national arbitration forum

 

DECISION

 

Weight Watchers International, Inc. v. tom david

Claim Number: FA1307001509790

PARTIES

Complainant is Weight Watchers International, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is tom david (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buy-weightwatchers.com>, registered with GODADDY.COM, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his has no known conflict in serving as Panelist in this proceeding.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.

 

On July 16, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <buy-weightwatchers.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 2013 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@buy-weightwatchers.com.  Also on July 17, 2013, 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 August 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant uses the WEIGHT WATCHERS mark to provide weight loss and nutritional services. Complainant has registered the WEIGHT WATCHERS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 856,202 registered on September 3, 1968).

 

Respondent registered the <buy-weightwatchers.com> domain name on December 11, 2012.  The domain name adds the term “buy” and a hyphen to Respondent’s mark. The introduction of a hyphen and the generic top-level domain (“gTLD”) “.com” are irrelevant under the Policy, as is the deletion of the mark’s space.

 

Respondent is not commonly known by the domain name, and the only verifiable evidence as to Respondent’s identity is the WHOIS database that lists Respondent as “tom david.” Respondent is not one of Complainant’s licensees, nor does Respondent have any other authorization to make use of the WEIGHT WATCHERS mark in domain names. Respondent uses the <buy-weightwatchers.com> domain name to advertise various weight loss products under the WEIGHT WATCHERS mark and stylized variations thereof.

 

Respondent is seeking to impersonate Complainant through the at-issue’s domain name’s retail business.

 

Respondent seeks to disrupt Complainant’s business by using the domain name to solicit weight loss products.

 

Respondent has constructive, if not actual, knowledge of Complainant’s rights. It is unlikely that Respondent would otherwise use Complainant’s entire mark in a domain name for purposes of selling competing goods.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns USPTO trademark registrations for its WEIGHT WATCHERS mark.

 

Complainant’s trademark rights in WEIGHT WATCHERS predate Respondent’s registration of the at-issue domain name.

 

The WHOIS information for the at-issue domain name identifies “tom david” as the registrant.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent’s at-issue domain name addresses a website that Respondent is using to offer weight loss products.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant established rights in the WEIGHT WATCHERS mark under Policy ¶ 4(a)(i) through its registration of said mark with the USPTO. 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.”).

 

In forming the at-issue domain name Respondent prefixes Complainant’s WEIGHT WATCHERS mark, less its space, with “buy” followed by a hyphen “-“ and then adds the generic top-level domain name “.com” to the resulting string.  The space, top level domain name, and the hyphen are generally immaterial for the purposes of the Policy. See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); see also 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)). Furthermore, the generic term “buy” only adds to the confusing similarity between the domain name and Complainant’s mark since the term suggests the fact that Complainant offers services that may be bought. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Therefore the Panel concludes that Respondent’s <buy-weightwatchers.com> domain name is confusingly similar to the WEIGHT WATCHERS mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

The WHOIS information for the at-issue domain names identifies the domain name registrant as “tom david” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the at-issue domain name domain name. The Panel therefore finds that Respondent is not commonly known by the <buy-weightwatchers.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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).

 

Respondent uses the confusingly similar <buy-weightwatchers.com> domain name to advertise various weight loss products under the WEIGHT WATCHERS mark. The <buy-weightwatchers.com> website promotes “WEIGHT WATCHERS weight-loss soft gel” and clearly attempts to pass itself off as Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).

 

Respondent seeks to disrupt Complainant’s business by using the <buy-weightwatchers.com> domain name to market weight loss products. As mentioned above, Respondent employs the WEIGHT WATCHERS mark in selling its weight-loss gel product. By using the domain name in this manner Respondent demonstrates its bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (finding respondent’s use of a complainant’s mark in a domain name website that offers competing services) necessarily disrupts complainant’s business).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the WEIGHT WATCHERS mark when it registered the <buy-weightwatchers.com> domain name.  Respondent’s prior knowledge of Complainant’s rights is evident from the notoriety of Complainant’s mark and the manner in which Respondent uses the <buy-weightwatchers.com> website in its scheme to trade on Complainant’s trademark and offer competing goods.  Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii).See Cellular One Group v. Paul Brien, No. D2000-0028 (WIPO Mar. 10, 2000) (where respondent had prior actual knowledge of complainant’s trademark and no legitimate interest in mark, panel had “no alternative but to agree with Complainant that registration of the Domain Name was deliberately designed to trade on the goodwill in the Complainant’s trademarks and therefore was in bad faith”); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).

 

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 <buy-weightwatchers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  August 13, 2013

 

 

 

 

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