The Complainant is Samantha Clayton of Los Angeles, California, United States of America ("United States"), represented by Manatt, Phelps & Phillips LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Anis Hajee of Lancashire, United Kingdom of Great Britain and Northern Ireland, self-represented. 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 19, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2018, 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 30, 2018, 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 31, 2018.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. The Center received an informal communication from the Respondent on June 5, 2018. Upon request of the Respondent, the due date for Response was automatically extended until June 25, 2018, in accordance with the Rules, paragraph 5(b). The Respondent did not file a formal Response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 5, 2018. 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 Complainant owns common law rights to the SAMANTHA CLAYTON trademark. The Complainant is a former Olympic athlete and professional sprinter, and she has used her name and personal likeness in association with providing fitness, health and personal training services since 2012. For nearly six years, the Complainant has been employed by the fitness and nutrition company Herbalife International, Inc. ("Herbalife"), and is now the Vice President of Worldwide Sports Performance and Fitness. The Complainant also authors blog posts, and has appeared in, produced and promoted several video series for Herbalife which prominently feature the SAMANTHA CLAYTON trademark.
The disputed domain name was registered on October 28, 2011 by the Complainant herself to showcase her fitness services and the SAMANTHA CLAYTON trademark. The disputed domain name inadvertently expired on October 28, 2015 and the disputed domain name was acquired by the Respondent at the end of 2015.
The disputed domain name has, since it was acquired by the Respondent, been directed to a website controlled by the Respondent which represents that it is connected with the Complainant and Herbalife. That website features numerous references to the SAMANTHA CLAYTON trademark and unauthorized copies of photographs of the Complainant, as well as unauthorized use of Herbalife's intellectual property, including Herbalife's copyright protected content and the HERBALIFE trademark. That website is also used to promote and link to unrelated commercial enterprises that are not connected with the Complainant. 5. Parties' Contentions A. Complainant
The Complainant submits that she owns common law rights in the trademark SAMANTHA CLAYTON through extensive use of her name in association with fitness, health and personal training services. The disputed domain name was originally owned by the Complainant and used for four years in association with the promotion of her services. The disputed domain name was acquired by the Respondent after the Complainant inadvertently allowed her registration to expire. The Respondent is using the disputed domain name in association with a website that features unauthorized photos of the Complainant and numerous references to the trademark SAMANTHA CLAYTON and HERBALIFE. As such, it is clear the Respondent is aware of the Complainant and the Complainant's rights in her common law mark and name, and likeness.
The disputed domain name contains the entirety of the Complainant's trademark and the descriptive word "fitness". The addition of the descriptive word does not make the disputed domain name any less confusingly similar.
The Respondent is not known by the name SAMANTHA CLAYTON, and has not been authorized to use the Complainant's trademark or name, or personal likeness in any manner. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and or services. The Respondent is using the disputed domain name in association with a website which features unauthorized information, references to the Complainant's common law trademark and name, and photographs of the Complainant, as well as unauthorized use of Herbalife's intellectual property. The Respondent's website also contains links to third party websites which feature advertisements for weight loss and products for other medical conditions. The Complainant contends that the use of the disputed domain name for the aforementioned purposes is evidence of bad faith under the Policy. B. Respondent
The Respondent did not file a Response to these proceedings. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of 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 Panel finds that the Complainant does have trademark rights in the common law mark SAMANTHA CLAYTON by virtue of her long-standing use of her name and likeness in association with fitness, health and personal training services. The Complainant's common law rights have been established through extensive evidence of use of the SAMANTHA CLAYTON mark since 2012.
The test for confusing similarity is summarized at WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8:
"Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element".
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark SAMANTHA CLAYTON, as the disputed domain name replicates the entirety of the Complainant's common law mark and name. The addition of the descriptive term "fitness" does not change the analysis of confusing similarity in these circumstances.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel is guided by the commentary on proof of rights or legitimate interests which can be found at WIPO Overview 3.0, section 2.1:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element".
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the lack of rights and legitimate interests on the part of the Respondent.
The Complainant has proven long-standing rights in the common law mark SAMANTHA CLAYTON, and it is clear that the Respondent was in fact aware of those common rights when it acquired the disputed domain name. The Respondent's website associated with the disputed domain name is replete with references to the Complainant's common law trademark, unauthorized photographs of the Complainant and references to Herbalife. The Respondent was clearly aware of the Complainant's rights in her name and personal likeness, and attempted to use these elements for its advantage.
The Respondent's use of the disputed domain name in association with this kind of website together with links to third party websites advertising weight loss and other products for purposes of monetary gain is not a bona fide offering of goods and services under the Policy.
Since the Complainant has established a prima facie case, the burden then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent has not filed any materials in this proceeding. Accordingly, the Complainant is has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the Respondent acquired the disputed domain name with full knowledge of the Complainant's common law trademark rights in SAMANTHA CLAYTON. The Respondent has used the disputed domain name in association with a website that displays many unauthorized references to and photographs of the Complainant. This type of unauthorized conduct in connection with the disputed domain name is sufficient to establish bad faith.
In the absence of any response, the Panel is therefore prepared to accept the claims made by the Complainant, and to find that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy. 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.
Christopher J. Pibus
Sole Panelist
Date: July 19, 2018
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