Sharper Innovations Inc. d/b/a Slimzone Health Supplements v. c/o SLIMZONE.COM
Claim Number: FA1103001376177
Complainant is Sharper Innovations Inc. d/b/a Slimzone Health Supplements (“Complainant”), Canada. Respondent is c/o SLIMZONE.COM (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slimzone.com>, registered with NamesDirect.
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 March 4, 2011; the National Arbitration Forum received payment on March 4, 2011.
On March 7, 2011, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <slimzone.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect 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 March 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@slimzone.com. Also on March 15, 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 April 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <slimzone.com> domain name is identical to Complainant’s SLIMZONE mark.
2. Respondent does not have any rights or legitimate interests in the <slimzone.com> domain name.
3. Respondent registered and used the <slimzone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sharper Innovations Inc. d/b/a Slimzone Health Supplements, sells weight loss and dietary health supplements under its SLIMZONE mark. Complainant previously registered the <slimzone.com> domain name which it used in connection with its business and through which most of its customer orders have been submitted. The <slimzone.com> domain name is featured prominently on all of Complainant’s product packaging.
Respondent, c/o SLIMZONE.COM, registered the disputed domain name after Complainant inadvertently let its registration of the <slimzone.com> domain name lapse. The disputed domain name resolves to a website that features links to websites offering competing weight loss and dietary health supplements.
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 does not submit any evidence of a federal trademark registration of the SLIMZONE mark. However, the Panel finds that under Policy ¶ 4(a)(i), Complainant need not have a trademark registration in order to establish rights in its mark, so long as Complainant can prove common law rights by establishing proof of secondary meaning associated with its SLIMZONE mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant states that it sells weight loss and dietary health supplements under the brand name SLIMZONE. Complainant indicates that these products have been in existence and on sale since mid-2006 and have a large array of media presence ranging from magazine and print ads to television and online advertisements. Complainant asserts that its SLIMZONE brand products have been sold primarily via ecommerce and online orders on the website resolving from the <slimzone.com> domain name for the past five years, to customers all of the United States and Canada. Complainant was the prior registrant of the <slimzone.com> domain name and submits screenshots that show Complainant’s prior use of the disputed domain name to market and sell its SLIMZONE products. Complainant alleges that it has a database of well over 100,000 customers, many of whom actively order Complainant’s products. Complainant asserts, and submits photographs to prove, that all of its product packaging contains Complainant’s SLIMZONE logo as well as the domain name <slimzone.com>. The Panel finds that Complainant has submitted sufficient evidence of established secondary meaning such that Complainant can be considered to have rights in the SLIMZONE mark for the purposes of Policy ¶ 4(a)(i). See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
The Panel finds that Respondent’s <slimzone.com> domain name is identical to Complainant’s SLIMZONE mark under Policy ¶ 4(a)(i) because the disputed domain name incorporates the entire mark and merely adds the generic top-level domain (“gTLD”) “.com.” See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. 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). Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent does not have a legitimate business under the disputed domain name. Although the WHOIS information identifies the registrant of the disputed domain name as “c/o SLIMZONE.COM,” there is no other evidence in the record to support a finding that Respondent is in fact commonly known by the <slimzone.com> domain name. Without further evidence, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant indicates that Respondent is using the disputed domain name primarily for monetization purposes as the disputed domain name resolves to a website that features links to weight loss and dietary health supplements that compete with Complainant’s own SLIMZONE products. Complainant submits a screenshot of the resolving website showing links to “Weight Loss,” “Diet Pills,” “Fat Loss Supplements,” and “Buy Diet Pills,” among others. The Panel finds that Respondent’s appropriation of a domain name identical to Complainant’s SLIMZONE mark to offer links to competing third-parties is not a bona fide offer 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)).
Complainant submits evidence of its previous use of the <slimzone.com> domain name to market and sell its SLIMZONE brand products. The Panel finds that Respondent’s registration of the disputed domain name after Complainant’s failure to renew its registration can be construed to provide additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <slimzone.com> domain name to display links that directly compete with Complainant’s business of marketing and selling weight loss and dietary health supplements constitutes a disruption of Complainant’s business. Moreover, Complainant asserts that the majority of its orders came from its website, which previously resolved from the <slimzone.com> domain name. Complainant’s inability to use its domain name to market and sell its own SLIMZONE products clearly constitutes a disruption of its business and has a detrimental effect on Complainant’s ability to market and sell its products. Therefore, the Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii). See 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).”); see also 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).
Complainant argues that Respondent registered and is using the disputed domain name primarily for monetization purposes. The Panel presumes that Respondent is in fact receiving some sort of revenue from the displayed third-party links. Therefore, the Panel finds that Respondent both registered and is using the disputed domain name to intentionally attempt to attract Internet users, for commercial gain, to Respondent’s disputed domain name and resolving website by creating a likelihood of confusion as to Complainant’s affiliation with the two. The Panel finds this likelihood of confusion is increased where, as here, Complainant was previously using the <slimzone.com> domain name to market and sell its products and returning Internet users may likely associate the content Respondent has placed on the website with Complainant. Therefore, the Panel finds there to be sufficient evidence to conclude that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
As established previously, Complainant previously registered and use the <slimzone.com> domain name in connection with its marketing and sale of its SLIMZONE brand products. Respondent’s registration and use of the disputed domain name after Complainant’s registration inadvertently lapsed can be considered to be additional evidence of bad faith under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <slimzone.com> domain name be TRANSFERRED from Respondent to Complainant.
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Honorable Karl V. Fink (Ret.), Panelist
Dated: April 8, 2011
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