Floyd S. Dillard, M.D. v. Private Registrations Aktien Gesellschaft c/o Domain Admin
Claim Number: FA1111001414110
Complainant is Floyd S. Dillard, M.D. (“Complainant”), represented by Seán F. Heneghan, Massachusetts, USA. Respondent is Private Registrations Aktien Gesellschaft c/o Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dillarddietdesigns.com>, registered with Answerable.com (I) Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2011; the National Arbitration Forum received payment on November 4, 2011.
On November 7, 2011, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <dillarddietdesigns.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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 November 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@dillarddietdesigns.com. Also on November 8, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <dillarddietdesigns.com> domain name is confusingly similar to Complainant’s DILLARD DIET DESIGNS INC. mark.
2. Respondent does not have any rights or legitimate interests in the <dillarddietdesigns.com> domain name.
3. Respondent registered and used the <dillarddietdesigns.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Floyd S. Dillard, M.D., offers weight reduction diet planning services under its DILLARD DIET DESIGNS mark. Complainant began offering its diet planning services under its mark in 2003. Complainant organized a business around its weight loss program in 2005 and opened stores across the state of Florida under its DILLARD DIET DESIGNS. Complainant also owns a trademark registration for its DILLARD DIET DIMENSIONS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,356,882 filed October 18, 2006; registered December 18, 2007).
Respondent, Private Registrations Aktien Gesellschaft c/o Domain Admin, registered the <dillarddietdesigns.com> domain name on August 10, 2006. The disputed domain name resolves to a website that host hyperlinks that resolve to Complainant’s competitors.
Respondent was a respondent in previous UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See Aditya Birla Minacs Worldwide Inc. v. Private Registrations Aktien Gesellschaft, FA 1384653 (Nat. Arb. Forum June 1, 2011); see also Avery Dennison Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1385350 (Nat. Arb. Forum June 14, 2011); see also Scholarship Am., Inc. v. Private Registrations Aktien Gesellschaft, FA 1387326 (Nat. Arb. Forum June 16, 2011); see also Archstone Communities LLC v. Private Registrations Aktien Gesellschaft, FA 1390530 (Nat. Arb. Forum June 30, 2011); see also IPS Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1390865 (Nat. Arb. Forum Sept. 23, 2011); see also Mediacom Commc’ns Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1403156 (Nat. Arb. Forum Sept. 15, 2011); see also Regions Asset Co. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1407742 (Nat. Arb. Oct. 19, 2011).
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 presents common law rights arguments as to its DILLARD DIET DESIGNS INC. mark. Complainant does not own a trademark registration for this mark, but the Panel concludes that a trademark registration is not required to establish rights in a mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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)).
Complainant began offering weight reduction diet planning services to the general public in 2003 and, in 2005, Complainant began operating six storefront offices in Florida under the DILLARD DIET DESIGNS mark. Complainant markets its dietary products online under its DILLARD DIET DESIGNS mark and operates the <dillarddiet.com> website to offer its online retail services. Complainant also has held itself out in advertisements, in brochures, and online under its DILLARD DIET DESIGNS mark. The Panel determines that Complainant has established common law rights in its DILLARD DIET DESIGNS mark pursuant to Policy ¶ 4(a)(i), dating back to 2005. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark). As Complainant’s common law rights in its DILLARD DIET DESIGNS mark date farther back than Complainant’s DILLARD DIET DIMENSIONS mark, the Panel chooses to conduct its Policy ¶ 4(a)(i) analysis with the DILLARD DIET DESIGNS mark.
Respondent’s <dillarddietdesigns.com> domain name only differs from Complainant’s DILLARD DIET DESIGNS INC. mark by the removal of the spaces and the term “INC.” in the mark and the addition of the generic top-level domain (“gTLD”) “.com.” Based on these minor changes, the Panel concludes that Respondent’s <dillarddietdesigns.com> domain name is confusingly similar to Complainant’s DILLARD DIET DESIGNS mark under Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <dillarddietdesigns.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <dillarddietdesigns.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has not presented any evidence or arguments that it is commonly known by the <dillarddietdesigns.com> domain name. The WHOIS information lists “Private Registrations Aktien Gesellschaft c/o Domain Admin” as the registrant of the disputed domain name. Complainant claims that Respondent is not affiliated or associated with Respondent and that Complainant has not authorized Respondent’s use of the DILLARD DIET DESIGNS mark. Thus, the Panel concludes that Respondent is not commonly known by the <dillarddietdesigns.com> domain name pursuant to 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 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).
Respondent’s <dillarddietdesigns.com> domain name resolves to a website that contains hyperlinks that resolve to competing businesses. The Panel infers that Respondent commercially benefits from these hyperlinks. Based on this use, the Panel holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <dillarddietdesigns.com> domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent was a respondent in previous UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See Aditya Birla Minacs Worldwide Inc. v. Private Registrations Aktien Gesellschaft, FA 1384653 (Nat. Arb. Forum June 1, 2011); see also Avery Dennison Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1385350 (Nat. Arb. Forum June 14, 2011); see also Scholarship Am., Inc. v. Private Registrations Aktien Gesellschaft, FA 1387326 (Nat. Arb. Forum June 16, 2011); see also Archstone Communities LLC v. Private Registrations Aktien Gesellschaft, FA 1390530 (Nat. Arb. Forum June 30, 2011); see also IPS Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1390865 (Nat. Arb. Forum Sept. 23, 2011); see also Mediacom Commc’ns Corp. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1403156 (Nat. Arb. Forum Sept. 15, 2011); see also Regions Asset Co. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1407742 (Nat. Arb. Oct. 19, 2011). The Panel concludes that Respondent registered and uses the <dillarddietdesigns.com> domain name in bad faith pursuant to 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 Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent’s registration and use of the <dillarddietdesigns.com> domain name to host competing hyperlinks redirects Internet users from Complainant to Complainant’s competitors, which likely disrupts Complainant’s business. Thus, the Panel concludes that Respondent registered and uses the <dillarddietdesigns.com> domain name in bad faith pursuant to 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).
Respondent presumably benefits from the aforementioned hyperlinks by receiving click-through fees. As Respondent is using an identical disputed domain name to commercially benefit, the Panel determines that Respondent’s registration and use of the <dillarddietdesigns.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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.’”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <dillarddietdesigns.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 20, 2011
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