WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deep Tone, Inc. v. Don Lowther/ DCS INC.
Case No. D2007-1274
1. The Parties
The Complainant is Deep Tone, Inc., of Denver, Colorado, United States of America, represented by Pendleton, Friedberg, Wilson & Hennessey, P.C., of Denver, Colorado, United States of America.
The Respondent is Don Lowther/DCS Inc., of Broken Arrow, Oklahoma, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameS (a subsidiary of Network Solutions, LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2007, naming as the Respondent Don Lowther. On August 31, 2007, the Center transmitted by e-mail to NameS a request for registrar verification in connection with the domain name at issue. On August 31, 2007, NameS transmitted by e-mail to the Center its verification response identifying the Respondent as Don Lowther /DCS Inc. and providing the Respondent’s contact details. In response to a notification by the Center on September 10, 2007, that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 13, 2007, naming as the Respondent Don Lowther /DCS Inc. The Center verified that the amended 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 the Respondent of the Complaint, and the proceedings commenced on September 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2007.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 29, 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 states that it is the owner of a federal trademark registration, U.S. Reg. No. 2,241,545, for the mark ONCE A WEEK, for use in connection with “[P]hysical fitness instruction and distribution of course materials in the form of printed matter and videotapes in connection therewith.” This mark, referred to hereafter as the ONCE A WEEK Trademark, was first used in commerce on September 30, 1991, and was registered on April 27, 1999. A copy of the trademark registration certificate was provided by Complainant as an annex to the Complaint, and the Panel has confirmed on the U.S. Patent and Trademark’s office website that this mark is valid.
The Disputed Domain Name was registered on December 10, 2003.
5. Parties’ Contentions
A. Complainant
Complainant contends, inter alia, the following:
- The Disputed Domain Name is identical or confusingly similar to the ONCE A WEEK Trademark because the Disputed Domain Name incorporates as a whole Complainant’s ONCE A WEEK Trademark.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because Complainant has not authorized or licensed Respondent to use the ONCE A WEEK Trademark; Respondent has created a web page using the Disputed Domain Name with the text “The New Fitness Revolution is Coming Soon!” and “The Once A Week Workout Revolution Is Coming”.
- The Disputed Domain Name has been registered and is being used in bad faith because Respondent has promoted itself as an “expert in online marketing” with knowledge of research resources available in order to “stomp” the competition; Complainant had constructive notice of the ONCE A WEEK Trademark because both Complainant and Respondent are domiciled in the United States and the ONCE A WEEK Trademark is protected by a federal trademark registration in the United States; Respondent’s activities have caused confusion with Complainant; and Respondent failed to respond to two cease and desist letters sent on behalf of Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed 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 respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, it is obvious that Complainant has rights in and to the ONCE A WEEK Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ONCE A WEEK Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “onceaweekworkout”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The only difference between the relevant portion of the Disputed Domain Name (“onceaweekworkout”) and the ONCE A WEEK Trademark is the addition of the word “workout” to the Disputed Domain Name. This word (“workout”) is clearly associated with the “physical fitness” services set forth in the description of goods and services used in Complainant’s U.S. Reg. No. 2,241,545. Previous panels under the Policy have found that where the addition of a word to a domain name is “is generic of Complainant’s goods and services, its addition to Complainant’s… mark actually increases confusion.” VeriSign Inc. v. Default Profile/N/A:u7ca7r9m,WIPO Case No. D2007-0007. See also Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (finding confusing similarity where a domain name “incorporates the whole of the Complainant’s trademark… together with [a] descriptive [phrase]… associated with the Complainant and its renowned activities”).
Accordingly, the Disputed Domain Name is confusingly similar to the ONCE A WEEK Trademark and the Panel is convinced that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant alleges, inter alia, that Complainant has not authorized or licensed Respondent to use the ONCE A WEEK Trademark; Respondent has created a web page using the Disputed Domain Name with the text “The New Fitness Revolution is Coming Soon!” and “The Once A Week Workout Revolution Is Coming”.
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, (visited November 12, 2007).
Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant alleges with specificity that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy as well as “[u]nder the totality of the circumstance[s] of this case.” Complainant alleges that the creation of a website using the Disputed Domain Name advertising goods or services related to those described by Complainant’s relevant trademark, particularly by someone who has promoted its own online marketing services, “create[s] confusion as to source, association and/or approval and thus damage[s] the Complainant.” Although Complainant cites no previous decisions under the Policy on this point, the Panel is of the opinion that such conduct constitutes bad faith. See, e.g., Six Continents Hotels, Inc. v. Domain Park Limited,WIPO Case No. D2007-0313 (where a website using a domain name that is confusingly similar to Complainant’s trademark “offer[s] for sale goods or services that are in direct competition with those of the original trademark owner, there is a clear evidence of diver[s]ion of Internet traffic,” creating bad faith).
Therefore, the Panel is convinced that Complainant has proven the third element 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 name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: November 12, 2007
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