Semprae Laboratories, Inc. v. Mike Lewis
Claim Number: FA1004001322210
Complainant is Semprae
Laboratories, Inc. (“Complainant”), represented by Cara M. Kearney, of Pepper Hamilton LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zestrareviews.com>, registered with Godaddy.com, Inc..
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010.
On April 30, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zestrareviews.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@zestrareviews.com. Also on May 5, 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 May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <zestrareviews.com> domain name is confusingly similar to Complainant’s ZESTRA mark.
2. Respondent does not have any rights or legitimate interests in the <zestrareviews.com> domain name.
3. Respondent registered and used the <zestrareviews.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Semprae Laboratories, Inc., is a company founded by women and focused on women’s sexuality. One of Complainant’s best selling products is ZESTRA. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZESTRA mark (e.g., Reg. No. 3,222,491 registered on March 27, 2007).
Respondent, Mike Lewis, registered the <zestrareviews.com> domain name on December 15, 2009. The disputed domain name resolves to a website that offers fraudulent reviews of Complainant’s ZESTRA product. The resolving website also displays an advertisement for a competing product and provides links to the website of Complainant’s direct competitor.
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 asserts rights in the ZESTRA mark through its registrations of the mark with the USPTO (e.g., Reg. No. 3,222,491 registered on March 27, 2007). The Panel finds these registrations establish Complainant’s rights in the ZESTRA mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant claims that Respondent’s <zestrareviews.com>
domain name is confusingly similar to its ZESTRA mark. Respondent fully incorporates Complainant’s
mark in the disputed domain name.
Respondent then adds the generic term “reviews” and the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
name. These changes do not sufficiently
distinguish Respondent’s domain name from Complainant’s mark. See
Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <zestrareviews.com> domain name. The burden then shifts to the Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant states that it is not affiliated with Respondent nor has it given Respondent permission to use its ZESTRA mark in a domain name. In addition, the WHOIS information lists the registrant of the disputed domain name as “Mike Lewis.” Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name. Complainant asserts Respondent uses the <zestrareviews.com> domain name to house a spurious review website. Complainant states that Respondent claims to offer “Zestra Reviews and Testimonials” but instead uses the resolving website to provide overwhelmingly negative false reviews. Complainant provides evidence that its Vice President of Direct Marketing, Karen Swanson, attempted to post a positive review of Complainant’s product and that this comment never appeared. Furthermore, the posted comments have remained unchanged since the beginning of April 2010. Finally, the website features a competing product called “G” with links that connect Internet users to Complainant’s direct competitor. Screen shots of Respondent’s website show a prominently displayed advertisement for this competing product. The Panel finds Respondent’s use of the disputed domain name to resolve to a website offering false reviews and links to Complainant’s competitor does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent is intentionally using the disputed domain name to attract Internet users to Respondent’s website for the purpose of diverting traffic to Complainant’s competitor. As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s mark. Respondent also provides numerous false reviews that are designed to divert Complainant’s business to its direct competitor. Respondent furthers this effort by prominently displaying an advertisement for, and links to, Complainant’s competitor. The Panel finds Respondent’s use of the <zestrareviews.com> domain name to redirect Internet users to a website that features an advertisement and links to the website of Complainant’s competitor disrupts Complainant’s business and constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). See 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)); see also 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).
Complainant also claims that Respondent is deliberately using a domain name that is confusingly similar to Complainant’s mark to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Panel finds Respondent uses a confusingly similar domain name to attract Internet users to its fraudulent review website so that it can redirect these users to the website of Complainant’s competitor. Therefore, the Panel finds this use further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (finding that “…Respondent’s disputed domain names must cause Internet users mistakenly to believe that the disputed domain names are affiliated with Complainant. The user confusion that the domain names must cause is evidence that Respondent registered and used the domain names in bad faith.”); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(ii) 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 <zestrareviews.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 9, 2010
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