Nutri/System IPHC, Inc v. Debra Brenner / Sky Blue Marketing, Inc.
Claim Number: FA1410001585024
Complainant is Nutri/System IPHC, Inc (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Debra Brenner / Sky Blue Marketing, Inc. (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <nbutrisystem.com>, <nuterisystem.com>, <nutrisdystem.com>, <nutrisyastem.com>, <nutrisysdtem.com>, <nutrisysrtem.com>, <nutrisystemn.com>, <nutrisystenm.com>, <nutrisystewm.com>, <nutrisystrem.com>, <nutrisytstem.com>, <nutrisyustem.com>, <nutruisystem.com>, and <nuytrisystem.com>, registered with Godaddy.Com, LLC.
The undersigned certifies that it has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2014; the National Arbitration Forum received payment on October 15, 2014.
On October 16, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the disputed domain names <nbutrisystem.com>, <nuterisystem.com>, <nutrisdystem.com>, <nutrisyastem.com>, <nutrisysdtem.com>, <nutrisysrtem.com>, <nutrisystemn.com>, <nutrisystenm.com>, <nutrisystewm.com>, <nutrisystrem.com>, <nutrisytstem.com>, <nutrisyustem.com>, <nutruisystem.com>, and <nuytrisystem.com> are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 October 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2014 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@nbutrisystem.com, postmaster@nuterisystem.com, postmaster@nutrisdystem.com, postmaster@nutrisyastem.com, postmaster@nutrisysdtem.com, postmaster@nutrisysrtem.com, postmaster@nutrisystemn.com, postmaster@nutrisystenm.com, postmaster@nutrisystewm.com, postmaster@nutrisystrem.com, postmaster@nutrisytstem.com, postmaster@nutrisyustem.com, postmaster@nutruisystem.com, and postmaster@nuytrisystem.com. Also on October 17, 2014, 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.
A timely Response was received and determined to be complete on November 6, 2014.
On November 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant owns among others the following NUTRISYSTEM trademark registrations with the United States Patent and Trademark Office (“USPTO”):
Ø NUTRISYSTEM
Goods and Services: Conducting a Supervised Program for Weight Reduction and Control, Nutrition, and Exercise.
FIRST USE: 19790700. FIRST USE IN COMMERCE: 19790700
Serial Number: 73383698
Filing Date: September 7, 1982
Registration Number: 1251922
International Registration Number: 0927158
Registration Date: September 20, 1983
Ø NUTRISYSTEM
Goods and Services: conducting a supervised program for weight reduction including accelerated weight reduction and control, nutrition and exercise.
FIRST USE: 19850600. FIRST USE IN COMMERCE: 19850600
Serial Number: 73606917
Filing Date: June 30, 1986
Registration Number: 1429657
Registration Date: February 17, 1987
Ø NUTRISYSTEM
Goods and Services: breakfast foods; namely, cereals, pancake mix, waffles and muffins, sold only through weight loss centers for use in connection with a supervised weight control program.
FIRST USE: 19880000. FIRST USE IN COMMERCE: 19880000
Serial Number: 74031339
Filing Date: February 22, 1990
Registration Number: 1776989
Registration Date: June 15, 1993
Ø NUTRISYSTEM
Goods and Services: breakfast, lunch and dinner entrees having a meat, fish, poultry, vegetable or cheese base; egg based entrees; namely, omelet mixes; dry mixes for making soups; dry mixes for making yogurts; salad dressing; and snack foods; namely, potato chips.
FIRST USE: 19890700. FIRST USE IN COMMERCE: 19890700
Goods and Services: entrees having a pasta base; drinks; namely, dry mixes for making coffee flavored substantially non-dairy food beverages, cocoa flavored substantially non-dairy food beverages, and fruit flavored substantially non-dairy food beverages; artificially flavored maple syrup; dry mixes for making chocolate and vanilla flavored milk shakes; desserts; namely, cookies, fruit flavored bran/fiber bars, and dry mixes for making cupcakes, puddings, flavored gelatin and sherbet; snack foods; namely, pretzels; and crackers and rolls.
FIRST USE: 19890700. FIRST USE IN COMMERCE: 19890700
Goods and Services: dry mixes for making fruit flavored soft drinks.
FIRST USE: 19860500. FIRST USE IN COMMERCE: 19860500
Serial Number: 74031485
Filing Date: February 22, 1990
Registration Number: 1956649
International Registration Number: 0929445
Registration Date: February 13, 1996
Ø NUTRISYSTEM
Goods and Services: dinner entrees having a meat, fish, poultry, vegetable or cheese base.
FIRST USE: 19910605. FIRST USE IN COMMERCE: 19910605
Goods and Services: dinner entrees having a pasta base. FIRST USE: 19910605.
FIRST USE IN COMMERCE: 19910605
Serial Number: 74218824
Filing Date: November 4, 1991
Registration Number: 1731373
Registration Date: November 10, 1992
b. Complainant owns several others NUTRISYSTEM trademark registrations around the world.
c. Complainant has used the trademark NUTRISYSTEM to provide diet and weight loss products and services, for more than 40 years, including but not limited to low glycemic index meal plans, weight management support and counseling, online tools and trackers, mobile apps and cookbooks.
d. The disputed domain names are confusingly similar to the trademark NUTRISYSTEM as each domain name merely interjects a stray letter into the otherwise incorporated trademark, and attaches a generic top-level domain.
e. Respondent lacks rights in the disputed domain names.
f. Respondent is not known by the disputed domain names and is not authorized to use the trademark for domain names.
g. Respondent is not using the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the disputed domain names redirect users to Complainant’s own website in violation of Complainant’s affiliate program.
h. Respondent registered and has used the disputed domain names in bad faith.
i. Respondent is using the disputed domain names to redirect users to Complainant’s own website, which is a violation of the affiliate agreement governing the parties’ relationship.
j. Respondent’s affiliation agreement with Complainant indicates that Respondent had knowledge of Complainant at the time the disputed domain names were registered.
k. Respondent’s disputed domain names are all comprised of typosquatted versions of Complainant’s mark, and seek to impermissibly take advantage of user’s typing errors.
B. Respondent
a. Respondent urges that the disputed domain names do not redirect the Internet user to any site other than Complainant’s own site.
b. Respondent ignored the Cease and Desist letter given that it was not sent by complainant but by CitizenHawk.
1. Complainant owns the trademark NUTRISYSTEM in the United States of America, since September 20, 1983.
2. The disputed domain names are confusingly similar to the trademark NUTRISYSTEM.
3. Respondent does not use the disputed domain names as stated in the Response to redirect internet users: “to the intended destination”. Notwithstanding, the disputed domain names redirect to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Thus, before any notice, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
4. Respondent acquired the disputed domain name and is using it in bad faith.
Paragraph 15(a) of the Rules instruct 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;
(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 contends to be the owner of the trademark NUTRISYSTEM in several jurisdictions around the world to identify diet and weight loss goods and services.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark NUTRISYSTEM (Exhibits E and F to the Complaint), among which it is possible to highlight the following registrations:
Ø NUTRISYSTEM
Goods and Services: Conducting a Supervised Program for Weight Reduction and Control, Nutrition, and Exercise.
FIRST USE: 19790700. FIRST USE IN COMMERCE: 19790700
Serial Number: 73383698
Filing Date: September 7, 1982
Registration Number: 1251922
International Registration Number: 0927158
Registration Date: September 20, 1983
Ø NUTRISYSTEM
Goods and Services: conducting a supervised program for weight reduction including accelerated weight reduction and control, nutrition and exercise.
FIRST USE: 19850600. FIRST USE IN COMMERCE: 19850600
Serial Number: 73606917
Filing Date: June 30, 1986
Registration Number: 1429657
Registration Date: February 17, 1987
Ø NUTRISYSTEM
Goods and Services: breakfast foods; namely, cereals, pancake mix, waffles and muffins, sold only through weight loss centers for use in connection with a supervised weight control program.
FIRST USE: 19880000. FIRST USE IN COMMERCE: 19880000
Serial Number: 74031339
Filing Date: February 22, 1990
Registration Number: 1776989
Registration Date: June 15, 1993
Ø NUTRISYSTEM
Goods and Services: dinner entrees having a meat, fish, poultry, vegetable or cheese base.
FIRST USE: 19910605. FIRST USE IN COMMERCE: 19910605
Goods and Services: dinner entrees having a pasta base. FIRST USE: 19910605.
FIRST USE IN COMMERCE: 19910605
Serial Number: 74218824
Filing Date: November 4, 1991
Registration Number: 1731373
Registration Date: November 10, 1992
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark NUTRISYSTEM for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s trademark NUTRISYSTEM.
In the first place, before establishing whether or not the disputed domain names are confusingly similar to Complainant’s trademark NUTRISYSTEM, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[2].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, WIPO Case No. D2000-0477, the panel stated that:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
Furthermore, the Panel believes that the disputed domain names are confusingly similar to the trademark NUTRISYSTEM. The disputed domain names only differ from the trademark NUTRISYSTEM by either adding one extra character, removing one character, changing one character for an incorrect one, or juxtaposing two juxtaposed characters. This type of behavior is known as “typosquatting”[3].
However, all the disputed domain names contain common or obvious misspelling in which the trademark NUTRISYSTEM remains as the dominant or principal component of the disputed domain names.
Hence, the Panel considers that the reproduction of the trademark NUTRISYSTEM, by the disputed domain names, is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark[4]. Specially since the disputed domain names reproduce Complainant’s trademark without any other distinctive elements, given that the common mistakes or typos do not generate distinctiveness.
The difference between the trademark and the disputed domain names are common and involuntary mistakes. As a result, consumers will presume that the owner of the disputed domain names is the owner of the trademark NUTRISYSTEM.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s trademark NUTRISYSTEM and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[5].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[6]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names because of the following: i) Respondent has not been commonly known by the disputed domain names; ii) Respondent is not sponsored by or legitimately affiliated with Complainant in any way; iii) Complainant has not given Respondent permission to use Complainant’s trademark in a domain name; and iv) Respondent is not using the Disputed Domain Name(s) for a bona fide offering of goods or services.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent states that it uses the disputed domain names to redirect internet users: “to the intended destination”. Nonetheless, the disputed domain names redirect to Complainant’s own website through Complainant’s affiliate program, which is in direct violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. Thus, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.
Moreover, Respondent’s alleged use of the disputed domain names, was rebutted, discredit and disapproved by Complainant, as Respondent statements referred to the non affiliate portion of the website which is not where the disputed domain names redirect.
Furthermore, Respondent did not provide any proof that it has been commonly known by the disputed domain names. On the contrary, Complainant proved that Respondent is an affiliate and knew of Complainant business.
Finally, Respondent did not provide any proof that is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Respondent redirects the disputed domain names to Complainant’s own website through Complainant’s affiliate program[7]. This kind of conduct by an affiliate has been considered opportunistic, as Respondent benefits from its registration and use of the disputed domain names at Complainant’s expense. Hence, it is possible to conclude that Respondent registered the disputed domain names primarily for the purpose of disrupting Complainant’s business.
Furthermore, Respondent redirects the disputed domain names to Complainant’s own website without Complainant’s permission[8]. As a result, the registration and use of the disputed domain names were done in bad faith.
Complainant requested Respondent to cease the use of the disputed domain names; nonetheless, Respondent refused to respond to Complainant’s request.
Moreover, the disputed domain names are an example of typosquatting which also adds to the evidence of bad faith in the circumstances of this case[9].
Hence, the disputed domain names were registered and are used in bad faith pursuant to Policy ¶ 4(a)(iii)[10].
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nbutrisystem.com>, <nuterisystem.com>, <nutrisdystem.com>, <nutrisyastem.com>, <nutrisysdtem.com>, <nutrisysrtem.com>, <nutrisystemn.com>, <nutrisystenm.com>, <nutrisystewm.com>, <nutrisystrem.com>, <nutrisytstem.com>, <nutrisyustem.com>, <nutruisystem.com>, and <nuytrisystem.com> domain names be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: November 25, 2014
COLO 1308 0960 67033/SÁG
4290210391488
[1] See MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; see also The British Broadcasting Corporation v. Jamie Renteria, WIPO Case No. D2000-0050.
[2] See Altec Industries, Inc. v. I 80 Equipment, NAF Claim No. 1437753.
[3] See Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator. WIPO Case No. D2008-1302: “UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights.” See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317 (July 14, 2003). Such insignificant modifications to trademarks is commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (April 17, 2003). “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.” See Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002); see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (August 25, 2000) (ADDVIL.com held confusingly similar to ADVIL); ESPN, Inc. v. West Coast Entertainment, Inc., Nat. Arb. Forum Case No. FA95047 (July 21, 2000) (ESPNS.com held confusingly similar to ESPN)”.
[4] See ER Marks, Inc. and QVC, Inc. v. Hansmann, NAF Claim No. 1381755; see also Oki Data Ams., Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
[5] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[6] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[7] See Expedia, Inc. v. Wpedia.com, FA0705000995669 (Nat. Arb. Forum July 17, 2007): “As a member of Complainant’s affiliate program, Respondent was aware of Complainant’s rights in the EXPEDIA mark when registering the <wxpedia.com> domain name. By registering a confusingly similar domain name while a member of this affiliate program, Respondent has attempted to opportunistically benefit from its registration and use of the disputed domain name at Complainant’s expense. The Panel considers Respondent’s registration and use of the disputed domain name while a member of Complainant’s affiliate program to constitute additional evidence of bad faith under Policy ¶ 4(a)(iii). See Cricket Communc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program)”.
[8] See Deluxe Corporation v. Dallas Internet, Claim Number: FA0203000105216 (Nat. Arb. Forum April 10, 2002): “Moreover, even though Respondent initially linked Complainant’s customers to Complainant’s website through its own site, Respondent did not have permission from Complainant to do so. As a result, the registration and use of the disputed domain name were in bad faith. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant)”.
[9] See Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302: “Respondent's mere act of typosquatting presents ample evidence of bad faith in the circumstances of this case. Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970 (September 12, 2001) (finding that “Respondent has demonstrated bad faith by engaging in ‘typo-piracy' to confuse Internet users and draw them away from Complainant's web site”). Notwithstanding that, Respondent's bad faith in registering the Domain Name is supported by the following undisputed facts: (1) Respondent registered a domain name for use with pharmacy-related products and services that is confusingly similar to the Mark which Complainant has been using for over twenty years and which has been registered with the U.S. Patent and Trademark Office since 1993 for use with pharmacy-related services; (2) there is no relationship between Respondent and Complainant and Complainant has not given Respondent permission to use the Mark for any purpose, including in a domain name or for use on Respondent's website; and (3) Respondent was likely aware of the Mark and yet adopted it for use in the Domain Name and on its website (Respondent's home page states prominently: “Presented by <expresscripts.com>”) to divert Internet users to its website. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001)”.
[10] See State Farm Mut. Auto. Ins. Co. v. Sotelo, FA 1008269 (Nat. Arb. Forum July 17, 2007); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).
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