any plausible explanation for respondent’s registration of the <yahooventures.com> domain name).

The evidence establishes that the Complainant has not licensed or otherwise permitted the Respondent to use the NUTRISYSTEM trademark.

There is no evidence to suggest that Respondent is commonly known by the name “NutriSystem” or any similar name thereto. See, e.g. Latin Telecomunicaciones S.A. v. Whoisguard, WIPO Case No. D2005-0380 (registering under name Whoisguard “suggests that the Respondent is not commonly known by the domain name”).

Consequently the Panel holds that Respondent has no rights or legitimate interests in the disputed domain names.

C. Registration and Use in Bad Faith

The Panel finds that the domain names at issue were registered and are being used in bad faith by the Respondent.

Complainant’s NUTRISYSTEM trademark is undeniably well-known and famous in the U.S. The Panel concludes that Respondent must be taken to have constructive, if not actual, knowledge of the Complainant’s famous mark at the time the domain names at issue were registered, and must be taken to have known of the famous nature of Complainant’s mark at that time. Absent some strong justification, registration of a domain name containing a famous mark is strong evidence of bad faith. For instance, in Barney’s Inc. v. BNY Bulletin Board, WIPC Case No. D2000-0059, the panelist found bad faith registration based, inter alia, on respondent’s actual or imputed knowledge of the complainant’s identical famous trademark. Also, in Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that the disputed domain name <charlesjourdan.com> was “so obviously connected with the complainant and its products that its very use by someone with no connection with the complainant suggests opportunistic bad faith”. See also Singapore Airlines Ltd. v. P&P Servicios de Communicacion S.L., WIPO Case No. D2000-0643 (findings that Respondent’s registration of singaporeairlines.com was a clear case of cybersquatting); Yahoo! Inc. supra, WIPO Case No. D2000-0241 (finding that the fame of the YAHOO! mark negated any plausible explanation for respondent’s registration of the <yahooventues.com> domain name).

As noted above, Respondent’s <nutrissytems.com>, <nutrassystems.com> and <nutrasystms.com> domain names are virtually identical to the Complainant’s NUTRISSYSTEM marks. Instead of finding Complainant, Internet consumers are immediately forwarded to two commercial third-party websites offering goods or services which are competitive with Complainant’s goods and services.

The Panel also finds that the Respondent is clearly preventing the Complainant from controlling the presentation of its NUTRISYSTEM trademarks on the Internet.

Moreover, it is likely that Respondent is unfairly gaining “click-through” revenue from its unauthorized use of the <nutrissytems.com>, <nutrassytems.com> and <nutrasystms.com> domain names to redirect Internet users to websites offering products and services competitive with Complainant when those Internet consumers enter the domain names at issue. See Movado LLC v. Titan Net, WIPO Case No. D2006-0824 (stating that the fact that the respondent was gaining revenue via click throughs on the “www.movadocompanystore.org” website constitutes evidence of bad faith registration and use).

Virtually all of the various factors considered by the panelists in the cases cited above finding against the respondents are present in this case: (i) Complainant’s NUTRISYSTEM mark is very strong and, indeed, famous in the U.S.; (ii) Respondent cannot convincingly argue with any credibility that it did not know of the Complainant’s famous NUTRISYSTEM marks at the time of registration; (iii) Respondent has not provided, and cannot provide, any legitimate purpose for the registration of the domain name at issue; and (iv) Respondent has failed to use the <nutrissystems.com>, <nutrassystems.com> and <nutrasystms.com> domain names in dispute in connection with a bona fide offering of goods and services.

For all these reasons, the Panel finds that Respondent has registered and is using the domain names in bad faith under 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 <nutrassystems.com>, <nutrasystms.com> and <nutrissystems.com> be transferred to the Complainant.


John E. Kidd
Sole Panelist

Dated: May 14, 2008