WIPO Domain Name Decision D2007-0284 for zone-diet-products.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry D. Sears, Ph.D. v. Texas International Property Associates

Case No. D2007-0284

1. The Parties

Complainant is Barry D. Sears, Ph.D. of Danvers, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

Respondent is Texas International Property Associates of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February�27,�2007. On March�1,�2007, and again on March�6,�2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Name. On March�7,�2007, Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant contact details for the . 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�7,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March�27,�2007. The Response was filed with the Center on March�27,�2007.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on April�20,�2007. 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, Dr. Barry Sears, is a scientist and author who is known for the lifelong hormonal and insulin control program that he first created about 15 years ago. Complainant’s program uses food as a drug to help people control and balance their hormonal and insulin levels to achieve maximum mental productivity and as a means to improve health. In 1995, Complainant branded his writing, teaching and consulting on the benefits of an insulin balanced hormonal control diet with the term ZONE.

Complainant has authored numerous ZONE branded books including The Zone, Mastering the Zone, Zone Food Blocks, The Anti-Aging Zone, A Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The OmegaRx Zone and The Anti-Inflammatory Zone. Several of these books have appeared on The New York Times bestseller list. More than five million hard cover copies of Complainant’s ZONE branded books have been sold in the United States of America and Complainant’s works have been translated into 22 languages and are sold in at least 40 foreign countries.

Complainant has promoted his ZONE branded health and nutrition products and services by way of numerous live and taped appearances, including seminars, conferences, radio shows, and network television interviews, throughout the United States. Complainant has appeared on nationally-broadcasted television shows, including The Today Show in 1996 and again in January�2005, 20/20 in 1999, Good Morning America on June�9,�2000, June�15,�2000 and May�2002, Dateline in July�2002, CBS Evening News on May�21,�2003, The Montel Williams Show on April�1,�2004 and Live With Regis and Kelly on February�2,�2005. Each year since 1998, Complainant has conducted a week-long ZONE branded seminar aboard a cruise ship, providing a series of presentations and demonstrations on mastering his hormonal and insulin control program.

Complainant claims that he owns at least 70 trademarks and service marks comprising or containing ZONE including the following United States Trademark Registrations that issued prior to Respondent’s registration and use of the Domain Name in February�2005. U.S. Registration No. 2,689,749 will be referred to herein as “Registered ZONE Mark”.

Mark

Reg. No.

Reg. Date

Goods/Services

ZONE

2,689,749

02/25/2003

Publications, namely a series of books in the field of diet and nutrition

OMEGAZONE

2,863,212

07/13/2004

Nutritional food bars

ZONE SKIN CARE

2,623,974

09/24/2002

Skin care products, namely soaps, lotions, creams, and oils for the face, body, and hair

Complainant claims to own 30 additional United States trademark registrations for marks containing ZONE each of which has a priority date that predates Respondent’s registration and use of the Domain Name. Complainant also claims to own 46 United States trademark applications for marks containing ZONE and 10 common law trademarks containing ZONE, which Complainant asserts have been widely used since prior to Respondent’s registration and use of the Domain Name.

Complainant has advertised and promoted his ZONE marks together in connection with his diet, health and nutrition goods and services to establish a family of marks with ZONE as the family surname.

Complainant and his authorized licensees maintain a network of ZONE and ZONE DIET branded websites located at various Internet addresses, including and . Complainant and his licensees offer a wide variety of goods and services though such websites such as ZONE branded vitamins, supplements, skin care products, fish oil, and printed publications. Complainant’s websites operate 24 hours a day and permit consumers to order and learn about Complainant’s various ZONE branded products, obtain diet, health and nutrition information, subscribe to and receive on-line diet, health and nutrition counseling services and e-mail newsletters and participate in message boards and chat rooms. Complainant also uses his websites to communicate special events and promotions to his customers and provide customer service information.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions including the following:

His use of the mark ZONE is fanciful. Since 1998, he has used the trademarks ZONE, ZONE DIET, ZONE CRUISE and ZONE CONSULTANTS in connection with education and counseling services in the fields of diet, health and nutrition. He is well-known throughout the United States of America and has built up valuable goodwill in the trademarks ZONE and ZONE DIET and his composite marks incorporating ZONE for health and nutrition products and services designed to help people control hormone levels and insulin levels. He provides a wide array of health and nutrition products and services that are compliant with his hormonal control/insulin balanced program under such marks as ZONE SKIN CARE, ZONERX, ZONE LABS and ZONE SHAKES.

The Domain Name is confusingly similar to Complainant’s registered ZONE marks, ZONE applications and ZONE common law marks. Complainant obtained a United States trademark registration for the mark ZONE in February 2003 and, since that time, has obtained 32 additional United States trademark registrations for marks incorporating ZONE as the dominant portion thereof for a wide variety of branded health and nutrition products and services, including meal replacement bars and drinks, edible oils, vitamins and supplements, print and electronic publications, educational and counseling services, and skin care products. The registered ZONE marks all have priority dates that predate Respondent’s registration and use of the Domain Name.

Respondent registered the Domain Name on February�10,�2005. He is using the Domain Name to point to a website on the Internet that contains hyperlinks to several third party websites offering competing diet, health and nutrition products and services, such as , a website that sells JENNY CRAIG DIET branded products and services, , a website that sells NUTRI-SYSTEM DIET branded products and services, , a website that sells weight loss supplements, and a website that sells SONOMA DIET branded products and services. Respondent’s website also triggers various pop-up advertisements for third party websites and products. Presumably, Respondent receives a pay per click or pay per impression fee or commission every time Respondent re-directs a consumer searching for Complainant to one of these third party websites. Respondent has no rights or legitimate interest with respect to Complainant’s registered ZONE mark. Complainant has not authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s marks ZONE or ZONE DIET, or any confusingly similar variations thereof. Upon information and belief, the Domain Name does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent. Respondent did not, prior to notice of this dispute, use the Domain Name in connection with a bona fide offering of goods or services, nor has he made a legitimate non-commercial or fair use of the Domain Name.

Respondent registered and is using the Domain Name in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website where Respondent provides links to websites that advertises and sell competing diet products and services by creating a likelihood of confusion with Complainant’s registered ZONE Mark.

B. Respondent

Respondent’s contentions include the following:

Respondent registered the Domain Name on February�10,�2005. Complainant has no federal registrations reflecting use of “zone diet” before Respondent registered the Domain Name. Complainant admits that the word “product” is different from and not a component of its marks. At the time of registering the Domain Name, Respondent had no actual or constructive knowledge of Complainant’s use of the words “Zone Diet” in commerce and had no actual knowledge of the company until the UDRP complaint was filed.

The Domain Name is a combination of three generic and/or descriptive nouns. When combined, the words mean a selection of food and drink distinguished from the foods and drinks of others by distinctive features. The “zone diet” has acquired a generic meaning and is used by numerous persons to market products and services. Generic words in combination are themselves a generic designation. Descriptive and generic terms provide no rights under the Policy under any circumstances even if they are registered.

Many people and companies use the word “zone diet” to discuss and debate the virtues of a diet plan based on “zones” of consumption for carbohydrates, proteins and fats. Given this wide spread usage, Complainant does not have exclusive rights to the Domain Name. ZONE is not a “fanciful” mark. Complainant does not even use the mark in the “arbitrary” sense. In his writing, Complainant uses ZONE in its generic colloquial sense. Complainant has presented no evidence of consumer surveys, focus group studies, or even substantial anecdotal evidence, showing that consumers have come to associate “zone diet products” exclusively with Complainant.

The links in question are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. Generally, the listings will be for those who provide “zone diet products” or “diet products” as used in a descriptive and or generic sense. There is no intent to target Complainant. Complainant does not offer such services, but instead provides electronic and paper media. Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website.

Respondent may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered. The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest. Respondent registered and began using the Domain Name for a bona fide offering of goods and services long before receiving notice of the present dispute, and prior to the date on which Complainant secured a federal registration for its alleged mark.

Because Complainant’s alleged mark is generic and/or merely descriptive, it must follow that Respondent did not register, and is not using, the disputed Domain Name in bad faith. In regards to “zone diet,” Complainant’s own trademark applications reveal that it has not used “zone diet” in commerce prior to Respondent’s registration of the Domain Name. Respondent registered the Domain Name on February�20,�2005. On November�15,�2004, Complainant filed an “intent to use” application for “Dr. Sears Zone Approved ZoneDiet.Com”; however, its own affidavit of first use in commerce establishes a first date of use as November�16,�2005, nine months after Respondent’s registration of the Domain Name. In 1996, Complainant filed an “intent to use application” for “Zone Diet” and in 2002, he filed an intent to use application for “Dr.�Sears Zone Diet”. In both cases, Complaint did not provide evidence of actual use in commerce before Respondent’s registration of the Domain Name.

The Complaint is an example of reverse domain name hijacking wherein a trademark holder asserts claims to a much broader generic and/or descriptive term.

6. Discussion and Findings

Paragraph�4(a) of the Policy requires that Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

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

(ii) Respondent has no rights or legitimate interests with respect to 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 concludes that the Domain Name is confusingly similar to Complainant’s Registered ZONE Mark. Complainant has established rights in its Registered ZONE Mark, before Respondent registered the Domain Name, through both registration and extensive use. At a minimum, the Registered ZONE Mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March�24,�2000). The Panel concludes that Respondent has failed to overcome that presumption notwithstanding the documents made of record and assertions relating thereto.

The Panel further finds that the Domain Name and Complainant’s Registered ZONE Mark are confusingly similar. The Domain Name encompasses the entire registered ZONE mark. It is well settled that a domain name is confusingly similar for purposes of the first factor of the Policy if it incorporates complainant’s mark in its entirety or incorporates the dominant portion of complainant’s trademarks. Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September�19,�2000).

The main difference between Complainant’s Registered ZONE Mark and Respondent’s domain name is the addition of the descriptive phrase “diet-products”. The combination of diet-products with the Registered ZONE Mark does not lessen the extent to which the Domain Name is confusingly similar to Complainant’s ZONE mark. See, e.g., COSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082 (February�18,�2005); Barry D. Sears Ph.D. v. Alyssa Lindner, WIPO Case No. D2006-0493 (July�15,�2006). Where, as here, Respondent has adopted the phrase “diet products” which coincides with the exact kinds of products Complainant provides, confusion is inevitable. See Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 (June�6,�2001) (finding and confusingly similar to HARRODS trademark for department store services); see also Ansell Healthcare Products, Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110 (April�2,�2001) (finding confusingly similar to ANSELL for condoms); Arthur Guinness Son & Co. v. Steel Vertigogo, WIPO Case No. D2001-0020 (March�22,�2001) (finding confusingly similar to GUINNESS for alcoholic beverages including beer).

Complainant has asserted common law rights to ZONE DIET and Respondent has rigorously contested that Complainant has established such rights or even could establish such rights for the term. Respondent alleges, among other things, that the term ZONE DIET is generic and has adduced certain documents purporting to establish that. The Panel need not decide the issues of whether Complainant has established rights in ZONE DIET or whether the term is generic insofar as Complainant’s rights in the Registered ZONE Mark support Complainant’s case.

The Panel therefore holds that Complainant has established paragraph 4(a)(i) of the Policy above.

B. Rights or Legitimate Interests

Respondent does not contend that Complainant has authorized, licensed or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s Registered ZONE Mark, or any confusingly similar variations thereof. Contrary to Respondent’s assertion, Complainant has made a prima facie showing under paragraph�4(a)(ii) of the Policy requiring Respondent to come forward with evidence under paragraph�4(c) of the Policy demonstrating rights to or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June�26,�2000). Respondent has failed to rebut the presumption.

Pursuant to paragraph�4(c) of the Policy, Respondent may establish rights to or legitimate interests in the Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name was in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a 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.

Respondent has not presented any evidence that it has been commonly known by the Domain Name.

Respondent claims rights or legitimate interests in the Domain Name based on his belief that “zone diet” is generic and that his use or demonstrable preparations to use it in connection with a bona fide offering of goods or services, prior to any notice of the dispute. With regard to the former, Respondent is mistaken for the reasons set forth above in 6.A. With regard to the latter argument, the Panel concludes that Respondent’s use of a domain name that is confusingly similar to Complainant’s Registered ZONE Mark for a website that hosts links to Complainant’s competitors is not a bona fide use of the Domain Name.

Furthermore, on the record presented here, Respondent has failed to show that it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain or to misleadingly divert consumers. In using the Domain Name in conjunction with his website, Respondent is: (1) diverting Internet traffic intended for Complainant to Respondent’s website where Respondent provides links to numerous third party websites that advertise and sell products and services that directly compete with Complainant’s products and services; and (2) generating pop-up advertisements for unrelated third party websites and products. Respondent does not deny its activities or that it profits from them. Indeed, Respondent credits his alleged legitimate interest to use the Domain Name to the “fact that advertising revenues may be generated by [his] activity.”

Moreover, Respondent tries to absolve himself from liability by blaming others: (1) “the links in question [as] provided pursuant to Google’s terms”; and (2) the links in question “are triggered by search requests entered by computer users”. Respondent also claims that the links “will be for those who provide `zone diet products’ or ‘diet products’ as used in a descriptive and or generic sense.” Respondent misses the point. The use of a confusingly similar domain name to divert Internet users to competing websites is not a use in connection with the bona fide offering of goods or services nor a legitimate non-commercial or fair use. See, e.g., NA v. LaPorte Holdings, Inc., NAF Claim No. 362110 (December�28,�2004) (respondent’s use of to link consumers to the commercial websites of complainant’s competitors was not a bona fide offering of goods or services nor a legitimate non-commercial or fair use); Disney Enterprises, Inc. v. Dot Stop, NAF Claim No. 145227 (March�17,�2003) (finding that respondent’s website which contained a series of links to unrelated sites was not a bona fide offering of goods or services nor a legitimate non-commercial or fair use).

Furthermore, other panels have held that using a confusingly similar domain name to trigger pop-up advertisements for third party websites and products is not a bona fide offering of goods or services nor a legitimate non-commercial or fair use. MBNA America Bank, N.A. v. Vertical Axis, Inc., NAF Claim No. 133632 (January�6,�2003) (finding websites containing pop-up advertisements is not a bona fide offering of goods and services or a legitimate noncommercial or fair use).

The Panel therefore holds that Complainant has established paragraph 4(a)(ii) of the Policy above.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith.

(i) circumstances indicating that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that Respondent registered the domain name 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;

(iii) circumstances indicating that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.

The undisputed facts include that:

- Complainant has used the Registered ZONE Mark for over 10 years in conjunction with his popular books related to the field of diet and nutrition;

- Complainant’s ZONE-branded diet program, products, and services have also been the subject of substantial media and advertising exposure, particularly in the United States of America where both Complainant and Respondent are located;

- Complainant began use of the ZONE mark in 1995 and obtained a registration on the Principal Register of the United States Patent and Trademark Office for the ZONE mark in February�2003 (almost 2 years before Respondent registered the Domain Name); and

- The website with which the Domain Name is used has links to the websites of competitors who promote and sell products and services in competition with those products and services of Complainant.

Based on this uncontroverted evidence, it defies credulity that Respondent would not have been aware, as he claims, of Complainant’s ZONE mark when he adopted and registered the Domain Name, even if Respondent may not have known of Complainant’s particular registration for the mark. See, e.g., Digi Int’l v. Digi Sys, NAF Claim No. 124506 (October�24,�2002) (holding that there is a legal presumption of bad faith when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively). Furthermore, Respondent’s argument that he did not register or use the Domain Name in bad faith because he believed and continues to believe that it is generic does not permit him to prevail for the reasons set forth above in conjunction with the first element of paragraph 4(a) of the Policy.

Respondent further claims that it did not register or use the Domain Name in bad faith because there are millions of URL addresses and thousands of registered trademarks containing “zone”. This rationale simply ignores Complainant’s rights in its Registered ZONE Mark and the manner in which Respondent chose to use the Domain Name.

Respondent’s bad faith is further evidenced by the fact that he is apparently commercially benefiting from the situation he has contrived. Once on his website, consumers looking for Complainant and ZONE branded products and services are faced with hyperlinks to competitor’s products and services, and pop-up advertisements for various third party websites and products. Such activity has been found by many other UDRP panels to constitute bad faith registration and use. NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April�4,�2001) (use of a domain name to re-direct Internet users to websites of competing organizations constituted bad faith registration and use); Tarjeta Naranja SA v. Mr. D and Alejandro San Jorge, WIPO Case No. D2001-0295 (April�10,�2001) (linking Internet surfers looking in their browsers for the well-known mark of complainant to a competitor’s website is a typical bad faith use under the Policy); Daimler Chrysler Corp., et. al. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0143 (April�1,�2005) (finding bad faith where respondent diverted Internet users to a website which provided links to websites in competition with complainant).

The Panel therefore holds that Complainant has established paragraph 4(a)(iii) of the Policy above.

D. Reverse Domain Name Hijacking

Respondent predicates his assertion of reverse name hijacking on Complainant’s assertion of rights to ZONE DIET, which Respondent characterizes as generic, and Complainant’s use of the Policy in bad faith. For all of the reasons set forth above, Respondent has not carried its burden of showing Complainant is liable for reverse name hijacking.

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 Name be transferred to Complainant.

Harrie R. Samaras
Sole Panelist

Dated: May�4,�2007

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