WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dymatize Enterprises, LLC v. Carolina Rodrigues
Case No. D2015-1776
1. The Parties
The Complainant is Dymatize Enterprises, LLC of Farmers Branch, Texas, United States of America (“United States”), represented by Thompson Coburn LLP, United States.
The Respondent is Carolina Rodrigues of Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <dimatize.com> (the “Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2015. That day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 25, 2015. 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 provides dietary and nutritional supplements under the trademark DYMATIZE, which it registered in respect of those products in the United States on the Principal Register in Class 5 on February 25, 2003, No. 2,690,861, citing first use in commence in August, 1994. The Complainant has registered that mark in numerous other countries.
The Domain Name was created on June 3, 2005. It resolves to a website promoting nutritional supplements.
5. Parties’ Contentions
The Complainant says it became aware of the Domain Name in 2015. It is confusingly similar to the Complainant’s DYMATIZE mark. The Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Domain Name operates entirely as a pay-per-click (“PPC”) website that directs the Internet user to websites for the Complainant’s competitors. The Respondent is not a licensee of the Complainant and has never been affiliated with, connected to, or sponsored by the Complainant. In light of the Complainant’s long-standing use and registration of the DYMATIZE mark, the Respondent was aware of the DYMATIZE trademark when she registered the Domain Name. The only evident purpose for using a domain name confusingly similar to the DYMATIZE mark is to draw Internet users, who are interested in the Complainant’s DYMATIZE products, to the Respondent’s website. The Respondent can present no evidence to show that she is commonly known by the Domain Name and cannot claim to have a noncommercial or fair use purpose.
As to bad faith, the Respondent’s sole motive has always been to profit improperly from the goodwill and fame that the Complainant has achieved for its DYMATIZE mark, since it is inconceivable that the Respondent registered the Domain Name in good faith and without knowledge of that mark. The Respondent’s misspelling of the Complainant’s DYMATIZE mark was intended to increase her revenues and profits by directing unwary Internet users to the Complainant’s competitors.
The Respondent’s registration of the Domain Name is not an isolated incidence but instead an example of her regular practice of capitalizing on and profiting from the goodwill established through some of the world’s most famous trademarks. Examples are provided.
Further, the Respondent provided false information during registration. According to the WhoIs report, the Respondent maintains a physical address in Belize City, Belize, yet the country code provided for the telephone number corresponds to a Hong Kong, China phone number. The physical address listed does not exist.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, a complainant requesting the transfer of a domain name must prove the following three elements: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
As mentioned, the Complainant is the registered proprietor of the trademark DYMATIZE in the United States and elsewhere. The Domain Name consists of the word “dimatize” which, although not identical, looks very similar to and is pronounced the same as that mark, together with the generic Top-Level Domain “.com”, which does not affect the Domain Name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the Domain Name and the trademark alone, independent of the products or services for which the Domain Name may be used, or other marketing and use factors usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648.
In Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant’s mark and the mark being strong and immediately recognizable.
Applying these principles, the Panel finds the Domain Name to be confusingly similar to the Complainant’s DYMATISE mark, which is both strong and immediately recognizable.
The Complainant has established this element.
B. Rights or Legitimate Interests
Paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (omitting citations) notes that Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” … or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.…[W]here such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.
The Complainant’s DYMATIZE trademark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that she does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so and the Panel finds that the PPC links on the Respondent’s website are based on the trademark value of the Complainant’s DYMATIZE mark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that the Respondent has registered the Domain Name in bad faith and that the Respondent is using the Domain Name in bad faith. The Complainant invokes sub-paragraph (iv) of the Policy, which sets out illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of paragraph 4(a)(iii):
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The home page of the website to which the Domain Name resolves (Annex E to the Complaint) carries the footnote in fine print: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in WhoIs).”
As to whether third party or “automatically” generated material appearing on a website can form a basis for finding bad faith, paragraph 3.8 of the WIPO Overview 2.0 (omitting citations) notes that Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding the respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.
In the absence of any evidence of a good faith attempt by the Respondent toward preventing inclusion of advertising or links which profit from trading on the Complainant’s distinctive and well known DYMATIZE trademark, the Panel finds the footnote in fine print does not absolve the Respondent from responsibility for those links. The claim that the Sponsored Listings are automated has not been shown to be true; there is no denial by the Respondent of prior knowledge of the Complainant’s trademark; and there are other indicia of cybersquatting, namely the provision by the Respondent of incorrect contact information when registering the Domain Name and the registration by the Respondent of other domain names comprising mis-spellings of famous trademarks (Complaint Annex JJ).
The Panel accepts the Complainant’s uncontradicted assertion that the Respondent must have known of its DYMATIZE trademark when registering the Domain Name and finds that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Accordingly, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
The Complainant has established this element.
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 <dimatize.com> be transferred to the Complainant.
Alan L. Limbury
Date: December 1, 2015