national arbitration forum

 

DECISION

 

Natural Supplement Association, Incorporated DBA Experimental and Applied Sciences, Inc. v. Charlie Kalopungi

Claim Number: FA1012001365322

 

PARTIES

Complainant is Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Charlie Kalopungi (“Respondent”), Seychelles.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bodyforllife.com>, registered with Moniker Online Services, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2010; the National Arbitration Forum received payment on January 7, 2011.

 

On December 30, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <bodyforllife.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2011 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@bodyforllife.com.  Also on January 14, 2011, 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 February 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <bodyforllife.com> domain name is confusingly similar to Complainant’s BODY FOR LIFE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <bodyforllife.com> domain name.

 

3.    Respondent registered and used the <bodyforllife.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc., owns the BODY FOR LIFE mark.  For over 10 years, Complainant has used its BODY FOR LIFE mark in connection with the advertising, distribution, and sale of nutritional and dietary supplements, exercise programs, and related services.  Complainant holds multiple trademark registrations for its BODY FOR LIFE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,489,375 issued Sept. 11, 2001).

 

Respondent, Charlie Kalopungi, registered the <bodyforllife.com> domain name on August 1, 2010.  The disputed domain name resolves to a website featuring a directory of third-party links to commercial sites, some of which directly compete with Complainant in the health and fitness industry.

 

Respondent has prior UDRP proceedings against it which resulted in a transfer of the disputed domain names to the complainant in those cases.  See Diners Club Int’l Ltd. v. AA7 GROUP LTD / Charlie Kalopungi, FA 1353407 (Nat. Arb. Forum Dec. 1, 2010); see also Merck Sharp & Dohme Corp. v. Moniker Privacy Services / AA7 GROUP LTD, Charlie Kalopungi, D2010-1286 (WIPO Sept. 21, 2010).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant maintains that is has established rights in its BODY FOR LIFE mark.  In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the panel found that the complainant had established rights in the MILLER TIME mark through its federal trademark registrations.  See also 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.”).  Complainant is not required to register its mark in the country of Respondent.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Here, Complainant holds multiple trademark registrations for its BODY FOR LIFE mark with the USPTO  (e.g., Reg. No. 2,489,375 issued Sept. 11, 2001).  Therefore, the Panel finds that Complainant has demonstrated rights in its BODY FOR LIFE mark through trademark registration with the USPTO according to Policy ¶ 4(a)(i). 

 

Complainant alleges that Respondent’s <bodyforllife.com> domain name is confusingly similar to Complainant’s BODY FOR LIFE mark.  The disputed domain name utilizes Complainant’s entire mark and differs only by the deletion of the spaces between words of the mark, the addition of an additional letter “l”, and the affixation of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the deletion of spaces and the addition of a gTLD do not properly distinguish the disputed domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  The Panel also finds that the addition of a single letter is not enough to distinguish the disputed domain name from Complainant’s mark.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s BODY FOR LIFE mark according to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that 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.”  Here, Complainant has developed a prima facie case in support of its claims against Respondent.  Respondent failed to submit a response to the Complaint, therefore, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See  Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel will examine the record to determine whether or not the Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <bodyforllife.com> domain name.  The WHOIS information identifies Respondent as “Charlie Kalopungi,” which is not similar to the disputed domain name.  Complainant claims that Respondent has no right or license to use the BODY FOR LIFE mark within the domain name.  The Panel sees no additional evidence in the record that would provide a basis for finding that Respondent is commonly known as the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record.

 

The <bodyforllife.com> domain name resolves to a directory website featuring third-party links to commercial sites which compete with Complainant’s health and fitness products.  Respondent most likely receives click-through fees from the featured links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to host a directory website listing links to Complainant’s competitors is not 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  Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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 also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Respondent has prior UDRP proceedings against it which resulted in a transfer of the disputed domain names to complainant.  See Diners Club Int’l Ltd. v. AA7 GROUP LTD / Charlie Kalopungi, FA 1353407 (Nat. Arb. Forum Dec. 1, 2010); see also Merck Sharp & Dohme Corp. v. Moniker Privacy Services / AA7 GROUP LTD, Charlie Kalopungi, D2010-1286 (WIPO Sept. 21, 2010).  The Panel finds that Respondent’s prior UDRP proceedings, which resulted in a transfer of the domain names in those cases, are evidence of a pattern of bad faith use and registration under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

 

Complainant contends that Respondent’s use of the <bodyforllife.com> domain name disrupts its business.  Those intending to purchase Complainant’s health and fitness products may find Respondent’s website as a result of the confusingly similar disputed domain name and purchase the same types of products from one of Complainant’s competitors instead.  The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii).  See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel assumes that Respondent receives click-through fees from the aforementioned links.  Internet users looking for Complainant’s website and services may instead find Respondent’s use of Complainant’s mark in the disputed domain name.  Users might become confused as to Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and third-party links.  Respondent tries to commercially gain from this confusion and misperception through the receipt of click-through fees.  The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met. 

 

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 <bodyforllife.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  February 9, 2011

 

 

 

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