Sensa Products, LLC v. WhoisGuard Protected / WhoisGuard
Claim Number: FA1203001433215
Complainant is Sensa Products, LLC (“Complainant”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA. Respondent is WhoisGuard Protected / WhoisGuard (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info>, registered with eNom, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 12, 2012, eNom, Inc confirmed by e-mail to the National Arbitration Forum that the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names are registered with eNom, Inc and that Respondent is the current registrant of the names. eNom, Inc has verified that Respondent is bound by the eNom, 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 March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2012 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@sensareviews.info, postmaster@sensa-reviews.info, and postmaster@whatissensa.info. Also on March 14, 2012, 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 April 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following factual and legal grounds: (UDRP Rule 3(b)(ix).
[a.] The Infringing Domain Names are confusingly similar to Sensa’s SENSA mark. UDRP Rule 3(b)(ix)(1): UDRP ¶4(a)(1).
Dr. Alan Hirsch, creator of the SENSA® Weight-Loss System, has appeared on Dateline NBC, The Oprah Winfrey Show, CNN, The CBS Early Show, Good Morning America and Extra TV. Since its launch, the SENSA® Weight-Loss System has been reviewed in hundreds of local, national and international media sources. As a result of Sensa’s use and registration of the SENSA marks in 2009, and as a result of the substantial publicity generated by Sensa’s unique product, Sensa enjoys strong rights in its mark for dietary weight control.
Sensa has spent in excess of Thirty-four Million dollars ($34,000,000.00) on advertising, including radio at $7,349,979, print ads at $2,479,729, Shop NBC, Home Shopping Network and affiliate marketing.
Complainant SENSA owns two U.S. Trademarks and foreign marks as well. These registrations are incontestable under U.S. Trademark law and are conclusive evidence of: (1) the validity of the SENSA mark as a service mark; (2) the validity of the mark registration; (3) Sensa’s ownership of the SENSA mark; and (4) Sensa’s exclusive right to use the SENSA mark in commerce. 15 U.S.C. § 1115(b); see also Reed Elsevier, Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum, Mar. 18, 2004). Therefore, this Panel will not need to analyze the validity of the SENSA mark or perform any analysis of trademark law. Rather, the Panel need only apply the Policy to Sensa’s incontestable trademark rights.
Sensa’s ownership of its Federal Trademark Registrations for SENSA is sufficient, under the UDRP, to establish rights in the SENSA mark. See Miller Brewing Co. v. Miller Family, FA104177 (Nat. Arb. Forum, Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its Federal Trademark Registrations). Therefore, Sensa has rights in its SENSA mark under UDRP ¶4(a)(1) based on its registrations of the mark with the United States Patent and Trademark Office and non-U.S. agencies.
Respondents’ infringing Domain Names are confusingly similar to Complainant’s SENSA mark because <SensaReviews.info>, <Sensa-Reviews.info> and <WhatIsSensa.info> are virtually identical to the SENSA mark. Under the UDRP, the slight difference between the SENSA mark and <SensaReviews.info>, <Sensa-Reviews.info> and <WhatIsSensa.info> does not offset the overwhelming similarity between the infringing Domain Names and Sensa’s well-established mark.
Not only does Respondent use Complainant’s SENSA trademark in its Domain Names, but its web sites virtually copy Complainant’s web site complete with the SENSA mark. Further, the pages are replete with ads for products that compete with Complainant’s products. The Respondent merely adds the words “reviews” and “what is” to the Complainant’s mark. As a result, Respondent’s use of SENSA within its Domain Names is likely to cause confusion with the Complainant’s mark.
[b.] Respondent does not possess any legitimate rights or interest in the Infringing Domain Names. UDRP Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent cannot establish legitimate rights or interests in the infringing Domain Names because Sensa already owns the SENSA mark. Under UDRP ¶4(c.), Respondent can only establish legitimate rights or interests in the infringing Domain Names if: (1) before notice of the dispute, it was using the Domain Names in connection with a bona fide offering of goods or services; (2) it is commonly known by the Domain Names; or (3) it is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain. See UDRP ¶4(A)(II); 4(c). Respondent cannot demonstrate any of these three requirements.
Respondent is using the infringing Domain Names for commercial gain by using hyperlinks to competing products of the Complainant, which hyperlinks are featured prominently on its web sites. Respondent is not connected to Sensa. So Respondent’s use of the infringing Domain Names to unfairly compete with Sensa is not a bona fide offering of goods or services pursuant to UDRP ¶4(c)(1).
The WHOIS information lists the registrant of the disputed domain name as WHOIS GUARD. Using the WHOIS information, it appears that the Respondent here is not nominally similar to Complainant’s mark and thus may not say that it is commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).
A respondent does not make a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of a disputed domain name when the domain name resolves to a website that contains competing hyperlinks. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007).
Based upon Sensa’s wide-spread use of the well-known SENSA mark in the dietary supplement industry, Respondent’s registration of the infringing Domain Names, to offer directly-competitive products through hyperlinks to competitors, was clearly intended to trade off of consumer recognition of the SENSA mark.
[c.] Respondent registered and is using the infringing Domain Names in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP ¶4(A)(III).
Respondent registered and uses the <SensaReviews.info>, <Sensa-Reviews.info> and <WhatIsSensa.info> domain names in bad faith under a Policy ¶4(b)(ii) evaluation. A respondent’s registration and use of a disputed domain name to provide competing hyperlinks disrupts a complainant’s business, constituting evidence supporting findings of bad faith registration and use. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).
The Respondent registered <SensaReviews.info> on February 27, 2011, <Sensa-Reviews.info> on November 20, 2011, and <WhatIsSensa.info> on November 29, 2011, all in Bad Faith and has used them in Bad Faith since then.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds:
(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.
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."
Paragraph 4(a) of the Policy requires Complainant must prove each of the following three elements to transfer or cancel a domain name:
(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.
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.”).
Complainant contends it owns rights in the SENSA mark under Policy ¶4(a)(i). Complainant presents the Panel with evidence of its trademark registrations for its SENSA mark with the USPTO (e.g., Reg. No. 3,583,092 registered March 3, 2009) and OHIM (Reg. No. 706,871 registered April 4, 2009). Such evidence sufficiently proves Complainant owns rights in the SENSA mark for the purposes of Policy ¶4(a)(i). See 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.”); see also Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding that the complainant’s OHIM trademark registration was sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶4(a)(i)).
Complainant also claims Respondent’s <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names are confusingly similar to Complainant’s SENSA mark. Complainant argues Respondent has simply added generic terms, such as “reviews,” “what,” and/or “is,” to Complainant’s mark. All of the disputed domain names contain the generic top-level domain (“gTLD”) “.info” and the <sensa-reviews.info> domain name includes a hyphen. Such additions and alterations to Complainant’s SENSA mark do not adequately distinguish the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names from Complainant’s mark under Policy ¶4(a)(i). See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii), and then the burden shifts to Respondent to show it has rights or legitimate interests. 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 UDRP ¶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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues Respondent is not commonly known by the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names. Complainant claims the WHOIS information, which identifies “WhoisGuard Protected / WhoisGuard” as the registrant of the disputed domain names, is evidence Respondent is not commonly known by the domain names. Respondent, by failing to respond, did not contradict Complainant’s argument and did not present any affirmative evidence that Respondent is, in fact, commonly known by the disputed domain names. This Panel agrees and holds Respondent is not commonly known by the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names pursuant to 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant claims Respondent uses the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names to resolve to websites with competing hyperlinks. Complainant provided the Panel with screenshots of the resolving websites, which contain hyperlinks entitled “Sensa Free,” “Nutrisystem-Official Site,” “Medfast-Official Site,” etc. Complainant argues Respondent commercially benefits from these hyperlinks by receiving click-through fees. Based on this information, the Panel concludes Respondent makes 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 <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶4(a)(ii) satisfied.
According to Complainant, Respondent’s registration and use of the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names for the purpose of hosting websites that contain competing hyperlinks disrupts Complainant’s business. This Panel agrees and finds Respondent registered and uses the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain names in 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 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).
Furthermore, this Panel finds using a “privacy” registration service in a commercial web hosting context raises a rebuttable presumption of bad faith registration and use. There is no explanation about why Respondent has utilized a privacy service this for these domains. It may be reasonable to use a privacy service when a domain name is being used for personal reasons. When a domain name is being sued for commercial purposes, this Panel is hard pressed to find a legitimate reason to conceal the owner’s true identity. There is a valid reason to conceal the Respondent’s identity under these facts.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <sensareviews.info>, <sensa-reviews.info>, and <whatissensa.info> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, April 16, 2012
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