Nutri/System IPHC, Inc. v. Usama Ayub
Claim Number: FA1704001725806
Complainant is Nutri/System IPHC, Inc. (“Complainant”), represented by Lisa Lori of Klehr Harrison Harvey Branzburg LLP, Pennsylvania, United States. Respondent is Usama Ayub (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutrisystemturbo.us>, registered with NameCheap, Inc.
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 Forum electronically on April 7, 2017; the Forum received payment on April 7, 2017.
On April 7, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <nutrisystemturbo.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2017 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nutrisystemturbo.us. Also on April 17, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 18,2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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 registered the NUTRISYSTEM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). Respondent’s <nutrisystemturbo.us> domain name is identical or confusingly similar to Complainant’s NUTRISYSTEM mark because it simply adds the generic or descriptive word “turbo” and the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in <nutrisystemturbo.us>. Respondent is not commonly known by the NUTRISYSTEM mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant, nor has Complainant has given Respondent permission to use the mark for any purpose. Further, Respondent does not hold any trademark or intellectual property rights in the <nutrisystemturbo.us> domain name. Respondent also does not use the disputed domain for any bona fide offering of goods or services because Respondent uses the disputed domain name to sell goods and services that directly compete with Complainant’s business (diet and weight loss goods/services). Also, the disputed domain name directs users to a website that currently is designated as “under construction,” even though it previously contained commercial health publications.
Respondent registered or used the <nutrisystemturbo.us> in bad faith. Respondent intends to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by using the disputed domain name to market and sell goods in direct competition with Complainant. Respondent had actual knowledge of Complainant’s NUTRISYSTEM mark because of Complainant’s longstanding fame and notoriety surrounding the NUTRISYSTEM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Nutri/System IPHC, Inc., registered the NUTRISYSTEM mark with the USPTO (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). Respondent’s <nutrisystemturbo.us> domain name is confusingly similar to Complainant’s NUTRISYSTEM mark.
Respondent, Usama Ayub, first registered <nutrisystemturbo.us> on November 4, 2016.
Respondent has no rights or legitimate interests in <nutrisystemturbo.us>. Respondent fails to make an active use of the domain name.
Respondent registered or used the <nutrisystemturbo.us> 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 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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 has rights in the NUTRISYSTEM mark under Policy ¶ 4(a)(i) through registration with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the USPTO).
Respondent’s <nutrisystemturbo.us> domain name is confusingly similar to Complainant’s NUTRISYSTEM mark because it simply adds the generic or descriptive word “turbo” and the ccTLD “.us.”
Respondent has no rights or legitimate interests in <nutrisystemturbo.us>. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of NUTRISYSTEM in a domain name. The WHOIS information for the <nutrisystemturbo.us> domain name lists “Usama Ayub” as the registrant. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as “under construction.” Failure to use a domain name may show a lack of rights and legitimate interests. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Respondent has failed to make an active use of the <nutrisystemturbo.us> domain name which is evidence of bad faith. Failure to make an active use of a confusingly similar domain name constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent had actual knowledge of Complainant's rights in the NUTRISYSTEM mark prior to registering the <nutrisystemturbo.us> domain name. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutrisystemturbo.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 5, 2017
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