The Complainant is L-Nutra, Inc., United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, P.C., United States.
The Respondent is Davide Biordi, Italy. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 18, 2019, 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 March 22, 2019, 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 March 25, 2019.
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 March 26, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2019. The Center received an informal communication from the Respondent on April 5, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on April 16, 2019.
The Center appointed Flip Jan Claude Petillion, Carol Anne Been, and Luca Barbero as panelists in this matter on May 17, 2019. The Panel finds that it was properly constituted. Each member of 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, L-Nutra, Inc., is company based in the United States that researches, produces and provides nutrition related products and services, specifically nutri-technologies and fasting mimicking diets (FMDs), which serve to prevent, delay, or treat chronic diseases or to manage and maintain body weight, healthy levels of cholesterol, blood pressure, etc. The Complainant was founded in 2009 by Dr. Valter Longo, PhD.
The Complainant is the holder of different trademark registrations and applications across various jurisdictions for the mark FASTING MIMICKING DIET, which it uses in connection with its nutritional products and services. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations and applications:
- FASTING MIMICKING DIET, word mark (“fasting” and “diet” disclaimed) registered with the United States Patent and Trademark Office (“USPTO”) under No. 5487435 on June 5, 2018 in class 5, with an application date on November 14, 2016, and a date of first use in commerce on December 21, 2017; and
- FASTING MIMICKING DIET, word mark application (“diet” disclaimed) filed with the USPTO under No. 87/396945 on April 3, 2017, in classes 16 and 41 (not yet registered).
Although the Complainant has only included the above two trademarks in its Complaint, limited factual research conducted by the Panel into matters of public record reveals that the Complainant is also the owner of the following trademarks:
- FASTING MIMICKING DIET, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 016025041 on April 18, 2017, in classes 5 and 44; and
- FASTING MIMICKING DIET, word mark registered with the Mexican Institute of Industrial Property (“IMPI”) under No. 1730907 on March 10, 2017, in class 44.
The Disputed Domain Name was registered by the Respondent on October 29, 2017. The Disputed Domain Name resolves to a website displaying the sign “The Fasting Mimicking Diet” and a video of Dr. Valter Longo, the Complainant’s founder, speaking about the diet. The website provides information on the Fasting Mimicking Diet, including on nutrition, cell regeneration, diabetes, safety, etc., and is also used to promote recipes and a website application aimed at managing users’ diet and physical activity. Internet users must register for the application to “get started with a free account”. After the commencement of the proceedings, the website connected to the Disputed Domain Name was altered, displaying more limited information, including the message:
“Obviously, you cannot use this web app for the FMD ® (Fasting Mimicking Diet ®) because it is known that it is available only as a kit distributed by L-Nutra Inc. (video and links no more available), but in the other 25 days of the month, you can control your eating and you can always estimate some of your 'risk factors' in order to decide, for example, how many times to follow it in a year”.
On February 11, 2019, the Complainant sent a formal cease and desist letter via email and overnight mail to the Registrar and the Respondent, demanding the transfer of the Disputed Domain Name and to cease and desist from using the Disputed Domain Name or any variations thereof. It does not appear that the Complainant received a response to this cease and desist letter. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be identical to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent is in no way affiliated with or authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant also claims that the Respondent has registered and uses the Disputed Domain Name with an intention to trade on the Complainant’s rights and reputation, and to drive traffic to its website for its own commercial gain. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
The Respondent sent an informal communication to the Center, in which the Respondent posed several questions regarding the Response and the deadline, as well as regarding representation and potential remedies. The Respondent indicated in this informal communication that its website connected to the Disputed Domain Name operates completely unrelated to the Complainant. 6. Discussion and Findings
Paragraph 15 of the Rules provides that 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 rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has clearly established that there is a trademark in which it has rights. The Complainant’s FASTING MIMICKING DIET mark has been registered and used in connection with nutritional products and services.
The Disputed Domain Name incorporates the Complainant’s FASTING MIMICKING DIET trademark in its entirety, merely adding the prefix “the”. As stated in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s FASTING MIMICKING DIET trademark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent see section 2.1 of WIPO Overview 3.0).
The Panel determines that the Respondent has not been commonly known by the Disputed Domain Name. The WhoIs records and the website connected to the Disputed Domain Name indicate that the Respondent’s name is Davide Biordi. There are no indications that Respondent has acquired any relevant trademark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
First, the panel finds that the nature of the Disputed Domain Name, which incorporates the Complainant’s FASTING MIMICKING DIET trademark in its entirety plus the article “the”, effectively suggests sponsorship or endorsement by the Complainant. This is reinforced by the fact that the Respondent uses the Disputed Domain Name in connection to a website that displays the Complainant’s trademarks, embedded videos of public speaking events by the Complainant’s founder, information on and a link to the patent of the Fasting Mimicking Diet, etc. (see section 2.5 of WIPO Overview 3.0).
Second, the website connected to the Disputed Domain Name is used to provide information on the Complainant’s patented and trademarked Fasting Mimicking Diet process, products and services, as well as to promote recipes and a website application related to this diet. Such a commercial use of a domain name cannot be considered legitimate as it is likely to mislead Internet users as to source or sponsorship by the Complainant for commercial gain.
Third, the Respondent did not accurately and prominently disclose that he is not associated with the Complainant on the website connected to the Disputed Domain Name and effectively uses the FASTING MIMICKING DIET trademark to offer other products, such as its website application, unrelated to the Complainant’s products and services. As a result, the Respondent also fails the so called “Oki Data test” for legitimate resellers, distributors or service providers of a complainant’s goods or services (seesection 2.8 of WIPO Overview 3.0).
In view of the above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
The Respondent has incorporated the Complainant’s FASTING MIMICKING DIET trademark in its entirety in the Disputed Domain Name and is using the Disputed Domain Name in connection with a website that provides information on the Complainant’s patented and trademarked dietary processes, products, and services. Furthermore, the Respondent included a video of the Complainant’s founder on the website and makes express reference to the Complainant in a message on its homepage. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
By prominently using the Complainant’s trademark in the Disputed Domain Name and on the website connected to the Disputed Domain Name, the Respondent is effectively trading off the Complainant’s goodwill and reputation associated with the FASTING MIMICKING DIET mark to promote its website application and recipes. The Panel therefore finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or the Respondent’s advertised service on the website (see section 3.1.4 of WIPO Overview 3.0).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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.
Flip Jan Claude Petillion
Presiding Panelist
Carol Anne Been
Panelist
Luca Barbero
Panelist
Date: May 31, 2019
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