national arbitration forum

 

DECISION

 

ZonePerfect Nutrition Company v. LWD Marketing LLC

Claim Number: FA1012001365608

 

PARTIES

Complainant is ZonePerfect Nutrition Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is LWD Marketing LLC (“Respondent”), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zoneperfectbars.com>, registered with Internet.bs Corp.

 

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 30, 2010; the National Arbitration Forum received payment on January 10, 2011.

 

On January 3, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <zoneperfectbars.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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@zoneperfectbars.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 8, 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 <zoneperfectbars.com> domain name is confusingly similar to Complainant’s ZONE PERFECT mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, ZonePerfect Nutrition Company, owns the ZONE PERFECT mark and has used the mark for more than 10 years in connection with the distribution and sale of nutritional bars and other educational and informational products and services on fitness and exercise.  Complainant holds multiple trademark registrations for its ZONE PEFRECT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,294,807 issued November 23, 1999).

 

Respondent, LWD Marketing LLC, registered the <zoneperfectbars.com> domain name on July 27, 2010. The disputed domain name resolves to a website featuring links to third-party commercial websites.

 

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 contends that it has established rights in its ZONE PERFECT mark.  Previous panels have held that a complainant can establish rights in a mark through its federal trademark registration.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to 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.”).  Here, Complainant has presented evidence of its multiple trademark registrations of the ZONE PERFECT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,294,807 issued November 23, 1999).  Therefore, the Panel concludes that Complainant has established its rights in the ZONE PERFECT mark through its federal trademark registration under Policy ¶ 4(a)(i). 

 

Complainant argues that Respondent’s <zoneperfectbars.com> domain name is confusingly similar to Complainant’s ZONE PERFECT mark.  The disputed domain name incorporates Complainant’s entire mark and only differs by deleting the space between the terms of the mark, adding the descriptive term “bars,” and adding the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the deletion of a space and the addition of a gTLD do not sufficiently distinguish the disputed domain name to avoid a finding of confusing similarity.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  Also, the Panel finds that the addition of a descriptive word like “bars,” which relates to Complainant’s business of selling health foods including nutritional bars, does not properly distinguish the disputed domain name from Complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  The Panel concludes that Respondent’s <zoneperfectbars.com> domain name is confusingly similar to Complainant’s ZONE PERFECT mark according to Policy ¶ 4(a)(i).

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel found that a “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 made a prima facie case in support of its claims against Respondent.  Respondent failed to submit a response to the Complaint, therefore, the Panel may determine that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel chooses to first determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making a determination.

 

Complainant argues that Respondent is not commonly known by the <zoneperfectbars.com> domain name.  The WHOIS information identifies Respondent as “LWD Marketing LLC,” which is nothing like the disputed domain name.  Complainant also asserts that Respondent owns no rights to the ZONE PERFECT mark and is not authorized to use the mark within the disputed domain name.  As there is no further evidence which would support a finding that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent is not commonly known by the <zoneperfectbars.com> under Policy ¶ 4(c)(ii).  See 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); see also 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).

 

According to Complainant, Respondent uses the <zoneperfectbars.com> domain name to resolve to a website featuring Complainant’s ZONE PERFECT mark and numerous links to third-party websites.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of a confusingly similar disputed domain name to mislead Internet users by displaying Complainant’s mark and links to third-party sites 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

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

 

Registration and Use in Bad Faith

 

Complainant maintains that Respondent uses the disputed domain name to host a website featuring Complainant’s ZONE PERFECT mark and links third-party commercial sites.  The Panel infers that Respondent receives click-through fees from these links.  Internet users searching for Complainant may find Respondent’s website as a result of the use of Complainant’s mark on the site and within the disputed domain name.  Users might then become confused and believe that, even if the website and links displayed are not those of Complainant, they are at least affiliated with, or sponsored by Complainant..  Respondent attempts to profit from this confusion by receiving click-through fees.  The Panel finds that Respondent’s use of the <zoneperfectbars.com> domain name is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in 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 <zoneperfectbars.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  February 9, 2011

 

 

 

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