Complainant is Barry D. Sears Ph.D, Marblehead, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
Respondent is Oded Kariti, Lakewood, New Jersey, United States of America / Whoisguard, Inc. of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 25, 2015.
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 Respondent of the Complaint, and the proceedings commenced on February 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2015. On March 23, 2015, after transmission of Respondent’s default notice, the Center received an email from Respondent’s email address. The Center sent its reply to the email on March 30, 2015. Also on March 30, 2015, the Center received a further brief email from Respondent to which the Center sent an acknowledgement of receipt (copied to Complainant) and reminding Respondent that any communication by a party shall be copied to the other party in accordance with Rules, Paragraph 2(h).
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on April 2, 2015. 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, Dr. Barry Sears, is a scientist and author who became known in connection with a lifelong hormonal and insulin control diet program, known as the Zone Diet, that he first created some twenty (20) years ago. Complainant's program uses food as a drug to help people control and balance their hormonal and insulin levels.
Complainant provides a wide array of health and nutrition products and services that are compliant with his hormonal/insulin based program, including vitamins and nutritional supplements.
Complainant owns the following registered trademarks:
SEAHEALTH PLUS; Registration No. 2,941,677 (United States); Registration Date April 19, 2005; for vitamins and nutritional supplements;
SEAHEALTH PLUS; Registration No. 835679 (Mexico); Registration Date May 31, 2004; for vitamins and nutritional supplements.
Complainant claims first use in commerce in the United States on November 2, 2003.
Complainant and his authorized licensees maintain a network of websites located at various Internet addresses where Complainant has offered his SEAHEALTH PLUS product for sale since 2003.
Respondent registered the Domain Name, , on August 22, 2014, some 11 years after Complainant’s first use of his SEAHEALTH PLUS Mark and nine years after Complainant obtained registration of that mark in the United States.
Respondent began using the Domain Name to point Internet users to a website where Respondent operates as a retailer and manufacturer under the name Sea Health Plus, LLC and offers a competing vitamin and nutritional supplement called Ocean’s Bounty, a product that is identical or very similar to the product that Complainant offers under his SEAHEALTH PLUS Mark. Respondent's product is often referred to on the website as Sea Health Plus supplement. The “Sea Health Plus” products Respondent sells through its website compete directly with those offered and sold by Complainant under his SEAHEALTH PLUS Mark. 5. Parties Contentions A. Complainant
Complainant contends that he has rights in his SEAHEALTH PLUS trademark based upon registration of the mark and on common law. Registration of Complainant’s mark in the United States is prima facie evidence of the validity of the mark and Complainant’s ownership of the mark. Such registration also creates a presumption that the mark is inherently distinctive. Complainant’s SEAHEALTH PLUS Mark is entitled to a wide scope of protection.
Complainant further contends that as a result of continuous and exclusive use of the SEAHEALTH PLUS Mark since 2003, Complainant has established a strong customer base, has built up value and goodwill in the SEAHEALTH PLUS Mark, and that such goodwill extends throughout the United States and elsewhere.
Complainant has spent substantial amounts of time and money in advertising and promoting his nutritional supplement product offered under the SEAHEALTH PLUS mark. The SEAHEALTH PLUS Mark is of immeasurable value to Complainant.
Complainant contends that the Domain Name is identical to Complainant’s SEAHEALTH PLUS trademark in all respects except for the addition of the suffix “.com.” The addition of the designation “.com” is nondistinctive because it is a gTLD required for the registration of a domain name.
Complainant contends that Respondent has no rights or legitimate interests with respect to the Domain Name citing the following factors:
“To Complainant’s knowledge, the Domain Name does not comprise the legal name of Respondent. A search of the business records database of the Secretary of State of Colorado, the state in which Respondent claims to have offices, did not reveal that any entity named Sea Health Plus LLC was ever formed. A search of the business records database of the Secretary of State of Delaware, a state in which many businesses are formed, did not reveal that an entity called Sea Health Plus LLC was ever formed there.
Respondent did not, prior to this dispute, use the Domain Name or a trademark corresponding to the Domain Name, in connection with a bona fide offering of goods or services, nor has Respondent made a legitimate non-commercial or fair use of the Domain Name. Respondent’s use of the Domain Name, which is identical to Complainant’s SEAHEALTH PLUS trademark, for competing nutritional supplements does not constitute a bona fide offering of goods and services pursuant to the Policy ¶ 4(c)(i), nor is it a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant never authorized, licensed or otherwise permitted Respondent to use Complainant’s SEAHEALTH PLUS trademark or any similar variations thereof. Complainant has not authorized, licensed, or otherwise permitted Respondent to apply for or use any domain name comprising or incorporating Complainant’s SEAHEALTH PLUS mark.”
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith, primarily for the purpose of intentionally, for commercial gain, attracting Internet users to Respondent’s competing “Sea Health Plus” website, where Respondent advertises and promotes competing nutritional supplement products, by creating a likelihood of confusion with the Complainant’s SEAHEALTH PLUS Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of products offered on that website.
Respondent has registered the Domain Name which encompasses, in its entirety, Complainant’s distinctive SEAHEALTH PLUS Mark. Respondent uses the Domain Name to attract Internet users who are looking for information or looking to buy Complainant’s SEAHEALTH PLUS nutritional supplement product.
Respondent’s unauthorized and unapproved misdirection of consumers searching for Complainant’s SEAHEALTH PLUS branded nutritional supplement to Respondent’s competing “Sea Health Plus” website is solely for the purpose of achieving commercial gain.
Complainant’s SEAHEALTH PLUS trademark was registered prior to Respondent’s registration of the Domain Name. The trademark registrations provide Respondent constructive notice of Complainant’s rights in his distinctive SEAHEALTH PLUS trademark.
Moreover, due to the fact that: (1) Respondent’s Domain Name resolves to a website that advertises and promotes competing nutritional supplements, and (2) the Domain Name is identical to Complainant’s SEAHEALTH PLUS Mark, it is reasonable to conclude that Respondent had and has actual knowledge of Complainant’s rights in his SEAHEALTH PLUS Mark when Respondent registered the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. In its email of March 23, 2105, Respondent stated:
“Hello All,
My apologies for not responding sooner. I own the company using this domain and your messages never got to me. The email listed "[…]@ is of an employee whom is no longer with the company.
I will handle this matter in the coming days and will send you updates on progress as well.
Please know that switching over the operations on this web site to another is a tedious endeavor and will require a few days to migrate all the files properly and do a bit a of testing.
May I also please ask what exactly the infringement is on? We simply bought the URL because it was available is this name owned by another party?
Looking forward to your response,
Edward.”
The email of March 30, 2015, which was not copied to Complainant stated:
“Hello, please forward all correspondence to […]@N
Thank you.” 6. Discussion and Findings
Respondent’s email communications to the Center following the notice of Default did not constitute a Response to the Complaint. Because Respondent did not respond to the Complaint, the Panel considers whether Respondent was given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and the Written Notice in hard copy by courier to Respondent at the addresses provided by the Registrar and in the Amended Complaint. The emails from Respondent indicate that he received the notice of default but still chose not to respond. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer to Complainant’s contentions entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has rights in the trademark SEAHEALTH PLUS by reason of registration of the mark on the Principal Register of the United States and in Mexico and as a result of use in commerce since 2003. The Domain Name is identical to Complainant’s trademark but for the “.com” suffix, which is nondistinctive and disregarded for purposes of comparison. See Gateway, Inc. v. James Cadieux,WIPO Case No. D2000-0198. Complainant has established the first element of its case. B. Rights or Legitimate Interests
Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, where Complainant makes a prima facie case that Respondent does not possess such rights or interests, the burden of production shifts to Respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, Respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or interests, Complainant’s prima facie case will usually be found sufficient to meet Complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or
(ii) Respondent has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. Complainant has done that in this case.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent’s use of a Domain Name that is identical to Complainant's trademark in order to trade intentionally on the marks and goodwill of another, creates confusion and misdirects Internet users to its own website for commercial gain by selling competing goods is not a bona fide offering of goods or services. See Ciccone v. Parisi,WIPO Case No. D2000-0847; Chip Merch, Inc. v. Blue Star Elec.,WIPO Case No. D2000-0474 (finding the disputed domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
There is nothing in the record suggesting that Respondent has ever been commonly known by the Domain Name. Complainant, moreover, has not granted Respondent authority or license to use Complainant's name or trademark in a Domain Name. Policy, paragraph 4(c)(ii).
Respondent’s creation and use of an intentionally confusing Domain Name based on Complainant’s trademark for a plainly commercial and even deceptive purpose does not constitute either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii).
Respondent has not come forward with facts or argument to rebut Complainant’s prima facie case. Complainant’s prima facie is well-supported on the record, and the Panel accepts it. Complainant has established the second element of his case. C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Panel considers the evidence of record sufficient to establish that Respondent registered and is using the Domain Name in bad faith. Respondent registered and is using a Domain Name that incorporates Complainant’s trademark in its entirety, that is plainly intended to confuse the Internet user and divert traffic from Complainant to Respondent, and that opens to a website offering for sale goods that compete directly with those of Complainant. See, AutoNation, Inc. v. Paul Schaefer,WIPO Case No. D2001-0289 (Bad faith use and registration where respondent used confusingly similar domain name to sell competing products); Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063 (Use of confusingly similar domain name by competitor of complainant constituted bad faith registration and use); NetWizards, Inc. v. Spectrum Enterprises,WIPO Case No. D2000-1768 (Registration and use of a domain name to re-direct Internet users to websites of competing organizing constituted bad faith registration and use). Beemak Plastics, Inc. v. WestRep Group,WIPO Case No. D2001-1023; E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; Dell, Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512. The evidence is sufficient to establish that Respondent clearly intended to exploit complainant’s trademark and goodwill in that mark to create a likelihood of confusion as to the source of the website and the goods offered on the site for Respondent’s own commercial gain.
The Panel concludes that Respondent registered and used the Domain Name in bad faith and that Complainant therefore has established the third and final element of his case. 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 Name, be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Date: April 16, 2015
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