The Complainant is Weight Watchers International Inc., New York, New York, United States of America, represented by Terri Frank, United States of America.
The Respondent is Kevin Anthony, Missouri, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and (herein The “Domain Names”) are registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2011. On November 23, 2011, the Center transmitted by email a request for registrar verification in connection with the Domain Names. On November 24, 2011, FastDomain Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for response was December 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 16, 2012. 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.
An email was subsequently received on January 17, 2012 from the Respondent. 4. Factual Background
The Complainant owns the marks WEIGHT WATCHERS, POINTSPLUS, and POINTS (the “Marks”), registered on the Principal Register of the United States Patent and Trademark Office.
The Complainant has also registered the WEIGHTWATCHERS mark in over 100 countries around the world.
The Complainant is a leading global branded consumer company and the leading global provider of weight management services. With nearly five decades of weight management experience, expertise, and know-how, it has established WEIGHT WATCHERS as one of the most recognized and trusted brand names among weight-conscious consumers.
The Complainant has spent substantial time, efforts and millions of dollars advertising and promoting its products and services under the Marks for nearly fifty years. 5. Parties’ Contentions A. Complainant
The Domain Names are each confusingly similar to the Marks because each of the Domain Names contains at least one of the Marks correctly spelled and in its entirety.
The Domain Names in dispute are each confusingly similar to the Marks as the Domain Names consist only of the Marks and the generic word “recipes.” The addition of a generic word to a mark is alone insufficient to avoid confusing similarity. See Hoffman-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (“The addition of a generic word to a trademark will not generally avoid a determination that the contested domain name is confusingly similar.”) Nintendo of America, Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (“the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity.”).
The added term “recipes” to the Marks in each of the Domain Names does not distinguish the Domain Names from the Marks as the term is not distinctive, it refers to a central part of the Complainant’s business, and it does nothing to help an Internet user distinguish between the Complainant’s and the Respondent’s Internet offerings.
In cases of recognizable and famous marks, the use of the marks alone is enough to support a finding of confusing similarity. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (ruling that in cases of highly recognizable and famous marks, a complainant may only need to show that the domain names wholly incorporate a registered mark to prove confusing similarity.)
The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent does not and cannot trade under the WEIGHT WATCHERS, POINTSPLUS, or POINTS marks or any confusingly similar variant thereof.
To the best of the Complainant’s knowledge, the Respondent has never been commonly known by any of the Domain Names or ever used the Domain Names in conjunction with a bona fide offering of goods or services.
The Complainant has no relationship with the Respondent, contractual or otherwise, that would in any way entitle Respondent to use the Marks.
The Respondent has inserted meta tags into his sites, many of which include the Marks.
Because of the significant advertising, and the links to other advertising-supported pages registered by the Respondent, it is clear that the Respondent is not making a legitimate noncommercial or fair-use of the Marks.
The Respondent has registered and is using the Domain Names in bad faith. The Respondent is intentionally trading on the Complainant’s goodwill to divert Internet users to his websites for financial gain.
In view of the fame of the Marks, and the Complainant’s registered rights in the Marks, and the dissemination of the Marks around the world, it is beyond doubt that the Respondent registered the Domain Names with knowledge of the Complainant’s rights in the Marks.
The fame and reputation of a complainant’s mark is persuasive in determining a respondent’s bad faith intent. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent’s use of the Domain Names to host sites with content that is substantially similar to a significant portion of the Complainant’s business is evidence of bad faith, See Daily Racing Form LLC v. na and Virtual Dates, Inc.,WIPO Case No. D2001-1032 (ruling that respondent’s site focusing on virtual horseracing was evidence of bad faith because it was related to Complainant’s business of providing information and news regarding thoroughbred horseracing.)
While the Respondent registered on December 6, 2010, before the POINTSPLUS mark was officially registered, it was after Complainant announced the PointsPlus program in November 2010, and nine months after the Complainant filed the applications for POINTSPLUS with the United States Patent and Trademark Office. Because the Respondent registered the Domain Name with the intent to benefit from the newly-announced PointsPlus program, the registration was in bad-faith despite it preceding the registration of the POINTSPLUS mark. See General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845 (finding that registering a domain name to profit from an anticipated trademark is evidence of bad faith even if the trademark has not yet been registered.)
The Respondent also offered to negotiate for the sale of the Domain Names to the Complainant, indicating bad-faith intent to profit from the Marks. The Complainant contacted Respondent via first-class mail and email on September 15, 2011 and October 20, 2011 requesting that Respondent cease all use of the Marks, and transfer the domain to the Complainant. On October 28, 2011, the Respondent responded via email and indicated that he had made the “necessary changes” to his site. The Respondent further stated that “I do understand your interest for wanting this domain and would be willing to negotiate a fair price to you.” See CBS Broadcasting v. Gadoor Saidi,WIPO Case No. D2000-0243 (“an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively established that, the domain name has been registered and is being used in bad faith.”) B. Respondent
The Respondent did not reply to the Complainant’s contentions, but did send one email (on January 17, 2012) subsequently expressing some confusion. 6. Discussion and Findings Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant registered the Marks in various jurisdictions around the world. The Domain Names incorporate the Marks and in the Panel’s view create sufficient similarity to be confusingly similar to the Marks. The addition of the suffix “recipes” to the Marks is insufficient to avoid any confusion.
Therefore, the Panel finds that the Domain Names are confusingly similar to the Marks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Names, in connection with the burden of proof, several decisions of UDRP panels have held that “[o]nce a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production in this factor shifts to the Respondents to rebut the showing. ” See LEGO juris A/S v. Chung Hong Phil,WIPO Case No. D2009-1288; Ets Leobert, SARL v.Jeonggon Seo,WIPO Case No. D2009-0004; University City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use the Marks; the Panel further notes that there is nothing in the record to suggest that the Respondent is, or has ever been, commonly known by the Domain Names. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent failed to invoke any circumstances that could have demonstrated any right or legitimate interest in the Domain Names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no right or legitimate interest in the Domain Names pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806 and Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, he/she represents and warrants to the registrar that, to his/her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Marks are widely known, it is unlikely that the Respondent, at the time of registration of the Domain Names or thereafter, was not aware of the Marks. Given the reputation of the Marks, the Panel is of the opinion that the Respondent was aware or should have been aware of the Marks and claims of rights thereto at the time of the registration of the Domain Names. Further, any trademark check of the records of the patent and trademark offices of various jurisdictions would have made the Complainant’s registrations known to the Respondent.
The Complainant cites paragraph 4(b)(iv) of the Policy, and notes that the Respondent, in using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Marks. The Respondent is, in using the Domain Names, attracting Internet users to the Respondent’s websites. The redirection of a domain name reproducing a prior trademark is further evidence of bad faith. See Big Dog Holding, Inc. d/b/a/ Big Dog Sportswear v. Frank Day, Red River Farms, Inc., NAF Claim No. FA 93554.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the Domain Names in bad faith. 7. Decision
For 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.
Thomas P. Pinansky
Sole Panelist
Dated: February 7, 2012
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