The Complainant is Dr. Mehmet C. Oz, Oz Property Holdings, LLC, Hearst Communications, Inc. of New York, New York, United States of America, represented by Donovan & Yee, LLP, United States of America.
The Respondent is Daphne Mand, Marrakech, Elhaouz, Morocco / Domains By Proxy, LLC, Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 13, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 13, 2014.
The Center verified that the amended 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 May 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2014. Apart from a brief email of May 14, 2014, the Respondent did not submit any formal response.
The Center appointed James Bridgeman as the sole panelist in this matter on June 27, 2014. 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
The first named Complainant Dr. Mehmet C. Oz ("Dr. Oz") is a surgeon, author and television personality. The second named Complainant Oz Property Holdings, LLC, ("Oz Holdings") is a company founded and managed by Dr. Oz, and which holds the following United States trademark registrations for the DR. OZ mark:
DR. OZ, registration number 3,852,288, filed on August 5, 2009, claiming first use in commerce on September 25, 2006 registered September 28, 2010 in international class 41 for "Entertainment services in the nature of radio programs in the fields of diet, exercise, fitness, health and wellness, medicine and medical practices, via satellite and the internet; providing entertainment information via the internet relating to the foregoing radio programs in the fields of diet, exercise, fitness, health and wellness, medicine and medical practices."
DR. OZ, registration number 3,798,496, filed on May 13, 2009, claiming first use in commerce on May 7, 2009 registered June 8, 2010 in international class 41 for "Entertainment services in the nature of providing newsletters in the fields of diet, exercise, fitness, health and wellness, medicine and medical practices via e-mail; providing on-line journals, namely, blogs featuring information in the fields of diet, exercise, fitness, health and wellness, medicine and medical practices; providing information relating to these newsletters and blogs via a global computer network."
DR. OZ, registration number4,099,390, filed on May 6, 2009, claiming first use in commerce on December 6, 2011, registered February 14, 2012 in international class 5 for "Multivitamin preparations; Nutraceuticals for use as a dietary supplement; Nutritional supplements; Vitamins and vitamin preparations".
The third named Complainant, Hearst Communications, Inc., ("Hearst") is a mass media company.
On February 4, 2014 the Complainants, in partnership launched a magazine under the title DR. OZ THE GOOD LIFE.
The disputed domain name was registered one month later on March 4, 2014. The publication of the Complainants' magazine had been preceded by substantial pre-launch publicity.
In the absence of a Response or any other communication from the Respondent the only information available to this Panel about the Respondent is that found in the Registrar's WhoIs, the Registrar's response to the Center's request for verification and the Complaint. 5. Parties' Contentions A. Complainant
The first and second named Complainants rely on their rights in the above-listed registered trademarks and their rights at common law rights in the DR. OZ mark acquired through substantial use in commerce. The Complainants have furnished this Panel with Certificates of Registration issued by the United States Patent and Trademark Office in respect of each of the trademark registrations.
All three Complainants also rely on their common law rights in the mark DR. OZ THE GOOD LIFE which has been used as the title for a magazine published by the Complainants in partnership since February 4, 2014; a month prior to the date when the disputed domain name was registered.
The Complainants submit that following a successful medical career, the Complainant Dr. Oz quickly rose to fame in the early 2000's as a frequent guest on several of the most well-known television programs in the United States of America, including The Oprah Winfrey Show, Good Morning America, The Today Show, Larry King Live and The View. In 2009, Dr. Oz's fame and popularity reached new heights when he was selected to be the host of his own talk show, The Dr. Oz Show, which garnered Dr. Oz an Emmy Award as "Best Talk Show Host." The Dr. Oz Show is still widely broadcast and is currently in its fifth season. In addition to his television show, Dr. Oz hosts a daily talk show on Sirius XM radio, and is the author of five New York Times Best Sellers as well as a regular columnist for such major publications as Esquire and O magazines. Among his many accolades, Dr. Oz has been named one of TIME Magazine's 100 Most Influential People and one of Esquire Magazine's 75 most influential people of the 21st Century.
As a result of years of this continuous and widely publicized use, DR. OZ has become a famous and highly valuable trademark for Complainant Dr. Oz's various services, publications and other works, and is widely recognized as such by the relevant consuming public. Numerous UDRP decisions have recognized trademark rights in a celebrity or famous personality's personal name. See, e.g., Jay Leno v. Garrison Hintz,WIPO Case No. D2009-0569; Tom Cruise v. Alberta Hot Rods,WIPO Case No. D2006-0560; Celine Dion v. Jeff Burgar,WIPO Case No. D2000-1838.
The Complainants submit that Hearst is one of the largest and most diversified media conglomerates in the world, with major interests in the entertainment, television, and publishing industries including 50 newspapers and 300 magazines worldwide, with such well-known titles as Cosmopolitan, Esquire, Car and Driver, ELLE, Marie Claire, and Harper's Bazaar.
In late 2013, the Complainants announced that they had entered into a partnership to create a new magazine entitled DR. OZ THE GOOD LIFE. The announcement was widely publicized and reported by numerous high-profile news outlets prior to the magazine's launch. AdWeek declared that "The Good Life could well be the biggest consumer magazine launch this year," while the New York Post touted that "it looks like it will be one of the biggest launches [for Hearst] since . . . 2002." A number of "pre-launch" news articles have been submitted as an annex to the Complaint.
The Complainants launched the DR. OZ THE GOOD LIFE magazine on February 4, 2014, to equally large amounts of publicity and press coverage. The first issue was given an initial circulation of 800,000 copies nationwide; however, the issue quickly sold out, prompting Complainant Hearst to print tens of thousands of more copies. Advertisers in the first issue included such famous brands as Wal-Mart, Garnier, Mazda, L'Oréal Paris, Campbell's, Dove, Nabisco, Oscar Mayer, Neutrogena, Rado Switzerland and more.
To coincide with the launch of the DR. OZ THE GOOD LIFE magazine, the Complainants launched a corresponding website at "", which provides electronic versions of much of the magazine's content also under the DR. OZ THE GOOD LIFE mark.
Since it was launched in December 2013, the Complainants' "Dr. Oz The Good Life" website has averaged over 235,000 views and over 135,000 unique visitors a month.
As a result of the Complainants' highly publicized use of DR. OZ THE GOOD LIFE in connection with print and online publications, the relevant consuming public has come to recognize DR. OZ THE GOOD LIFE as a mark uniquely associated with the Complainants.
Numerous UDRP decisions have recognized common law trademark rights under similar circumstances. See, e.g., Time Warner, Inc. and EMI Group Plc v. CPIC Net,WIPO Case No. D2000-0433 (finding common law rights in combinations of the marks WARNER and EMI in part due to high publicity surrounding merger of the two Complainants); see also Viacom Int'l, Inc. v. Rattan Singh Mahon,WIPO Case No. D2000-1440 (recognizing common law rights in MTV BASE based on the Complainants' provision of television programming under the mark).
The Complainants submit that the disputed domain name is virtually identical to the Complainants' common-law trademark DR. OZ THE GOOD LIFE – the only difference being a missing period after "dr". Additionally, the Respondent's domain name is confusingly similar to the famous registered trademark DR. OZ, since the entire mark as registered is used as the first portion of disputed domain name (notwithstanding the missing period after 'dr').
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name alleging that the DR. OZ mark, which the Respondent has wrongfully incorporated into the disputed domain name , is uniquely associated with the Complainants and their various services, productions, publications and other works. The DR. OZ mark is not legitimately used by any other individual or entity in the United States or internationally without express authorization from these the Complainants. For these reasons, the DR. OZ mark uniquely identifies the Complainants Dr. Oz and Oz Holdings and their products and services.
Likewise, the DR. OZ THE GOOD LIFE mark, which the Respondent has wrongfully incorporated in its entirety into the disputed domain name, is uniquely associated with the Complainants' print and online publications. The DR. OZ THE GOOD LIFE mark is not legitimately used by any other individuals or entities in the United States or internationally. For these reasons, the DR. OZ THE GOOD LIFE mark uniquely identifies the Complainants Dr. Oz and Hearst.
The Complainants submit that the Respondent is not known or identified by the names DR. OZ or DR. OZ THE GOOD LIFE, nor is the Respondent affiliated or connected in any way with the Complainants' businesses. The Respondent does not operate a business or other organization commonly known as DR. OZ or DR. OZ THE GOOD LIFE. The Respondent has not acquired any rights in the DR. OZ or DR. OZ THE GOOD LIFE marks in the United States or anywhere else in the world. The Respondent is not a licensee of the Complainants, nor is the Respondent otherwise authorized by the Complainants to use either the DR. OZ mark or the DR. OZ THE GOOD LIFE mark, or to apply for or use any domain name incorporating such marks.
The Complainants further submit that the Respondent has used the Internet site located at "www." to attract Internet users seeking information regarding the Complainants' products and services, including the website located at "", thereby diverting customers from the Complainants. The Complainants allege that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
As of April 28, 2014, in response to a take-down request, all content had been removed from the website to which the disputed domain name resolves. However, prior to that date, nearly all of the content provided on the website was content originally created by the Complainants and featured in the Complainants' DR. OZ THE GOOD LIFE magazine. A copy of the content of the website to which the disputed domain name resolves printed prior to the removal of that content has been submitted as an annex to the Complaint. The Complainants submit that the Respondent wrongly appropriated and published such content without authorization from the Complainants.
The Complainants submit that the Respondent has registered and is using the disputed domain name in bad faith with full knowledge of the Complainants' rights to the DR. OZ and DR. OZ THE GOOD LIFE marks. For example, as noted above, the website to which the disputed domain name resolves was almost entirely comprised of content which is original to Complainants and featured in Complainants' magazine. Moreover, a copyright notice reading "© 2014 Dr Oz The Good Life" was incorporated in the content of the Respondent's website and together with a statement which claimed that the website was "Powered by Hearst Magazines." Accordingly, there can be no question that the Respondent had full knowledge of the Complainants' trademark rights when registering the disputed domain name and creating the corresponding website.
The Complainants submit that by registering the disputed domain name, the Respondent is diverting consumers away from the Complainants' websites, including its website at the address, making it difficult for the Complainants' customers and the general public to locate any future website established by the Complainants.
The Complainants further allege that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainants' DR. OZ and DR. OZ THE GOOD LIFE marks. As such, consumers are likely to be confused as to the source of the Respondent's website, and could believe that the Respondent's website is sponsored, endorsed, or otherwise affiliated with the Complainants and their products and services.
The Complainants allege that the Respondent has been unjustly enriched by misappropriating the Complainants' goodwill and creating a likelihood of confusion with the DR. OZ and DR. OZ THE GOOD LIFE marks, at the expense of the Complainants. This is precisely the type of wrongful conduct that has been found to be "bad faith" in numerous UDRP proceedings. See, e.g., Ross- Simons v. Chan,WIPO Case No. D2003-0970; NetWizards, Inc. v. Spectrum Enters.,WIPO Case No. D2000-1768; Tarjeta Naranja S.A. v. Mr.D,WIPO Case No. D2001-0295; AutoNation, Inc. v. Schaefer,WIPO Case No. D2001-0289. B. Respondent
Apart from the email of May 14, 2014 stating the following "yes i made a mistake, i am sorry
Good luck", the Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said 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 Complainants have furnished evidence of their rights in the DR. OZ and DR. OZ THE GOOD LIFE marks through the above-listed trademark registrations and at common law the use of the marks in commerce in association with entertainment services and the DR. OZ THE GOOD LIFE magazine.
This Panel finds that notwithstanding the missing period after the letters "dr", the disputed domain name is almost identical and confusingly similar to the Complainants' common law trademark DR. OZ THE GOOD LIFE. (For the sake of completeness, if it had been necessary to consider whether the domain name is confusingly similar to the DR. OZ mark the Panel would have found so).
This Panel finds that the Complainants have therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is well established the onus of proof shifts to the Respondent to prove her rights or legitimate interest in the disputed domain name once the Complainant has made out a prima facie that the Respondent has no such rights or interest.
The Complainants Dr. Oz and Oz Holdings own the exclusive rights in the DR. OZ mark and in partnership the three complainants have rights in the DR. OZ THE GOOD LIFE mark.
In the absence of any Response or information from the Respondent, on the evidence on the file, this Panel finds on the balance of probabilities that the Respondent is not known or identified by the names "Dr. oz" or "Dr. oz the good life", nor is the Respondent affiliated or connected in any way with the Complainants' businesses. The Respondent does not operate a business or other organization commonly known as "dr. oz" or "dr. oz the good life". The Respondent has not acquired any rights in the DR. OZ or DR. OZ THE GOOD LIFE marks in the United States or anywhere else in the world. The Respondent is not a licensee of Complainants, nor is Respondent otherwise authorized by Complainants to use either the DR. OZ mark or the DR. OZ THE GOOD LIFE mark, or to apply for or use any domain name incorporating such marks.
This Panel finds therefore that the Complainants have made out a prima facie case that the Respondent has no such rights or legitimate interests and there is no evidence to the contrary filed by the Respondent.
In the circumstances this Panel finds that the Respondent has failed to discharge the onus of proof and the Complainants are entitled to succeed in the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In the absence of any explanation to the contrary, this Panel finds that the disputed domain name was chosen and registered in order to take predatory advantage of the goodwill and reputation of the Complainants' launch of the DR. OZ THE GOOD LIFE magazine. There is no other reasonable explanation as to how or why such a distinctive combination of words would be chosen and registered.
The registration of the disputed domain name was made a month after the date of first publication of the Complainants' magazine. Any potential argument that the Complainants' had not acquired any goodwill in the magazine title on the very date of first publication is met by fact that the Respondent herself was aware of the launch. The fact that such a unique combination of words were registered as a domain name is evidence that the Complainants' magazine had already acquired a reputation and protectable goodwill by the very date of its launch due to the pre-launch publicity.
The Respondent posted content from the Complainants' magazine on her website initially including a copyright notice reading "© 2014 Dr Oz The Good Life" together with a statement which claimed that the website was "Powered by Hearst Magazines." This is further evidence that the Respondent chose, registered and has used of the disputed domain name in bad faith. This Panel finds that such use amounts to an intentional attempt to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with Complainants' DR. OZ and DR. OZ THE GOOD LIFE marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or of a product or service on the Respondent's web site or location.
It appears that the Respondent has taken down the misleading information from the website and it appears that the disputed domain name is now being passively held by the Respondent. This Panel finds that in the circumstances of this case, and in particular the fact that the domain name was registered in bad faith and used for a period of time as the address of a website on which the Respondent posted infringing and misleading content, such passive holding of the disputed domain name amounts to bad faith use.
In the circumstances this Panel finds that the Complainants have succeeded in the third and final element of the test in paragraph 4(a)(ii) of the Policy and is entitled to the relief sought in this Complaint. 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 disputed domain name be transferred to the Complainant Hearst, as requested by the Complainants.
James Bridgeman
Sole Panelist
Date: July 10, 2014
Full & Egal Universal Law Academy