Life Extension Foundation, Inc. v. Anti-Aging Corp.
Claim Number: FA1009001346163
Complainant is Life Extension Foundation, Inc. ("Complainant"), represented by Darren Spielman of Kain & Associates, Attorneys at Law, P.A., Florida, USA. Respondent is Anti-Aging Corp ("Respondent"), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <life-extension-drugs.com>, registered with CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Honorable John J. Upchurch (Ret.) and Honorable Ralph Yachnin (Ret.) as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2010; the National Arbitration Forum received payment on September 14, 2010.
On September 15, 2010, CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM confirmed by e-mail to the National Arbitration Forum that the <life-extension-drugs.com> domain name is registered with CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM and that Respondent is the current registrant of the name. CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM has verified that Respondent is bound by the CSL COMPUTER SERVICE LANGENBACH GMBH d/b/a JOKER.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@life-extension-drugs.com. Also on September 20, 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.
On November 1, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable John J. Upchurch (Ret.) and Honorable Ralph Yachnin (Ret.) as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s the <life-extension-drugs.com> domain name is confusingly similar to Complainant’s LIFE EXTENSION mark.
2. Respondent does not have any rights or legitimate interests in the <life-extension-drugs.com>domain name.
3. Respondent registered and used the <life-extension-drugs.com>domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Life Extension Foundation, Inc., is engaged in finding scientific methods for addressing disease, aging and health. It and its licensees market and sell a wide range of goods and services. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for several variations of its LIFE EXTENSION marks including: LIFE EXTENSION MAGAZINE (e.g., Reg. No. 2,774,262 filed September 12, 1995; issued October 21, 2003); LIFE EXTENSION FOUNDATION (e.g., Reg. No. 2,924,678 filed January 31, 2003; issued February 8, 2005); and LIFE EXTENSION (e.g., Reg. No. 3,394,959 filed May 25, 2006; issued March 11, 2008).
Respondent, Anti-Aging Corporation, registered the <life-extension-drugs.com> domain name on February 2, 2003. Respondent is a direct competitor of Complainant and uses the disputed domain name to market and sell competing goods and services.
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."
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 submits evidence to show that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for several variations of its LIFE EXTENSION marks including: LIFE EXTENSION MAGAZINE (e.g., Reg. No. 2,774,262 filed September 12, 1995; issued October 21, 2003); LIFE EXTENSION FOUNDATION (e.g., Reg. No. 2,924,678 filed January 31, 2003; issued February 8, 2005); and LIFE EXTENSION (e.g., Reg. No. 3,394,959 filed May 25, 2006; issued March 11, 2008). The Panel finds that Complainant has established rights in its LIFE EXTENSION family of marks that date back to September 12, 1995. 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 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”).
Complainant argues that the <life-extension-drugs.com> domain name is confusingly similar to its LIFE EXTENSION MAGAZINE mark under Policy ¶ 4(a)(i). The Panel notes that the disputed domain name contains the dominant portion of Complainant’s mark after removing the term “magazine,” while replacing the space between the terms of the mark with a hyphen and adds the descriptive term “drugs” and the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that Respondent’s <life-extension-drugs.com> domain name is confusingly similar to Complainant’s LIFE EXTENSION MAGAZINE mark 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 Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Complainant has proven this element.
Finding for Complainant
The Panel is reminded that 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 argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that the WHOIS information for the disputed domain name identifies the domain name registrant as “Anti-Aging Corp.,” which Complainant contends is not similar to the <life-extension-drugs.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based upon the WHOIS information and Complainant’s assertions. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent is using the disputed domain name to market and sell competing goods and services and that Respondent is a direct competitor of Complainant. Complainant contends that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the confusingly similar domain name to market and sell products and services in direct competition with Complainant does 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 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
Complainant has proven this element.
Complainant alleges that Respondent selected the disputed domain name to disrupt Complainant’s business for Respondent’s benefit in the marketplace, and therefore Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that it has been selling drugs, anti-aging vitamins and nutritional supplements, long before Respondent has and that Respondent’s competing use detracts from Complainant’s sales and business opportunities. The Panel finds that Respondent’s use of the disputed domain name diverts Internet users seeking Complainant’s products to Respondent’s competing products is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also 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).
Further, Complainant argues that Respondent’s redirecting of Internet users to Respondent’s competing business for commercial gain is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of the disputed domain name to market and sell competing products for commercial gain is further 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 TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <life-extension-drugs.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Chair
Honorable John J. Upchurch (Ret.)
Honorable Ralph Yachnin (Ret.)
Dated: November 15, 2010
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