Complainant is Association for Size Diversity and Health of Redwood City, California, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Name Redacted1 of St. Joseph, Missouri, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 15, 2018, the Center sent the Complaint Deficiency Notification to Complainant regarding the identity of the Registrar. Complainant submitted an amended Complaint on October 22, 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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 19, 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
According to the Complaint, Complainant is an international non-profit membership organization established in 2003. Complainant states that its mission is “to partner with service providers, educators and advocates to dismantle weight-centered health policies and practices.” Complainant adds that, “through the use of educational resources, conferences and an extensive network of health practitioners, the organization offers an alternative to the weight-centered approach to treating clients and patients of all sizes.” In May 2011, Complainant began to “commission” weekly blogs regarding its beliefs and operations.
Complainant holds the trademark HEALTH AT EVERY SIZE, registered with the United States Patent and Trademark Office (“USPTO”) on July 12, 2011, under registration no. 3992338. The USPTO registration indicates a first use in commerce of July 1, 2003 for this mark. Complainant also holds a USPTO registration for the mark HAES.
The Domain Name was registered on April 27, 2011, nearly three months before the HEALTH AT EVERY SIZE mark was registered with the USPTO but eight years after Complainant’s first use in commerce of that mark. The name of the Domain Name registrant is an individual (known herein as “XYZ”) who is a founding member of Complainant, and who has no involvement in the registration or use of the Domain Name. Complainant asserts that the use of XYZ as the registrant constitutes identity theft, and Complainant therefore asks that the Registrar-provided name of the registrant be redacted. The actual Respondent has not responded to the Complaint and has not denied the allegation of identity theft, and therefore the Panel will refer to Respondent as “XYZ.”
It is not clear when Respondent first registered the Domain Name, but at one point Complainant alludes to “the inadvertent lapse of the Domain Name in April 2018.”
For a time following Respondent’s registration of the Domain Name, the Domain Name resolved to a fairly rudimentary website which included the following content under the header “About Us”:
“The HAES movement is a continually evolving alternative to the weight-centered approach to treating clients and patients of all sizes. It isalso a movement working to promote size acceptance, end weight discrimination, and lessen the ongoing obsession with weight loss and thinness. You can learn more about ASDAH and the Health at Every Size approach on our website at .
Health at Every Size and HAES are registered trademarks of the Association for Size Diversity and Health and are used with permission. This website was created in order to help out people who are trying to lose weight and start a new and healthy lifestyle. Changing your entire lifestyle can be a difficult process especially if you don’t have any experience. That’s why we are here to provide you with all the essential information about healthy living. We have many years of professional experience which can be a huge advantage.”
For a time, “Respondent’s website” also featured the professional profiles of several members of Complainant, including XYZ, who regularly contribute blogs at Complainant’s site. “Respondent’s website” also contained commercial advertisements unrelated to health and weight issues.
Complainant also alleges that Respondent has used the Domain Name and corresponding website for the purposes of phishing, and has produced findings by Wells Fargo to that effect. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark HEALTH AT EVERY SIZE through registration and use. The Panel also finds the Domain Name to be confusingly similar to that mark. The Domain Name incorporates the mark in its entirety and adds the descriptive word “blog” to the mark. Complainant features blogs at its own website related to the services it offers.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate why it registered the Domain Name or otherwise explain its bona fides. As such, the undisputed record in this case indicates that Respondent registered the Domain Name with knowledge of Complainant and its marks, falsely indicated a member of Complainant to be the registrant of the Domain Name, falsely stated at its website that it was using the HEALTH AT EVERY SIZE mark with permission, falsely created the impression of an affiliation between Complainant (and some of its members and main bloggers) and Respondent, and used the Domain Name as part of a phishing scam. It is obvious that, pursuant to Complainant’s undisputed – and plausible and supported – allegations, Respondent has no rights or legitimate interests of any sort in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its observations above in section 6.B. It is clear from this undisputed record that Respondent has acted from bad faith, if not fraudulent, motives. At a minimum, bad faith under the above‑quoted Policy paragraph 4(b)(iv) is established on this record.
Complainant has established Policy paragraph 4(a)(iii). 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.
Robert A. Badgley
Sole Panelist
Date: December 3, 2018
1 The Panel has decided to redact the name of Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").
Full & Egal Universal Law Academy