Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. v. PRIVATE WHOIS
Claim Number: FA1012001365597
Complainant is Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is PRIVATE WHOIS (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bodyforlif.com>, registered with BARGIN REGISTER, INC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2010; the National Arbitration Forum received payment on January 9, 2011.
Although the National Arbitration Forum attempted to contact BARGIN REGISTER, INC. on repeated occasions, the National Arbitration Forum was unable to receive a confirmation that the <bodyforlif.com> domain name is registered with BARGIN REGISTER, INC. and that Respondent is the current registrant of the name. The registrar and parties were notified on February 8, 2011 that the Forum was instructed by ICANN to proceed without verification.
On February 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@bodyforlif.com. Also on February 10, 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 March 9, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bodyforlif.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 <bodyforlif.com> domain name.
3. Respondent registered and used the <bodyforlif.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the BODY FOR LIFE mark in connection with the design, advertising, distribution and sale of nutritional and dietary supplements, and for books, audio, video and digital media featuring exercise programs and nutrition advice and other related products and services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BODY FOR LIFE mark (e.g., Reg. No. 2,489,475 issued September 11, 2001).
Respondent registered the <bodyforlif.com> domain name on December 27, 2006. The disputed domain name resolves to a website that provides hyperlinks to Complainant’s competitors as well as third-party websites that are unrelated to Complainant’s business.
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 BODY FOR LIFE mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,489,475 issued September 11, 2001). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the BODY FOR LIFE mark pursuant to Policy ¶ 4(a)(i). See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). Moreover, the Panel finds that it is irrelevant whether Complainant holds trademark registrations for the BODY FOR LIFE mark with the trademark authority in the country in which Respondent resides. See 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).
Complainant contends the <bodyforlif.com> domain name is confusingly similar to its BODY FOR LIFE mark. Respondent omits the spaces between the terms in Complainant’s mark. Respondent also creates a misspelling of the mark by omitting the letter “e” from “life,” the third term in the mark, in the disputed domain name. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that omitting spaces from the terms of a mark and adding a gTLD to a mark do not negate a finding of confusingly similar. Additionally, the Panel finds that omitting a single letter from a mark does not sufficiently distinguish a domain name from the mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); 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.”). Therefore, the Panel concludes that Respondent’s <bodyforlif.com> domain name is confusingly similar to Complainant’s BODY FOR LIFE mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show that Respondent lacks rights and legitimate interests in the <bodyforlif.com> domain name under Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may interpret 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 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 submit a Response, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that it has not authorized Respondent to use its BODY FOR LIFE mark. Additionally, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds that the evidence in the record indicates that Respondent is not commonly known by the <bodyforlif.com> 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 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).
Complainant avers the <bodyforlif.com> domain name resolves to directory website that lists hyperlinks to Complainant’s competitors as well as third-party websites that are unrelated to Complainant’s business. Complainant alleges Respondent profits from its use of the disputed domain name through the receipt of pay-per-click fees. Complainant submits screen shots of the resolving website. These images show a site that displays hyperlinks with titles like “Fitness,” “Bodybuilding,” “Education Grant,” “Student Loan,” “How to Build Muscle Fast,” and “Serious Muscle Growth.” The Panel finds that Respondent uses the disputed domain name to operate a pay-per-click website. Therefore, the Panel holds that Respondent does not use the <bodyforlif.com> domain name to make 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <bodyforlif.com> domain name redirects Internet users seeking Complainant’s nutrition and exercise products and services to a website that provides hyperlinks to Complainant’s competitors. Accordingly, the Panel finds Respondent’s use of the <bodyforlif.com> domain name disrupts Complainant’s business, which amounts to bad faith 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent presumably profits from its use of the <bodyforlif.com> domain name through the receipt of pay-per-click fees. Furthermore, Respondent’s <bodyforlif.com> domain name is confusingly similar to Complainant’s BODY FOR LIFE mark. Therefore, the Panel finds that the evidence in the record suggests that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s BODY FOR LIFE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Consequently, the Panel holds that Respondent’s behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bodyforlif.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 11, 2011
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