Weil Lifestyle, LLC v. Success
Claim Number: FA0708001054991
Complainant is Weil Lifestyle, LLC (“Complainant”), represented by Scott
D. Brown, of Skadden, Arps, Slate, Meagher & Flom
LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <drweill.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.
On August 6, 2007, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <drweill.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@drweill.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <drweill.com> domain name is confusingly similar to Complainant’s DR. ANDREW WEIL mark.
2. Respondent does not have any rights or legitimate interests in the <drweill.com> domain name.
3. Respondent registered and used the <drweill.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Weil Lifestyle, LLC, is dedicated to the
development and promotion of integrative medicine and supplying healthful
consumer products. Complainant’s part
owner, Dr. Andrew Weil, is a professor at the
Complainant conducts business under the DR. ANDREW WEIL mark and related marks and has several trademark applications pending with the United States Patent and Trademark Office (“USPTO”) for the marks. Complainant also holds trademark registrations for the ANDREW WEIL mark with the European Community (Reg. No. 003773728 issued July 20, 2005) and the Australian Patent Authority (Reg. No. 1,098,686 issued November 23, 2006).
Respondent registered the <drweill.com> domain name on March 5, 2001. Respondent’s disputed domain name previously resolved to a website featuring links to third-party websites, some of which were in direct competition with Complainant’s business. Since Complainant sent Respondent a cease-and-desist letter, the disputed domain name now resolves to an error message indicating that the website “cannot be found.”
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant is not required to own a trademark application to establish rights in the DR. ANDREW WEIL mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds that Complainant has established common law rights in the DR. ANDREW WEIL mark through continuous and extensive use of the mark in connection with Dr. Weil’s integrative medicine products and services for over thirty years. Complainant is a widely-known and respected provider of healthful consumer advice and products, and has expended considerable time and effort promoting Dr. Weil’s philosophy through books, television appearances, and the Internet. Complainant’s pending USPTO trademark applications and its international registrations of the ANDREW WEIL mark and related marks are also indicative of its rights in the mark. Therefore, Complainant’s DR. ANDREW WEIL mark has acquired secondary meaning sufficient to establish common law rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Complainant alleges that Respondent’s <drweill.com> domain name is confusingly similar to Complainant’s DR. ANDREW WEIL mark, and the Panel agrees. The disputed domain name merely omits the period after “DR.,” omits the word “ANDREW” from the mark, and adds an additional letter “l” onto the word “WEIL.” None of these alterations are sufficient to distinguish the disputed domain name from the DR. ANDREW WEIL mark under the Policy. In addition, the inclusion of the generic top-level domain “.com” is irrelevant for the purposes of Policy ¶ 4(a)(i), as a top-level domain is required of all domain names. Thus, the Panel finds that the <drweill.com> domain name is confusingly similar to Complainant’s DR. ANDREW WEIL mark pursuant to Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), the initial burden lies with Complainant to prove that Respondent lacks rights and legitimate interests in the <drweill.com> domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Based on Respondent’s failure to answer the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <drweill.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <drweill.com> domain name, which indicates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate, and there is nothing further in the record to suggest, that Respondent is commonly known by the disputed domain name. In addition, Complainant has not authorized or licensed Respondent to use the DR. ANDREW WEIL mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent was previously using the <drweill.com> domain name to redirect Internet users to a
website displaying links to third-party websites, some of which were in direct
competition with Complainant. The Panel
presumes that Respondent accrued click-through fees when users clicked on these
links. Such use constitutes neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii), and further indicates Respondent’s lack of rights and legitimate
interests in the <drweill.com> domain
name. See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
In addition, Respondent’s <drweill.com> domain name
currently has no active use, as it resolves to an error message indicating that
the site “cannot be found.” This failure to use the disputed domain name also
indicates that Respondent lacks rights and legitimate interests under Policy ¶
4(a)(ii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interests can be found when the
respondent fails to use disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO
Mar. 14, 2000) (finding that failure to provide a product or service or develop
the site demonstrates that the respondent had not established any rights or
legitimate interests in the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further alleges that Respondent registered and is using the <drweill.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii), and the Panel agrees. The disputed domain name previously resolved to a website featuring links in direct competition with Complainant. Such use constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
As mentioned previously, the Panel presumes that Respondent benefited commercially when Internet users were redirected to the website located at the <drweill.com> domain name, which is confusingly similar to Complainant’s DR. ANDREW WEIL mark. Respondent was thus capitalizing on the likelihood of confusion as to Complainant’s affiliation with the disputed domain name. This is further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Respondent is not currently using the <drweill.com> domain name for to resolve to any website, as
the disputed domain name merely resolves to an error message. Such inactivity is additional evidence of
Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Sporty's Farm L.L.C. v.
Sportsman's Mkt., Inc., 202 F.3d 489 (2nd Cir. 2000) cert. denied,
120 S.Ct. 2719 (2000) (finding bad faith where the domain name was not used
until after litigation began and the domain name does not consist of the legal
name of the party).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drweill.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 12, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum