WIPO Domain Name Decision D2008-0288 for nutrisystem56.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nutri/System IPHC, Inc. v. Sinclare Vabalon

Case No. D2008-0288

 

1. The Parties

The Complainant is Nutri/System IPHC, Inc., of Delaware, United States of America, represented by the law firm High Swartz LLP.

The Respondent is Sinclare Vabalon, of Gibraltar, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland.

 

2. The Disputed Domain Name and Registrar

The disputed domain name is . It is registered with Basic Fusion, Inc., (the “Registrar”).

 

3. Procedural History

According to the information provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:

The Complaint was filed with the Center on February 26, 2008.

On February 28, 2008, the Center transmitted by email to the Registrar a Request for Registrar Verification in connection with the disputed domain name. On February 29, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name, providing the registrant contact details for the disputed domain name, and confirming that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applies to the domain name.

The Center verified that the Complaint satisfied the formal requirements of 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 Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding commenced on March 3, 2008. The Center advised the Respondent that the due date for its Response was March 23, 2008.

The Respondent failed to file a Response within the prescribed time limit or at all, and the Center delivered a Notification of Respondent Default to the Respondent on March 25, 2008.

The Center appointed Bradley J. Freedman as the sole Panelist in this proceeding on March 31, 2008. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.

The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Based upon the information provided by the Center, the Panel finds that all technical requirements for this proceeding have been met.

 

4. Factual Background

The following information is derived from the Complaint, supporting documents submitted by the Complainant and the Panel’s own access to the Respondent’s website using the disputed domain name. (This practice has been adopted by numerous panels: see Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,WIPO Case No. D2000-0461 (July 17, 2000), The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (January 20, 2003) and Forbes LLC v. Web Development Group Ltd., D2006-1655 (May 9, 2007)).

The Complainant and its corporate family are a leading provider of weight-loss programs based on quality foods and nutritionally balanced meal plans. Their business features the trademark and trade name NUTRISYSTEM. They have operated their business under the NUTRISYSTEM brand since 1972, and provide services throughout the United States of America and around the world. In 2007, their total net revenues were $774 million, and they spent $180 million marketing their brand in that year.

The Complainant is the owner of various trademarks containing the word “Nutrisystem” or the combination of the words “Nutri” and “System” for use in association with various goods and services relating to food, nutrition and weigh loss, including the trademark NUTRISYSTEM registered in the United States of America (see Reg. Nos. 1,251,922; 1,297,847; 1,731,373; 1,776,989; 1,956,649 and 1,429,657) and the trademark NUTRISYSTEM.COM registered in the United States of America (see Reg. Nos. 2,492,546 and 2,492,546). The registration dates for those trademarks go as far back as September 20, 1983 (see Reg. Nos. 1,251,922).

The disputed domain name was registered on December 22, 2007.

The disputed domain name resolves to a website that provides a search service, categorized “top searches”, and “popular links” to third party websites, all relating to a number of different topics (including travel, finance, services and entertainment). Use of the search service results in the display of various “sponsored links” to third party websites. There is no reference to the Complainant’s Nutrisystem business on the website, other than the heading “Welcome to ” title of the website.

The Complainant has not licensed or otherwise permitted the Respondent to use the trademarks NUTRISYSTEM or NUTRISYSTEM.COM.

In January 2008, the Complainant’s counsel sent an email to the Respondent demanding the Respondent transfer the disputed domain name to the Complainant. The Respondent acknowledged receipt of the email, but did not agree to the Complainant’s demands.

The Respondent has not filed a Response to the Complaint or answered the Complainant’s factual assertions or evidence in any other manner.

 

5. Parties’ Contentions

Complainant

The Complainant contends as follows:

(a) The Complainant is the registered owner of the trademarks NUTRISYSTEM and NUTRISYSTEM.COM and related trademarks, and the disputed domain name is confusingly similar to the Complainant’s trademarks NUTRISYSTEM and NUTRISYSTEM.COM.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name, because the disputed domain name has no connection to the Respondent or any legitimate business offering of the Respondent or any legitimate non-commercial fair use by the Respondent.

(c) The Respondent registered the disputed domain name in bad faith for the following reasons: (i) the Respondent had constructive, if not actual, knowledge of the Complainant’s well-known NUTRISYSTEM trademark when he registered the domain name; (ii) the Respondent is preventing the Complainant from controlling its NUTRISYSTEM brand on the Internet; and (iii) the Respondent is generating revenue by using the disputed domain name to redirect Internet users to third party websites.

Respondent

The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner.

 

6. Discussion and Findings

The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants. The narrow scope of the Policy reflects its origin as a novel form of dispute resolution designed to balance a wide range of perspectives regarding the regulation of Internet conduct.

The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy paragraph 4(a): (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant 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. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy. It is not sufficient for a complainant to make assertions without providing proof.

(i) The Respondent’s Default

Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:

Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint, and the Panel will proceed to a decision.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision.

(ii) Identical or Confusingly Similar

The Complainant is the owner of the registered trademarks NUTRISYSTEM and NUTRISYSTEM.COM, and contends that the NUTRISYSTEM trademark is well-known, by virtue of its extensive and long-term adoption and use. The Complainant’s assertions in this regard are supported by documentary evidence. The Respondent has not filed a reply to the Complaint or contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the trademarks NUTRISYSTEM and NUTRISYSTEM.COM.

The trademarks NUTRISYSTEM and NUTRISYSTEM.COM were registered in the United States of America long before the Respondent registered the disputed domain name.

The Policy requires that the disputed domain name be “identical or confusingly similar” to the trademarks NUTRISYSTEM and NUTRISYSTEM.COM. Neither the Policy nor the Rules provide any guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in the decisions is that the appropriate test for confusing similarity is a literal comparison of the disputed domain name and the complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.1.

The literal comparison approach is supported by a number of considerations, which have been discussed in various decisions. See: Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492 (May 31, 2007) and Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337 (May 28, 2007). For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s mark.

The Panel also notes that the “.com” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for such a determination, since the “.com” suffix is merely descriptive of the registry services. See The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 (January 15, 2001) and Ticketmaster Corporation. v. Harold R. Brown, II, Harold R. Brown III and Ted Waitt, WIPO Case No. D2001-0716 (July 18, 2001).

The disputed domain name and the trademarks NUTRISYSTEM and NUTRISYSTEM.COM are visually and phonetically similar. The disputed domain name contains the NUTRISYSTEM trademark in its entirety. The only difference between the NUTRISYSTEM trademark and the disputed domain name is the addition of the non-descriptive numerical suffix “56”. The Complainant’s NUTRISYSTEM trademark remains the dominant part of the disputed domain name, and the addition of the numerical suffix does not distinguish the domain name from the NUTRISYSTEM trademark. In similar circumstances, other panels have come to the same conclusion. See SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall, WIPO Case No. D2006-0793 (August 22, 2006) and Atlas Copco Aktiebolag v. Andreas Clara,WIPO Case No. D2007-0039 (March 9, 2007).

In addition, in light of the foregoing and in the absence of any explanation or rationale put forward by the Respondent for its registration and use of the disputed domain name, the Panel finds that the domain name was intended by the Respondent to be confusing with the trademarks NUTRISYSTEM and NUTRISYSTEM.COM.

For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks NUTRISYSTEM and NUTRISYSTEM.COM. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.

(iii) Rights and Legitimate Interests

The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interest in the domain name – requires the Complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the decisions is that the burden of proof on a complainant regarding this element is necessarily light, because the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415 (January 23, 2001), Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252 (July 5, 2000) and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd.(ALFALAVALL-COM-DOM),WIPO Case No. D2007-1893 (February 27 2008).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant has not authorized the Respondent’s use of the NUTRISYSTEM trademark or any domain name incorporating the NUTRISYSTEM trademark, and the disputed domain name is not in any way identified with, or related to a legitimate interest of, the Respondent.

Except for the assertions in the signed and certified Complaint, the Complainant has not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “nutrisystem” and is not commonly known as “nutrisystem”. In some circumstances, the omission of such evidence would be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this dispute, including the apparent lack of legitimate connection or relationship between the disputed domain name and the Respondent’s name and business or the website for which the disputed domain name is used by the Respondent, the signed and certified Complaint together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for his registration and use of the disputed domain name, are sufficient to satisfy the Complainant’s evidentiary burden.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights or legitimate interests in a domain name:

(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;

(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.

To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing links to search results or other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s registered and widely known NUTRISYSTEM trademark; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the domain name to advertise or sell his own wares and services, but merely for a website that provides “sponsored” links to other websites. See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 (October 2, 2002), Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337 (May 28, 2007) and Chocoladefabriken Lindt & Spr�ngli AG v. Jules Mass & Yuan Yuan Chou,WIPO Case No. D2007-0446 (May 29 2007).

In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for his use of the disputed domain name.

Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of Respondent’s trademarks or trade names.

Policy paragraph 4(c)(iii) is not applicable. The Respondent is using the disputed domain name for a website that provides “sponsored” links to commercial websites.

For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

(iv) Registered and Used in Bad Faith

Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(b)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.

“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each the following circumstances are deemed evidence that a registrant has registered and used a domain name in bad faith:

(i) circumstances indicating that the registrant has registered or 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 the complainant, for valuable consideration in excess of its 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 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 its website or location or of a product or service on its website or location.

The Policy expressly states that those circumstances are non-exclusive.

Policy paragraph 4(b)(iv) applies if the Complainant establishes that the Respondent registered and is using the disputed domain name in order to confuse and thereby divert Internet traffic to his website for commercial gain. There is no direct evidence that the Respondent knew of the Complainant or its NUTRISYSTEM trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by commonsense inferences from circumstantial evidence.

The Panel finds that the Respondent knew of the NUTRISYSTEM trademark, and registered and is using the disputed domain name in order to confuse and divert Internet users to the Respondent’s website, based upon the following circumstances: (a) the Complainant’s registered NUTRISYSTEM trademark is specific to the Complainant in connection with its products and services, and is widely known as a result of extensive and long term advertising and use; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or his business or the website for which the Respondent uses the disputed domain name; (c) the Respondent does not use the domain name to sell his own wares and services, but merely to provide links to other websites; (d) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for his website; and (e) the Respondent has not denied any knowledge of the Complainant or its NUTRISYSTEM trademark.

In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for his registration and use of the disputed domain name.

The Panel also finds that the Respondent’s website results in commercial gain to the Respondent. It is well known that many websites generate substantial revenue by directing traffic to other websites and search results. Based upon the information apparent from the current “www.” website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent in that manner.

The practice of registering domain names based upon well-known trademarks for the purpose of diverting users to unrelated websites that generate advertising revenue for the registrant is bad faith registration and use. See Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 (October 2, 2002), A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517 (June 28, 2006); Forbes LLC v. Web Development Group Ltd.,WIPO Case No. D2006-1655 (May 9, 2007); Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No.WIPO Case No. D2007-0492 (May 31, 2007) and Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337 (May 28, 2007).

In the circumstances, the Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith to confuse and thereby divert Internet users to his website for commercial gain.

In the circumstances, the Panel need not consider whether Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.

 

7. Decision

The Complainant has established each of the three requirements set forth in Policy paragraph 4(a) for the disputed domain name – the disputed domain name is confusingly similar to the Complainant’s trademarks NUTRISYSTEM and NUTRISYSTEM.COM, the Respondent does not have any rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

The Panel therefore orders that the disputed domain name be transferred to the Complainant.

Bradley J. Freedman
Sole Panelist

Dated: April 14, 2008

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