Freelife International Holdings, LLC v. Lim Gunawan Santoso
Claim Number: FA1004001322096
Complainant is Freelife International Holdings, LLC (“Complainant”), represented by Christopher
A. Reid, of FreeLife International Holdings, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gochiforfreelife.com>, registered with GoDaddy.com.
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 April 29, 2010.
On May 2, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <gochiforfreelife.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gochiforfreelife.com. Also on May 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2010, 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" through submission of a Written Notice, as defined in Rule 1. 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 <gochiforfreelife.com> domain name is confusingly similar to Complainant’s GOCHI and FREELIFE marks.
2. Respondent does not have any rights or legitimate interests in the <gochiforfreelife.com> domain name.
3. Respondent registered and used the <gochiforfreelife.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Freelife International Holdings, LLC, is an international marketing company that sells health and wellness products under the FREELIFE mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on February 6, 2001 (Reg. No. 2,426,194). Complainant has also registered the GOCHI mark with the USPTO on July 29, 2008 (Reg. No. 3,476,489). Complainant uses the GOCHI mark to promote its GOCHI brand juice products around the world.
Respondent registered the <gochiforfreelife.com> domain name on January 24, 2010. The disputed domain name resolves to a website that contains the GOCHI and FREELIFE marks. The disputed domain name previously featured a link to the third-party website of another direct sales company.
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.
The Panel finds that Complainant has established rights in
the FREELIFE mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (Reg. No. 2,426,194 issued February 6, 2001). See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (finding that the complainant’s federal trademark registrations for the
CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights
in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante,
FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant
had submitted evidence of its registration with the USPTO, “such evidence
establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The Panel also finds that Complainant has established rights
in the GOCHI mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (Reg. No. 3,476,489 issued July 29, 2008). See
Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005)
(finding from a preponderance of the evidence that the complainant had
registered its mark with national trademark authorities, the Panel determined
that “such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see
also
Complainant contends that
Respondent’s <gochiforfreelife.com>
domain name is confusingly similar to both its FREELIFE mark and its GOCHI mark.
The <gochiforfreelife.com>
domain name is a combination of Complainant’s FREELIFE and GOCHI mark, with the
additions of the generic term “for” and the generic top-level domain (“gTLD”)
“.com.” Combining two of a complainant’s
marks does nothing to distinguish a domain name from those marks. Also, neither
the addition of a generic term, nor the addition of a gTLD sufficiently
distinguishes a domain name from an incorporated mark for the purposes of
Policy ¶ 4(a)(i).
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain name is confusingly similar to both Complainant’s FREELIFE mark and Complainant’s GOCHI mark pursuant to Policy ¶
4(a)(i). See Nintendo of Am.
Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where respondent combined the complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name); see also L.L. Bean, Inc. v. ShopStarNetwork, FA
95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word
“shop” with the complainant’s registered mark “llbean” does not circumvent the
complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy);
see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545
(Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is
irrelevant when establishing whether or not a mark is identical or confusingly
similar, because top-level domains are a required element of every domain
name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <gochiforfreelife.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and that Respondent has failed to respond to the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is not commonly known
by the <gochiforfreelife.com> domain name. Complainant acknowledges that Respondent had
been a distributor of Complainant’s products, and as such had limited license
to use Complainant’s trademarks, but Complainant contends that agreements and
policies governing Respondent’s business relationship with Complainant strictly
prohibited Respondent from registering domain names using Complainant’s
marks. The WHOIS information for the
disputed domain name lists the domain name registrant as “Lim Gunawan Santoso.” Because of this evidence and Respondent’s
failure to show any evidence contrary to Complainant’s contentions, the Panel
finds that Respondent is not commonly known by the <gochiforfreelife.com>
domain name pursuant
to Policy ¶ 4(c)(ii). See Victoria’s
Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given
the Complainants’ established use of their famous
Complainant contends
that Respondent maintains a website at the <gochiforfreelife.com> domain name that features the FREELIFE and GOCHI
marks and causes confusion with Complainant’s website and business. The Panel finds that featuring
Complainant’s marks on the <gochiforfreelife.com> domain name is
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). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also
Respondent previously maintained a website at the <gochiforfreelife.com> domain name that featured links to the third-party website for a direct sales company. Complainant contends that Respondent was using the <gochiforfreelife.com> domain name to promote a business that competes with Complainant. The Panel finds that this use of the <gochiforfreelife.com> domain name was 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). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Complainant’s business is being disrupted because of the confusion caused by the similarity between the FREELIFE and GOCHI marks and the confusingly similar <gochiforfreelife.com> domain name (registered January 24, 2010). Complainant contends that this confusion previously resulted in diversion of Internet users to competitors of Complainant. The Panel finds that Respondent’s use of the disputed domain name has disrupted Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent had been gaining
commercially through this diversion, through the sales that Respondent made as
a representative of the company that owns the third-party website. The Panel finds that this was an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See MathForum.com, LLC v.
Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly
similar to the complainant’s mark and the domain name was used to host a
commercial website that offered similar services offered by the complainant
under its mark); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's website).
The Panel 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 <gochiforfreelife.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 10, 2010
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