Life Extension Foundation, Inc. v. PHD Prime
Health Direct Limited
Claim Number: FA0910001289603
PARTIES
Complainant is Life Extension Foundation, Inc. (“Complainant”), represented by Robert C. Kain, Jr., of Kain & Associates, Attorneys at Law, P.A., Florida, USA. Respondent is PHD Prime Health Direct Limited (“Respondent”), British Channel Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifeextensionfoundation.com>,
registered with Tucows Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson, Anne Wallace, Hon. Nelson A. Diaz (ret.) as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 15, 2009; the National Arbitration Forum received a
hard copy of the Complaint on October 16, 2009.
On October 15, 2009, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <lifeextensionfoundation.com>
domain name is registered with Tucows Inc. and that the Respondent is the
current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. 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 October 21, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 10, 2009 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@lifeextensionfoundation.com by e-mail.
A timely Response was received and determined to be complete on
November 4, 2009.
An Additional Submission was received from Complainant on November 9, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On November 12, 2009, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson, Anne Wallace,
Hon. Nelson A. Diaz (ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Life Extension Foundation (herein “LEF”) is one of the world’s largest organizations dedicated to finding scientific methods for addressing disease, aging, and death. Incorporated in 1980, LEF is a non-profit 501(c)(3) corporation that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. As detailed above, LEF is the owner of a family of trademarks relating to its LIFE EXTENSION brand. LEF maintains over 100 domain names as well as various active web sites such as www.lifeextensionfoundation.org, www.LEF.org, www.LifeExtension.com, www.lifeextensionretail.com, www.LifeExtension.RX.com, www.LEF.com and others. The Life Extension Foundation Buyer’s Club, Inc. (“LEFBC”) is a for-profit corporation and licensee of LEF which sells vitamins and other nutritional supplements under the LEF brand name and using LEF’s trademarks.
Life Extension is a monthly magazine first published in 1994 which is currently circulated to a world-wide audience of over 132,000 persons and professional organizations. It delivers up-to-date coverage of the latest scientific and medical breakthroughs from around the world. LEF receives requests to reprint articles from Life Extension from all over the world and the articles are frequently republished worldwide both in print and on the Internet.
LEF has multiple marks relating to LIFE EXTENSION FOUNDATION, and such federal trademark rights prove that the domain is identical or confusingly similar to Complainant’s marks. LEF’s rights to the mark LIFE EXTENSION FOUNDATION are established through the federal registrations stated above, with common law and federally established rights dating back to 1980.
LEF’s trademark rights relate back to the filing date of its registrations was filed in September 1995, which was four years prior to registration of the disputed domain.
LEF’s use of the marks has been established through continuous and extensive commercial use dating to 1980 under Policy ¶ 4(a)(i). Since Respondent registered the disputed domain in 1999, nearly 19 years after LEF began using the marks, this amount of time is abundantly sufficient to establish a distinctive mark and sufficient secondary meaning.
The disputed domain is identical and confusingly similar to LEF’s marks and specifically to the LIFE EXTENSION MAGAZINE mark, because of the addition of the “.com” and the switch of the descriptive and common word FOUNDATION for MAGAZINE. The disputed domain is confusingly similar to LEF’s LIFE EXTENSION marks, as it contains all of the mark, except for the addition of the word “foundation.”
Respondent does not offer “Life Extension” services. Respondent’s use of the domain is not a bona fide offering of goods or services since clicking on nearly any of the links on the page redirects users to Respondent’s competitive web site <primehealthdirect.com>. Visitors to the disputed domain cannot actually purchase any of the competing products from the disputed domain as they are redirected to Respondent’s real domain, <primehealthdirect.com>, when they click on the contact or purchase button.
Respondent is not using the domain in connection with a bona fide offering of services, since it’s merely redirecting the users to its competing web site, which does not sell “Life Extension” goods or services. Respondent sells competitive Sublingual HGH Supplements.
Respondent is not commonly known by the disputed domain name “Life Extension” as contemplated under Policy ¶ 4(c)(ii). The Whois information provided shows that Respondent is “PHD Prime Health Direct Limited.”
Respondent’s use of the domain is clearly commercial and is not a legitimate noncommercial use or fair use manner of a domain.
The second major link on the disputed domain offers users to “purchase” the competing dietary supplements, through a redirection to Respondent’s real domain.
Respondent selected the disputed domain name to disrupt LEF’s business for its own benefit in the marketplace, and therefore has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent uses the confusingly similar domain in order to intentionally attract Internet users to its website and its other online location, namely <primehealthdirect.com> by creating a strong likelihood of confusion with Complainant’s mark, in order to offer goods in direct competition with Complainant, namely dietary and nutritional supplements. These intentional acts are further evidence of bad faith.
Respondent is using the disputed domain name to directly compete with Complainant’s business through the operation of a website offering similar goods, namely dietary and nutritional supplements.
Respondent has engaged in its use of the confusingly similar disputed domain name with the intent to profit from such use through its creation of a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.
As additional evidence of bad faith, there are links at the bottom of the home page located at the disputed domain. The first of these links is for Respondent’s main web site <primehealthdirect.com>.
B. Respondent
The Complainant has failed to meet its burden of proof under each of
the prongs of the Policy and the Complaint must therefore be dismissed. “life extension foundation” is a descriptive term that
describes a `basis` (foundation) for life extension “ For this reason, alone Respondent has a
legitimate interest. Moreover,
Respondent has used the domain name in connection with bona fide goods and services in the nature of (1) producing and supplying Life
Extension Foundation product (2) printing hundreds of thousands of leaflets and
booklets since 1999 which further
establishes its legitimate interest.
There is absolutely no evidence that Respondent had knowledge of Complainant,
its business, its web site or trademarks when it registered the Disputed
Domain, and Complainant has proffered no factual evidence to the contrary. Respondent did not have Complainant’s
trademark in mind when it registered the Disputed Domain. In fact, it was impossible for Respondent to
have had knowledge of Complainant’s registered marks – and bad faith
registration cannot be based on those marks - since the marks were registered after
the Disputed Domain was registered.
Complainant did not apply for its U.S. trademark until January 2003 more
than four years after the Disputed Domain was registered, and the U.S. mark was
not registered until Feb 2005 more than six years after the domain was
registered. These registered marks
cannot provide enforceable rights under the Policy and they cannot serve as a
basis for establishing bad faith registration since Respondent could not have
had knowledge of marks not then in existence at the time when it registered the
Disputed Domain.
Complainant’s case can only be based on its alleged common law
trademark which Complainant alleges to have begun using in USA in 1980 despite
questionable supporting label date documents and despite the fact that the
complainant itself stated in its own corporate board meeting that “the
organization had remained virtually inactive from the years 1977 to 1996” The
disputed domain up until about 2005 (estimate) was in fact completely self
contained with its own order functionality until eventually consolidated onto a
master site(s) over the years. The issue is in any event a red herring because
it is completely normal commercial practice to operate satellite sites to pick
up searches and/or operate as an identifying route /similar to an alphabetical
phone number Currently they have
several other single product satellite websites and have had at least 30-50
others that allowed to lapse over the last decade which then link into either
the corresponding products landing page on the main primehealthdirect.com
master site or the master site home page.
They have been using Life Extension Foundation on a single product in
commerce since 1996/98. They registered the <lifeextensionfoundation.com> domain name in Dec 1999. When
they made the registration they performed various searches and found no
evidence in the UK, Europe or elsewhere of anyone having similar domains or
trademarks other than abandoned. Indeed,
even to this present day there are still only two domain registrations for the
disputed domain name term one being theirs and the other the complainants with theirs predating the
complainants by a significant 18 months length of time.
They did not formally register the domain as a trademark
themselves in 2000 as by that time had
abandoned that product name and instead
was using the term merely as a semi descriptive search term and identifier as
well as description for their life extension / longevity / anti ageing product
sHGH We did not that a `foreign`
entity would subsequently appear and register the domain 18 months later and
then the trademark on Feb 2005 i.e. 6 and 4 years hence - then tell us they had
pre existing common law rights since 1980. They have taken a look at the
various trademarks listed by LEF and would say that the common law rights on
the current live Life Extension Foundation trademark Class 5 Homeopathic
supplements registered in USA 4/6 years after their domain registration seems
to be based entirely on a single melatonin label submitted to USPTO with the
`free-floating` words “The Life Extension Foundation” on an otherwise undated
label with the only aspect suggesting a date being the best before (rev) which
appears to be from 2001 –
Additionally Trademark rights under U.S. law derive from commercial use
of a mark, regardless of whether it has been registered. They do not see any
use of the mark Life Extension Foundation in class 5 other than that one
mentioned melatonin even though LEF claim continuous
and extensive use. Additionally extracts from an LEF board meeting
states that “the organization had remained virtually inactive from the years
1977 to 1996” which is self evidence of non use.
Further, one of the obligations incumbent on a trademark owner who
wishes to preserve its rights is to police the use of business names that may
be confusingly similar to the owner’s mark.
Complainant left ten years from our domain registration and 4-6
years from obtaining a trademark for Life Extension Foundation before making
its complaint
In respect of the complainants other registrations for` Life Extension`
and `LEF` as well as `Life Extension Magazine. They feel that there really is
no case to answer. Complainant cannot own worldwide exclusive use of the term
Life Extension as this is descriptive and in common daily use and LEF has
absolutely no similarity as the acronym has not been used enough to establish
worldwide secondary meaning
PHD could not have known of Complainant’s
future or potential Life Extension Foundation mark at the time of the domain
name registration, and therefore to have registered the domain name in bad
faith. The registering of the disputed domain by PHD was a random occurrence.
The disputed domain name is not formed of an invented word, coined by
Complainant. It is formed of two words that are relatively common, generic and
descriptive, apt for the services provided by PHDs website. Moreover, one can
consider that the large delay between the domain name registration Dec 1999 and
LEFs complaint Oct 16th 2009 neutralizes the bad faith accusation,
according to the “Doctrine of Laches.” It must also be remembered that domain
name registrations are made based on the “first come, first served”
principle. If `LEF` wanted to register
the disputed domain name, it should have done so prior to Dec 1999 because the
two words of which it is constituted belong to the English language and were
available to the world to register.” Indeed why did a multi million dollar
organization with an apparent `worldwide audience of 132,000 persons and
professional organizations` which is according to itself “one of the worlds largest
organizations for death disease and ageing” take until 18 months after our
registration to even register the more relevant .org version of
lifeextensionfoundation.org and more importantly why ten years later it has
still not registered any of the other extension suffixes
LEF may have latched onto the notion that HGH
is our top selling product and by taking our domain name can receive
substantial free traffic we have created as a result of printing and
distributing millions of printed brochures and booklets. The fact is that sHGH
is one of our most profitable products in terms of margins and at the time our
latest website was created it was the top product for that month
C. Additional Submissions
Complainant
In its Additional Submission Complainant restates its position and that Respondent PHD challenges Complainant LEF’s corporate existence from 1977 through 1996 based on a corporate board meeting extract. PhD’s characterization that LEF was “inactive” is not correct in light of LEF’s enclosed evidence showing an active corporate status from 1997 through 2009. PHD does not provide sales records for the LIFE EXTENSION product, nor sales amounts for such product. Further, on its Response, PHD contradicts its earlier “statement of use” of LIFE EXTENSION and admits: “lifeextensionfoundation.com was registered December 1999 initially for our Life Extension / Longevity / Anti ageing product `Life Extension Foundation` and for the future possibility that complainant might set up a corporate entity (profit or non profit) of the same name. That product was discontinued shortly after and so a website was not immediately developed and the corporate name idea was also abandoned.” PHD does not provide sales records for the LIFE EXTENSION product, nor sales amounts for such product. Further, on its Response, PHD contradicts its earlier “statement of use” of LIFE EXTENSION and admits: “lifeextensionfoundation.com was registered December 1999 initially for our Life Extension / Longevity / Anti ageing product `Life Extension Foundation` and for the future possibility that we might set up a corporate entity (profit or non profit) of the same name. That product was discontinued shortly after and so a website was not immediately developed and the corporate name idea was also abandoned.” PHD’s statements about prior self contained sales through the disputed domain are irrelevant and not determinative of proving good faith bona fide use. The only relevant data to be reviewed by the Panel is data showing use of the domain as of the date of the UDRP filing. LEF directs the Panel’s attention to the fact that LEF registered and began using its domain <LifeExtension.com> in February 1999, before PHD registered the disputed domain in December, 1999. A domain search for LIFE EXTENSION would have revealed LEF’s ownership of <LifeExtension.com>. PHD then later claims that “registering of the disputed domain was a random occurrence.” This admission of randomness contradicts the so-called “search” for LIFE EXTENSION FOUNDATION. LEF relies upon its common law trademark rights and its numerous trademark registrations and applications for LIFE EXTENSION products and services. PHD generally operates in the U.K. but its evidence shows that it also operated in the U.S.
Respondent
In its Additional Submission Respondent restates its position and
Respondent PHD challenges Complainant LEF’s corporate existence from 1977
through 1996 based on a corporate board meeting extract. Complainant assumes
that they do not understand the legal concept of constructive knowledge. They did not deliberately fail to make more
enquiries. There were no more enquiries to make beyond the web searches we
made. The only proof of complainant’s common law rights in the 05 category of
Homeopathic supplements essentially rests on a basic photocopied label that the
complainant submitted for their (post disputed domain registration) life
extension foundation trademark registration in 2004. This proof exists quite
likely only in complainants internal
corporate archives and is neither published nor recorded anywhere else in
printed or electronic form. How could we possibly have found this in 1999?
FINDINGS
The Panel determines that Complainant has
established its rights in the mark under Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or
legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that Complainant’s application date of September 12, 1995 of its federal registration for the LIFE EXTENSION MAGAZINE mark predates Respondent’s registration date of December 17, 1999 of the <lifeextensionfoundation.com> domain name. The Panel finds that Complainant has established rights in the LIFE EXTENSION MAGAZINE mark pursuant to Policy ¶ 4(a)(i) as of September 12, 1995 through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,774,262 issued October 21, 2003, filed September 12, 1995, date of first use October 1994). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the Panel finds that Complainant need not hold a
registration for a mark in order to establish rights in that mark under Policy
¶ 4(a)(i) provided that Complainant can establish common law rights in that
mark through a sufficient showing of secondary meaning in that mark. See Zee TV USA, Inc.
v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006) (finding that the
complainant need not own a valid trademark registration for the ZEE CINEMA mark
in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also
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).
Complainant, in its Complaint and
Additional Submission, contends that it began using the LIFE EXTENSION MAGAZINE
mark in October of 1994 and has continuously used this mark since that
time. Complainant has submitted a copy
of its federal registration of the mark showing a first use date of October
1994. In its Additional Submission,
Complainant submitted purported evidence of continuous use of the mark. The
Panel agrees with Complainant’s contention, and finds that Complainant has established
secondary meaning in the mark. The Panel
further finds that Complainant has established common law rights in the LIFE
EXTENSION MAGAZINE mark as of October 1994 under Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive [or] have
acquired secondary meaning.”); see also
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).
Furthermore, Complainant argues that is has common law rights in the LIFE EXTENSION FOUNDATION mark as of October 17, 1980 because it has continually used the mark since that time. Complainant, in its Additional Submission, submitted several news articles identifying Complainant of the source of the products bearing the LIFE EXTENSION FOUNDATION mark. Complainant, in its Complaint, submitted a USPTO registration of the mark (Reg. No. 2,924,678 issued February 8, 2005, filed January 31, 2003, date of first use October 17, 1980). The Panel finds this evidence compelling and, therefore, finds that Complainant has established secondary meaning in the mark. The Panel finds that Complainant has established common law rights in the LIFE EXTENTION FOUNDATION mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, supra; see also Tuxedos By Rose, supra.
Complainant contends that Respondent’s <lifeextensionfoundation.com> domain name is confusingly similar to its LIFE EXTENSION MAGAZINE mark. The disputed domain name contains a significant portion of the mark, replaces the word “magazine” with the word “foundation,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel agrees with Complainant’s contention, and finds that the <lifeextensionfoundation.com> domain name is confusingly similar to Complainant’s LIFE EXTENSION MAGAZINE under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant asserts that the <lifeextensionfoundation.com>
domain name is identical to
Complainant’s LIFE EXTENSION FOUNDATION mark because the deletion of the spaces
with the mark and the addition of the gTLD “.com” are irrelevant. The Panel finds that the <lifeextensionfoundation.com> domain name is identical to the
LIFE EXTENSION FOUNDATION mark under Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and
add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”); see also Victoria’s Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to the complainant’s BODY BY VICTORIA mark).
While
Respondent contends that the <lifeextensionfoundation.com> domain
name is comprised of common, descriptive terms and as such cannot be found to
be identical or confusingly similar to either of Complainant’s mark, the Panel
finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark. See Tammy Upwall and Michael Upwall
d/b/a Got Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat. Arb. Forum Feb. 21, 2008)
(“Respondent contends that the <gotbeautyproducts.com>
domain name is comprised of generic terms, and that Complainant is not
exclusively associated with the GOT BEAUTY mark. Therefore, Respondent alleges that the
<gotbeautyproducts.com> domain name is not confusingly similar to
Complainant’s mark. However, the Panel
finds that such a determination is not necessary under Policy ¶ 4(a)(i) since this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain name is
identical or confusingly similar to Complainant’s mark.”); see also Eastern Metal Supply, Inc. v. Texas International Property
Associates - NA NA, FA 1238822 (Nat. Arb. Forum Feb. 2, 2009) (“Respondent
alleges that the <easternmetalsupply.com> domain name is comprised of
generic terms. This point has
merit. However, this argument is not
directly applicable to Policy ¶ 4(a)(i), but will be
discussed in greater detail in the analyses of Policy 4(a)(ii) and
(iii).”).
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it
does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under UDRP ¶ 4(a)(ii) before the
burden shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.
Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends that Respondent is not commonly known by the <lifeextensionfoundation.com> domain name because the WHOIS information for the disputed domain name lists “PHD Prime Health Direct Limited” as the registrant. Complainant further contends that it has not licensed or otherwise authorized Respondent to use any of Complainant’s marks. Respondent, in its Response, admits that it is not commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <lifeextensionfoundation.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that the <lifeextensionfoundation.com>
domain name resolves to a
website that sells competing anti-aging and dietary supplement products. The Panel finds that Respondent’s use of the
disputed domain name does not represent a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent’s “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”); see
also Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the
respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Complainant contends that Respondent’s use of the <lifeextensionfoundation.com> domain name to sell competing products disrupts its business. The Panel finds that such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant asserts that Respondent
is commercially gaining from a likelihood of confusion as to Complainant’s
affiliation with the resolving website through Respondent’s use of the <lifeextensionfoundation.com>
domain name to sell
competing products. The Panel finds that Respondent’s use of the disputed
domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifeextensionfoundation.com>
domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
Hon. Carolyn Marks Johnson, Anne Wallace,
Hon. Nelson A. Diaz (ret.) Chair, Panelist
Dated: November 25th, 2009
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