Nutri/System IPHC, Inc v. Bill Dash
Claim Number: FA1410001585136
Complainant is Nutri/System IPHC, Inc (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Bill Dash (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mutrisystem.com> and <nutrisysten.com>, registered with Godaddy.Com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2014; the National Arbitration Forum received payment on October 16, 2014.
On October 17, 2014, Godaddy.Com, LLC, confirmed by e-mail to the National Arbitration Forum that the <mutrisystem.com> and <nutrisysten.com> domain names 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@mutrisystem.com, postmaster@nutrisysten.com. Also on October 22, 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 12, 2014.
On November 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i). Complainant uses the NUTRISYSTEM mark to provide diet and weight loss products and services. Complainant owns the NUTRISYSTEM mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). The disputed domain names are confusingly similar to the NUTRISYSTEM mark as each domain name substitutes a single letter in the mark, and attaches a generic top-level domain.
Policy ¶ 4(a)(ii). Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not known by the disputed domain names and is not authorized to use the NUTRISYSTEM mark for the same. Respondent is neither using the disputed domain names for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, the disputed domain names redirect Internet users to Complainant’s own website—a violation of the affiliate agreement governing the parties’ relationship.
Policy ¶ 4(a)(iii). Respondent registered and has used the disputed domain names in bad faith. Respondent is using the disputed domain names to redirect users to Complainant’s own website, which is a violation of the affiliate agreement. In addition, Respondent’s affiliation agreement with Complainant proves that Respondent had knowledge of Complainant at the time the disputed domain names were registered. Finally, the disputed domain names are all comprised of typosquatted versions of Complainant’s mark, and seek to take advantage of user’s typing errors.
B. Respondent
The disputed domain names take users to Complainant’s own website, and do not “redirect” users away from their intended destination. The disputed domain names were both registered July 13, 2003.
Complainant, Nutri/System IPHC, Inc, uses the NUTRISYSTEM mark to provide diet and weight loss products and services. Complainant owns the NUTRISYSTEM mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983).
Respondent, Bill Dash, registered the <mutrisystem.com> and <nutrisysten.com> domain names on July 13, 2003. Respondent is using the disputed domain names to redirect users to Complainant’s own website.
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.
Complainant has rights in the NUTRISYSTEM mark under Policy ¶ 4(a)(i) through registrations with the USPTO (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The disputed domain names are confusingly similar to the NUTRISYSTEM mark under Policy ¶ 4(a)(i) as each domain name substitutes a single letter in the mark, and attaches a generic top-level domain (“gTLD”). The <mutrisystem.com> domain name alters the mark by substituting a single letter “m” for the “n” in NUTRISYSTEM, and <nutrisysten.com> replaces the letter “m” for the “n.” These minor alterations to the NUTRISYSTEM mark are insufficient to negate confusing similarity pursuant to Policy ¶ 4(a)(i). See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); 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.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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).
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not known by the disputed domain names and is not authorized to use the NUTRISYSTEM mark in a domain name. The WHOIS record identifies “Bill Dash” as the registrant. Accordingly, Respondent is not commonly known by the <mutrisystem.com> and <nutrisysten.com> 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).
Respondent is not using the <mutrisystem.com> and <nutrisysten.com> domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or for a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Respondent uses typosquatted versions of Complainant’s mark to redirect Internet users to Complainant’s own website. See Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003)(registering a domain name which differs by one letter from the complainant’s commercial website, and using that domain name to redirect Internet consumers to the complainant’s website as a part of the complainant’s affiliate program was not a bona fide offering of goods or services nor a noncommercial use of the domain name).
Respondent’s <mutrisystem.com> and <nutrisysten.com> domain names are typosquatted versions of Complainant’s mark intended to take advantage of user’s typing errors, which shows bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent had knowledge of Complainant at the time the <mutrisystem.com> and <nutrisysten.com> domain names were registered. Therefore, Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mutrisystem.com> and <nutrisysten.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 2, 2014
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