Complainant is Diet Center Worldwide, Inc. of Akron, Ohio, United States of America (“United States”), represented by Renner, Kenner, Greive, Bobak, Taylor & Weber, United States.
Respondent is Rebecca Wilborn, NYC Diet Center of Manhattan, New York, United States, self‑represented. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 Complainant on August 16, 2018 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 August 21, 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2018. On September 9, 2018, Respondent requested an automatic four-day extension of the deadline to file the Response. The Center granted the requested extension and confirmed that the new deadline for the Response was September 13, 2018. On September 18, 2018, Respondent sent an email to the Center indicating it had not received the Complaint. On September 20, 2018, the Center extended the Response deadline to October 9, 2018, in light of Respondent indicating it had not received the Complaint. The Response was filed with the Center on October 11, 2018.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on October 15, 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
Complainant, Diet Center Worldwide Inc., is a United States based provider of weight loss programs, solutions and products. Complainant has used the name and trademark DIET CENTER in connection with its products and services since at least as early as 1975. Complainant owns multiple trademark registrations in the United States for the DIET CENTER mark, including Registration Nos. 1,440,999, 1,442,367, 1,442,042, 1,441,361, 1,419,558 and 1,496,217. The earliest of these registrations issued in 1986, and all of the registrations claim first use dates for the DIET CENTER mark that fall between 1975 and 1977. Complainant also owns the domain name which it uses with a website to promote and sell its products and services.
Respondent is an individual based in New York City, United States and is a provider of weight loss programs. Respondent is a former franchisee of Complainant. Respondent registered the disputed domain name on November 12, 2008 and has used the disputed domain name in connection with a website that promotes Respondent’s weight loss services. The disputed domain name currently resolves to a website that promotes Respondent’s business under the name “NYC Weightloss Solutions”. 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns rights in the DIET CENTER mark by virtue of its trademark registrations for the DIET CENTER mark in the United States. Complainant further asserts that it has owned and used the domain name since 1996 in connection with its weight loss programs, products and services.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s DIET CENTER mark because it incorporates the DIET CENTER mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the geographically descriptive abbreviation “nyc” which refers to New York City creates a false sense of origin, as consumers are likely to falsely believe that the disputed domain and associated website are sponsored, endorsed or affiliated with Complainant. In that regard, Complainant further contends that because Respondent is a former franchisee of Complainant, the use of the disputed domain name is undoubtedly being done to mislead consumers into assuming Respondent is connected to or affiliated with Complainant.
Complainant argues that Respondent does not have any bona fide rights or legitimate interest in the disputed domain name because Respondent (a) is not commonly known by the disputed domain name, (b) is not authorized by Complainant to use the DIET CENTER mark, (c) has not used the disputed domain name with a bona fide offering of goods and services prior to Complainant’s first use of the DIET CENTER mark, and (d) is using the disputed domain name to redirect web users to Respondent’s website offering weight loss programs and services.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent, as a former franchisee, was aware of Complainant’s prior rights in the DIET CENTER mark. Complainant also argues that Respondent’s bad faith is established by Respondent’s use of the disputed domain name with a website that advertises and promotes Respondent’s competing weight loss programs and services. Lastly, Complainant maintains that Respondent has continued to use the disputed domain name in a misleading manner even after Complainant terminated Respondent’s franchise rights. B. Respondent
Respondent denies Complainant’s contentions.
Respondent argues that the disputed domain name is not identical or confusingly similar to Complainant’s DIET CENTER mark as the disputed domain name, in its totality, is visually different from Complainant’s DIET CENTER mark. Respondent also argues that there is no confusion because the parties have different businesses and serve different customers, and because Complainant has never used the mark DIET CENTER NYC to identify its services.
Respondent maintains that it created the disputed domain name in 2008 with the full understanding and urging of employees, managers and executives of Complainant, and did so for the purpose of building a greater local clientele that would buy weight loss programs and products, from which Complainant would obtain royalties. Respondent contends that Complainant was fully aware of Respondent’s use of the disputed domain name and website for nearly ten years, took no action to stop Respondent’s activities, and, in fact, developed and provided Respondent with numerous programs, ads and marketing tools for cultivating clients. Respondent also contends that while Respondent was a franchisee it paid royalties to Complainant based on revenue generated through Respondent’s website at the disputed domain name and that Complainant never refused or returned such revenues, and never objected to Respondent’s activities. Lastly, Respondent argues that other franchisees have been allowed by Complainant to use domain names that incorporate the DIET CENTER mark with a geographic location, such as . 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith A. Respondent’s Late Response
As a preliminary matter, the Panel must decide whether Respondent’s late Response should be admitted. Pursuant to paragraph 10(a) of the Rules, the Panel has discretion to conduct an administrative proceeding in such manner “as it considers appropriate in accordance with the Policy and these Rules.” Paragraph 10(b) of the Rules states that “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Under paragraph 10(c) of the Policy, the Panel “shall ensure that the proceeding takes place with due expedition.”
Respondent submitted its Response on October 11, 2018, two days after the Center’s extended deadline for the Response of October 9, 2018, and four days before the Panel was appointed. Respondent stated it had previously submitted its Response on October 8, 2018, but no such Response appears to have been received by the Center on that date, and Respondent has not presented evidence of such submission.
Nevertheless, no delay was caused by the late submission of the Response, as the Panel was not yet appointed when Respondent submitted its late Response. Furthermore, to not admit the Response for being filed merely two days late would, in the Panel’s view, deprive Respondent of a fair opportunity to present its case, particularly as Respondent is self-represented. Accordingly, the Panel has decided in its discretion to admit Respondent’s late Response. B. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns trademark registrations in the United States for the DIET CENTER mark in connection with its weight loss products and services.
With Complainant’s rights in the DIET CENTER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the disputed domain name is confusingly similar to Complainant’s DIET CENTER mark as it consists of the DIET CENTER mark in its entirety at the head of the disputed domain name. The addition of the geographic abbreviation “nyc,” which commonly stands for New York City, does not prevent a finding of confusing similarity of the disputed domain name with Complainant’s DIET CENTER mark. See section 1.8 of the WIPO Overview 3.0. The Panel notes that Respondent’s arguments that the disputed domain name and Complainant’s DIET CENTER mark are visually different are misplaced. The fact that the disputed domain name and Complainant’s DIET CENTER mark have variations in the case size of letters and in spacing is irrelevant. The DIET CENTER mark is clearly recognizable in the disputed domain name and there can be no doubt that Respondent is using the DIET CENTER mark, and not some other mark, in its entirety in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the DIET CENTER mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Respondent is currently using the disputed domain name with a website that promotes Respondent’s NYC Weightloss Solutions business. That business appears to provide weight loss related programs and services that likely compete with Complainant’s DIET CENTER weight loss programs and services. As the relevant time for the assessment of whether a respondent has rights and legitimate interests in a disputed domain name is the date of the complaint (WIPO Overview 3.0 at section 2.11), Respondent’s actions in retaining the disputed domain name after the termination of the franchisee relationship between the parties for purposes of promoting Respondent’s competing NYC Weightloss Solutions business does not amount to a bona fide use and does not provide Respondent with a legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the DIET CENTER mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. D. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.
The Parties in this proceeding have provided no documentary evidence regarding their past relationship. Complainant, who is represented by counsel, has simply asserted that Respondent was a prior franchisee and has provided no details regarding the franchise arrangement between the Parties, when Respondent was a franchisee, or when Respondent ceased being a franchisee of Complainant. Respondent, who is self‑represented, does not deny that she was a former franchisee of Complainant, but contends that she registered the disputed domain name in 2008 with the full knowledge of Complainant and its representatives, used the disputed domain name since 2008 with a website that promoted weight loss programs, products and services, paid royalties to Complainant from such activities, and for nearly ten years received no objection from Complainant.
As the Parties have submitted little documentary evidence in this proceeding to support their contentions, but have made specific reference to their past relationship and usage of the disputed domain name, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has reviewed the Parties’ respective current websites and has reviewed archival pages from the Wayback Machine () of Respondent’s website at the disputed domain name. See WIPO Overview 3.0 at section 4.8. The archival pages tend to confirm Respondent’s assertions and show that Respondent since early 2009 was using the disputed domain name with a website that referred to Complainant and its services, featured at various times Complainant’s DIET CENTER logo, and advised that Respondent had become a DIET CENTER franchisee starting in 1988. As a whole, this suggests that Respondent was operating a website in 2009, and thereafter, promoting DIET CENTER products and services using the disputed domain name with the knowledge and approval of Complainant.
Indeed, the fact that there is no evidence in the record before the Panel that Complainant ever objected to Respondent’s registration and use of the domain name until perhaps 2017, when the website at the disputed domain name ceased featuring the DIET CENTER mark, further supports the notion that Respondent received some form of authorization or consent from Complainant in or about 2008 to register the disputed domain name and operate a website using the DIET CENTER mark and logo. Added to that is the fact that Complainant says virtually nothing about the Parties’ prior relationship in its Complaint except that Respondent was a franchisee and that Respondent continued its activities after the franchisee relationship was terminated by Complainant (on some unspecified date). Such lack of evidence or commentary likewise suggests that Complainant was aware of Respondent’s activities in 2008 and did not object to such until after the franchisee relationship terminated. Thus, based on the limited evidence before the Panel, Complainant has not proven by a preponderance of the evidence that in November 2008 Respondent registered the disputed domain name in bad faith. Consequently, Complainant’s complaint fails.1 7. Decision
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Sole Panelist
Date: October 29, 2018
1 While it is possible that Complainant may have contractual, trademark infringement or unfair competition claims against Respondent based on Respondent’s continued use of the disputed domain name after the termination of the franchisee agreement between the Parties, the Panel notes that such questions are not suitable for resolution under the UDRP. Complainant may, however, have recourse in other fora to resolve such questions.
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