WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutri/system IPHC, Inc. v. Romero Enterprises, Inc., Mr. Raymond Romero, Ms. Sharon Romero

Case No. D2012-0644

1. The Parties

Complainant is Nutri/system IPHC, Inc. of Wilmington, Delaware, United States of America, represented by Becker Meisel, LLC, United States of America.

Respondent is Romero Enterprises, Inc., Mr. Raymond Romero and Ms. Sharon Romero of Lancaster, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nutrisystem.org> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2012. On March 28, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On March 28, 2012, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.

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 Respondent of the Complaint, and the proceedings commenced on April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 25, 2012.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 7, 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

Complainant, which is a company operating in the nutrition and food industry, owns the trademark NUTRISYSTEM and has numerous registrations in the United States of America (“U.S.”) dating from the early 1980s.

Complainant maintains a website at <nutrisystem.com>, with this domain name having been registered in February 1996.

The Domain Name <nutrisystem.org> was registered on March 23, 1999.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

Complainant asserts that Respondent violated paragraph 4(a)(i) of the Policy by registering the Domain Name, which is confusingly similar to trademarks in which Complainant has rights. Complainant owns and uses the trademark NUTRISYSTEM and has numerous corresponding registrations in the U.S. Complainant’s registrations are prima facie evidence of the validity of Complainant’s trademarks and its exclusive rights to use the marks in relation to the provision of weight loss services and pre-packaged foods, supplements and beverages.

Complainant maintains a website advertising its products and services at the domain name <nutrisystem.com>. Because of the continuous and exclusive use of its trademarks and the advertising expenditures promoting the same, the relevant public in the U.S. and worldwide have come to associate the weight loss services and goods offered under the marks with Complainant. Accordingly, Respondent’s registration of the Domain Name for use in relation to weight loss services and the distribution of pre-packaged foods, supplements and beverages are very likely to confuse relevant consumers into thinking that the Domain Name emanates from, or is affiliated or sponsored by Complainant.

Rights and Legitimate Interests

Complainant contends that Respondent violated paragraph 4(a)(ii) of the Policy because it has no rights or legitimate interests in respect of the Domain Name. There is no evidence, prior to any notice being sent to Respondent pertaining to the Complainant’s objection to the registration of the Domain Name, demonstrating Respondent’s 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. Respondent has not been commonly known by the Domain Name. Respondent is not making any legitimate noncommercial or fair use of the Domain Name. Respondent’s use of the Domain Name is for commercial gain for the sole purpose of misleading and diverting consumers or to tarnish the marks of Complainant.

Bad faith registration and use

Complainant argues that Respondent violated paragraph 4(a)(iii) of the Policy because it registered the Domain Name in bad faith with knowledge of Complainant’s prior rights to this Domain Name. The Domain Name was registered primarily for the purpose of disrupting the business of Complainant. By registering the Domain Name, Respondent has demonstrated its intention to attract, for commercial gain, Internet users to a website that Respondent will develop or another on-line location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of a website of Respondent or location of a product or service on a website of Respondent or another location. Alternatively, Complainant asserts that Respondent violated paragraph 4(a)(iii) of the Policy because it registered the Domain Name primarily for selling, renting, or otherwise transferring the Domain Name registration to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its NUTRISYSTEM trademark and that the Domain Name, which incorporates Complainant’s trademark in its entirety, is identical to the mark except for the top-level domain extension (“.org”).

Because the Domain Name is identical or confusingly similar to the NUTRISYSTEM trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. The Panel observes that Respondent is not affiliated with or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name, or authorized by Complainant to use Complainant’s trademarks. Moreover, the evidence shows that the Domain Name is linked to a pay-per-click webpage containing a number of links to commercial businesses providing diet and weight loss products and services that are in competition with Complainant’s offerings. While a domain parking service is not per se illegitimate, in this case this use of the Domain Name, which is identical to Complainant’s NUTRISYSTEM trademark, does not provide a legitimate interest in the Domain Name under the Policy.

Further, Respondent has not made any effort in the proceedings to demonstrate rights or legitimate interests. In the absence of any other plausible explanation for why Respondent registered the Domain Name well after Complainant’s trademark had been widely used in the U.S., the Panel finds no evidence of rights or legitimate interests on the part of Respondent.

For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds that Complainant has established bad faith registration and use under paragraph 4(a)(iii) of the Policy, based on several factors:

- the incorporation of Complaint’s NUTRISYSTEM trademark in its entirety into the Domain Name, without any plausible explanation for doing so, creating an identical match (except for the “.org” top-level domain extension). Respondent is located in the U.S. where Complainant’s NUTRISYSTEM mark has been in widespread use. On the balance, the Panel is inclined to accept that Respondent has chosen to register and use the Domain Name being aware of Complainant's brand, and in attempt to benefit from it.

- the inherent likelihood that the Domain Name will draw visitors to the linked website containing pay-per-click advertising links; and

- the fact that the Domain Name appears to be used to generate click-through revenue through the provision of third-party commercial links, which relate to competing products or services. By registering the Domain Name, Respondent has demonstrated its intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of a website of Respondent or location of a product or service on a website of Respondent or another location.

All of this, in the view of the Panel, is evidence of Respondent’s bad faith registration and use of the Domain Name under paragraph 4(a)(iii) of the Policy for which, due to the lack of any Response from Respondent, there is no attempt at any rebuttal.

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 Domain Name <nutrisystem.org> be transferred to the Complainant.

Christopher S. Gibson
Sole Panelist
Dated: June 7, 2012