Zoneperfect Nutrition Company v. Gabriel Lim
Claim Number: FA1101001367740
Complainant is Zoneperfect Nutrition Company (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Gabriel Lim (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoneperfectbars.org>, registered with GoDaddy.com 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2011; the National Arbitration Forum received payment on January 20, 2011.
On January 17, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <zoneperfectbars.org> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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.org. Also on January 21, 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 14, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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, 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 <zoneperfectbars.org> domain name is confusingly similar to Complainant’s ZONE PERFECT mark.
2. Respondent does not have any rights or legitimate interests in the <zoneperfectbars.org> domain name.
3. Respondent registered and used the <zoneperfectbars.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zoneperfect Nutrition Company, is the owner of the ZONE PERFECT mark, which Complainant has registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,294,807 issued November 23, 1999). Complainant uses its ZONE PERFECT mark in connection with the design, advertising, distribution, and sale of nutrition bars, informational media, and educational services on such subjects as fitness and exercise, and other related products and services.
Respondent, Gabriel Lim, registered the disputed domain name on February 6, 2010. The disputed domain name resolves to a pay-per-click website featuring links to third-party websites, some of which compete with Complainant’s offerings in the health and nutrition market.
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 its ZONE PERFECT mark by virtue of its trademark registrations for the mark with the USPTO (e.g., Reg. No. 2,294,807 issued November 23, 1999). Prior panels have held that a complainant’s registration of a mark with the USPTO is sufficient evidence of the complainant’s rights in that mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has successfully established rights in its ZONE PERFECT mark under Policy ¶ 4(a)(i). 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 alleges that Respondent’s <zoneperfectbars.org> domain name is confusingly similar to Complainant’s ZONE PERFECT mark. The disputed domain names contains Complainant’s mark in its entirety, absent the space, and then merely adds the descriptive term “bars,” an obvious allusion to one of Complainant’s product offerings, and the generic top-level domain (“gTLD”) “.org.” The Panel finds that the addition of a term descriptive of Complainant’s business does not alleviate the threat of confusing similarity under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that, as spaces are impermissible in a domain name and a top-level domain is a required element, Respondent’s removal of the space and addition of “.org” do not distinguish the disputed domain name from the mark. 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)). Therefore, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Respondent’s <zoneperfectbars.org> domain name is confusingly similar to Complainant’s ZONE PERFECT mark.
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.’’). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <zoneperfectbars.org> domain name. Complainant asserts that, upon information and belief, Respondent is not commonly known by Complainant’s mark, nor does Respondent operate a business or other organization under such mark or name and does not own any trademark or service mark rights in this mark. The WHOIS information for the disputed domain name indicates that the registrant is “Gabriel Lim.” The Panel has examined the record and has failed to find any evidence that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name 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 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’s disputed domain name resolves to a pay-per-click website featuring links to other websites, some of which sell products that compete with those offered by Complainant under its ZONE PERFECT mark. The Panel presumes that Respondent profits by way of referral fees when Internet users visit Respondent’s resolving website and click on the displayed links. Therefore, the Panel finds that Respondent is not using the disputed domain name 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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)).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
The Panel finds that Respondent’s registration and use of the disputed domain name for the purpose of displaying links to third-party websites in competition with Complainant amounts to a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent is obtaining commercial gain from its use of the <zoneperfectbars.org> domain name, as the disputed domain name resolves to a pay-per-click website which displays a list of hyperlinks, some of which lead to the websites of Complainant’s competitors. Complainant presumes, and the Panel agrees, that each time an Internet user clicks on one of these displayed links, Respondent receives compensation from the various website owners who are linked through the website resolving from the <zoneperfectbars.org> domain name. Complainant indicates that Respondent likely registered and uses the confusingly similar disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with Complainant’s ZONE PERFECT mark. The Panel finds that Complainant’s allegations are supported by the evidence in the record and, therefore, the Panel concludes that Respondent has demonstrated bad faith registration and use pursuant to 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 14, 2010
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