WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutri/System IPHC Inc. v. Ms. Lacy Ana De Oliveira
Case No. D2008-0204
1. The Parties
The Complainant is Nutri/System IPHC Inc., Wilmington, Delaware, United States of America, represented by High Swartz LLP, United States of America.
The Respondent is Ms. Lacy Ana De Oliveira, Paris, France.
2. The Domain Name and Registrar
The disputed domain names and are registered with NameK.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2008. On February 11, 2008, the Center transmitted by email to NameK a request for registrar verification in connection with the domain name at issue. On the same day, NameK 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”), 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 February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2008.
The Center appointed David Perkins as the sole panelist in this matter on March 20, 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 paragraph 7 of the Rules.
4. Factual Background
4.A The Complainant
4.A.1 The Complainant’s parent company is a leading provider of weight-loss programs based on quality foods and nutritionally balanced meal plans under the NUTRISYSTEM name and mark. This business was commenced under that name in 1972. Shares in the Company are publicly traded on the NASDAQ Stock Exchange. In the calendar years 2006 and 2007 the Company generated total net revenues of US$568 million and US$775 million respectively. Its expenditure on advertising and marketing under the NUTRISYSTEM name and mark in 2007 totaled US$180 million.
The NUTRISYSTEM Trademarks
4.A.2 The 25 United States trademark registration for NUTRISYSTEM upon which the Complaint is based are set out below. From this it will be seen that the earliest registration for the word mark NUTRISYSTEM simpliciter dates from 1984.
Mark
Registration No
Class(es)
Date
NUTR ISYSTEM.COM
2,492,545
42
September 25, 2001
NUTRISYSTEM.COM
2,492,546
43
September 25, 2001
NUTRISYSTEM
1,251,922
42
September 20, 1983
NUTRISYSTEM
1,297,846
29 and 30
September 25, 1984
NUTRISYSTEM
1,429,657
42
February 17, 1987
NUTRI/SYSTEM
1,625,052
29, 30 and 32
November 27, 1990
NUTRISYSTEM
1.731,373
29 and 30
November 10, 1992
NUTRI/SYSTEM
1,767,562
30 and 31
April 27, 1993
NUTRISYSTEM
1,776,989
5
January 16, 2001
NUTRISYSTEM
1,956,649
29 and 30
February 13, 1996
NUTRISYSTEM
3,251,743
5
June 12, 2007
NUTRISYSTEM Plus Design
2,732,144
44
July 1, 2003
NUTRISYSTEM NOURISH
2,945,918
5
May 3, 2005
NUTRISYSTEM NOURISH
3,163,376
32
October 24, 2006
NUTRISYSTEM NOURISH
3,159,783
32
October 17, 2006
NUTRISYSTEM NOURISH
2,954,800
5
May 24, 2005
NUTRISYSTEM NOURISH
2,065,354
29, 30 and 44
July 5, 2005
NUTRISYSTEM NOURISH
3,011,508
29, 30 and 44
November 1, 2005
NUTRI-SYSTEMS Plus Design
2,3238,706
21
March 14, 2000
NUTRI/SYSTEM WEIGHT LOSS CENTERS Plus Design
1,430,682
42
February 24, 1987
NUTRISYSTEM NEW GLYCEMIC INDEX PROGRAM Plus Design
2,936,153
29 and 30
March 29, 2005
NUTRISYSTEM NEW GLYCEMIC INDEX PROGRAM Plus Design
2,936,100
44
March 29, 2005
NUTRISYSTEM NEW GLYCEMIC INDEX PROGRAM
2,936,099
44
March 29, 2005
NUTRISYSTEM NEW GLYCEMIC INDEX PROGRAM
2,986,801
29 and 30
August 30, 2005
PERFECT PORTIONS BY NUTRISYSTEM
2,966,298
16
July 12, 2005
4.A.3 Of those 25 registrations, the Complainant says that 8 have achieved uncontestable status pursuant to 15 USC�1065 [the Lanham Act]. These include the earliest 1984 registration for the word mark NUTRISYSTEM simpliciter.
4.A.4 The Complainant also own registrations for NUTRISYSTEM and/or marks prefixed by the word NUTRISYSTEM in Australia, Canada, the United Kingdom and by virtue of two Community Trade Marks in the territories of the European Union.
The NUTRISYSTEM domain name
4.A.5 The Complainant has owned the domain name since 1996 and has maintained a website identified by that domain name since that time.
The well known status of the NUTRISYSTEM name and trademark
4.A.6 The Complaint exhibits a GOOGLE search conducted for NUTRISYSTEM on February 4, 2008 which produced approximately 3 million hits, the majority of which the Complainant says refer to it or its products or services.
4.B The Respondent
4.B.1 In the absence of a Response, the only information relating to the Respondent is that contained in the Complaint.
4.B.2 The two domain names in issue and were respectively registered on January 3 and 7, 2006.
4.B.3 Those two domain names resolve to a webpage which offers a variety of sponsored listings, including weight loss programs offered by the Complainant and by certain of its competitors, such as Herbalife and Atkins Diet Products.
4.C Communications between the Parties
4.C.1 On January 3, 2008 the Complainant’s counsel sent a “cease and desist” email to the Respondent requesting transfer to the Complainant of the two domain names in issue.
4.C.2 On January 25, 2008 the Respondent replied by email confirming that she would release the two domain names to the Complainant.
4.C.3 However, neither name has been transferred to the Complainant and, consequently, the Complainant initiated this administrative proceeding on February 8, 2008.
5. Parties’ Contentions
5.A Complainant
5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant says that but for the additional letter “c” the domain name is identical to its NUTRISYSTEM trademark. This, the Complainant says, is known as typosquatting and the Complaint cites decisions under the Policy where this practice has been held not to distinguish the domain name from the Complainant’s trademark.
5.A.1.2 The domain name comprises the NUTRISYSTEM trademark with the descriptive suffix “coupons”. The Complainant cites decisions under the Policy which establish that the mere addition of a generic word to the Complainant’s trademark does not avoid confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
5.A.2 Rights or Legitimate Interests
5.A.2.1 The Complainant’s case is that none of the circumstances set out in paragraph 4(c) of the Policy are present in this case. Accordingly, the Respondent cannot demonstrate rights to or legitimate interests in either of the two domain names in issue.
5.A.2.2 As to paragraph 4(c)(i) of the Policy, the Complainant says that the Respondent’s use of the two domain names in relation to the website is not a bona fide offering of goods or services by reason of the fact that it links to goods and services which directly compete with those provided by the Complainant under the NUTRISYSTEM mark. Again, the Complaint cites decisions under the Policy which support that proposition.
5.A.2.3 As to paragraph 4(c)(iii) of the Policy, the Complainant says that the Respondent’s use of the two domain names is certainly not “non-commercial”, since click-through revenue will be derived from Internet users following any of the links displayed on the Respondent’s website. The Complaint cites decisions under the Policy in support of that proposition.
5.A.2.4 Nor, according to those decisions, can such use of the domain names be regarded as “fair use”. In that connection, given the well-known status of the Complainant’s NUTRISYSTEM name and mark, the Complainant says it is inconceivable that when registering the two domain names in issue in January 2006 the Respondent was not aware of the Complainant and its NUTRISYSTEM mark. Accordingly, the Complainant says that the Respondent had actual or constructive notice of the NUTRISYSTEM trademark and subsequent use of that mark in the contested domain names is bad faith use and certainly not fair use. Again, the Complaint cites a decision under the Policy in support of that proposition.
5.A.2.5 As to paragraph 4(c)(ii) of the Policy, the Complainant is unaware of any evidence that the Respondent has been commonly known by either of the domain names.
5.A.2.6 Finally, the Complainant has not licensed or otherwise authorized the Respondent to use the NUTRISYSTEM trademark.
5.A.3 Registered and Used in bad Faith
5.A.3.1 As to bad faith registration, the Complainant reiterates the strength and well-known status of its NUTRISYSTEM trademark which, absent justification, is strong evidence of bad faith, sometimes categorized in decisions under the Policy as “opportunistic bad faith” and “cybersquatting”.
5.A.3.2 The Complainant also cites as evidence of bad faith registration a recent decision under the Policy where the same Respondent was found to have infringed the trademark rights of The Ford Foundation, the well-known charitable foundation established in 1936. There the domain name in issue was and the Complainant’s trademark was FORD FOUNDATION. This case is The Ford Foundation .v. Technology Services Ltd / Ms. Lacy Ana De Oliveira, WIPO Case No. D2007-1711.
5.A.3.3 The Complainant also relies on the Respondent’s agreement to transfer the two domain names in response to the “cease and desist” email of January 3, 2008 [see, paragraphs 4.C.1 and 2 above] as evidence of her acknowledgement of bad faith registration and use.
5.A.3.4 As to bad faith use, the Complainant relies on paragraphs 4(b)(ii) and (iv) of the Policy. In relation to the latter, the Complainant points to the likelihood that Internet users will mistakenly find themselves at the Respondent’s websites when looking for the Complainant and are then offered links to website offering products and services directly competitive with the Complainant. Again, the Complainant cites a decision under the Policy supporting the proposition that such use constitutes bad faith use.
5.B Respondent
As noted, no Response has been filed. Further, in correspondence with the Complainant’s counsel the Respondent has indicated a willingness to transfer the two domain names in issue to the Complainant.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has established that it has rights in the NUTRISYSTEM trademark.
6.6 The domain name is confusingly similar to that trademark. The mere addition of the descriptive suffix “coupons” does not avoid confusing similarity.
6.7 The domain name is an example of impermissible typosquatting. The addition of the letter “c” to the NUTRISYSTEM trademark does not avoid confusing similarity.
6.8 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.9 There is nothing to indicate that, had a Response been filed, the Respondent could have established any of the circumstances set out in paragraph 4(c) of the Policy evidencing rights to or legitimate interest in either of the two domain names in issue.
6.10 The Complainant’s case summarized in section 5.A.2 above is well founded and does not need to be repeated here. Accordingly, the Complaint also satisfies paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.11 Both bad faith registration and use are established by the Complainant. The basis for this set out in section 5.A.3 above and, again, does not need to be repeated here. In addition, in her reply to the Complainant’s “cease and desist” email the Respondent has, effectively, conceded to the transfer of the two domain names. Accordingly, the Panel is in all of the circumstances satisfied that the Complainant has established the twin requirements of paragraph 4(a)(iii) 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 names, and be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: April 4, 2008
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