Weight Watchers International, Inc. v. Private Registration / WhoisGuardService.com
Claim Number: FA1412001596215
Complainant is Weight Watchers International, Inc. (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Private Registration / WhoisGuardService.com (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weightwatvhers.com>, registered with Nanjing Imperiosus Technology Co. Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2014; the National Arbitration Forum received payment on December 19, 2014. The Complaint was submitted in Chinese and English.
On December 22, 2014, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <weightwatvhers.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name. Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. 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 December 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 12, 2015 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@weightwatvhers.com. Also on December 23, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant runs a weight loss, fitness, and self-improvement business under the WEIGHT WATCHERS mark. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 856,202, registered Sept. 3, 1968). The <weightwatvhers.com> domain name is just a misspelling of Complainant’s mark that replaces the letter “c” with “v.”
Respondent has no rights or legitimate interests in the <weightwatvhers.com> domain name. First, Respondent has never been commonly known as this <weightwatvhers.com> domain name. Further, Respondent hosts an unauthorized “survey” on the <weightwatvhers.com> domain name’s website where a reward is promised if Internet users provide specific information.
Respondent has registered and is using the <weightwatvhers.com> domain name in bad faith. Respondent is seeking to profit through a likelihood Internet users will believe the surveys offered on the domain name’s website have some association with Complainant’s WEIGHT WATCHERS business. Respondent is also typosquatting the WEIGHT WATCHERS mark through its use of this domain name. Further Respondent clearly had knowledge of Complainant’s rights when it undertook the registration and use of this Internet domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the weight loss, fitness, and self-improvement industries.
2. Complainant is the registered owner of the WEIGHT WATCHERS mark, registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 856,202, registered Sept. 3, 1968).
3. Respondent registered the disputed domain name on November 15, 2003.
4. Respondent uses the disputed domain name to host an unauthorized “survey” on the <weightwatvhers.com> domain name’s website where a reward is promised if Internet users provide specific information.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant runs a weight loss, fitness, and self-improvement business under the WEIGHT WATCHERS mark. The mark has been registered with the USPTO (e.g., Reg. No. 856,202, registered Sept. 3, 1968). The Panel agrees the registration does suffice to show Complainant’s trademark interest in the WEIGHT WATCHERS mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WEIGHT WATCHERS mark. Complainant goes on to claim that the <weightwatvhers.com> domain name is just a misspelling of Complainant’s mark that replaces the letter “c” with “v.” The Panel finds that such a minor misspelling only enhances the confusing similarity of this domain name, even if a gTLD is added and spacing was removed and the domain name is thus confusingly similar to the trademark. 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.’”); HomeVestors of Am., Inc. v. Sean Terry, FA 1523266 (Nat. Arb. Forum Nov. 11, 2013) (“[T]he Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i).”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WEIGHT WATCHERS mark and to use it in its domain name, making only a minor spelling change;
(b) Respondent registered the disputed domain name on November 15, 2003 and uses it to host an unauthorized “survey” on the <weightwatvhers.com> domain name’s website where a reward is promised if Internet users provide specific information;
(c) Respondent engaged in these activities without the knowledge or approval of Complainant;
(d) Complainant claims that Respondent has never been commonly known as this <weightwatvhers.com> domain name. The Panel notes that “Private Registration” is listed as the registrant of record for this domain name as record in WHOIS. In Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), the panel agreed that in the absence of clear evidence illustrating that a respondent was known by a particular name, there could be no sound reason to find for the respondent under Policy ¶ 4(c)(ii). Here the Panel concludes Respondent is not commonly known as the <weightwatvhers.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant claims that Respondent hosts an unauthorized “survey” on the <weightwatvhers.com> domain name’s website where a reward is promised if Internet users provide specific information. The Panel notes the domain name appears to resolve to a website suggesting that users could provide their input about WEIGHT WATCHERS experiences. See Compl., at Attached Ex. 4. The Panel agrees that “survey” style websites are not bona fide offering, particularly when a confusingly similar domain name is used to promote an unauthorized third-party survey. See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent is seeking to profit through a likelihood Internet users will believe the surveys offered on the domain name’s website have some association with Complainant’s WEIGHT WATCHERS business. The Panel again notes Exhibit 4, showing how the domain name is resolving to a website promoting a “survey.” In Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078, the panel found that there was a likelihood for the respondent to profit through a likelihood of consumer confusion as to the association between the survey and the complainant’s mark in Policy ¶ 4(b)(iv) bad faith. This Panel similarly finds that Respondent has acted in Policy ¶ 4(b)(iv) bad faith here based on use of the domain name for surveys.
Secondly, Complainant argues that Respondent is also typosquatting the WEIGHT WATCHERS mark through its registration of this domain name. The Panel agrees that as the letter “c” (used to reach Complainant’s domain name correctly) and the letter “v” (used to reach this disputed domain name) are next to each other on the standard keyboard, there can be an inference of Policy ¶ 4(a)(iii) bad faith through typosquatting here. See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
Thirdly, Complainant argues that Respondent clearly had knowledge of Complainant’s rights when it undertook the registration and use of this Internet domain name. The Panel agrees that as the domain name’s sole purpose is to suggest that a survey may be taken regarding WEIGHT WATCHERS services, there is sufficient basis for finding Policy ¶ 4(a)(iii) bad faith through an inference of registration with actual knowledge of Complainant’s rights. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <weightwatvhers.com> domain name using the mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <weightwatvhers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 15, 2015
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