Leiner Health
Services Corp. v. ESJ Nutritional Products
Claim Number: FA0307000173362
PARTIES
The Complainant is Leiner Health Services Corp., Carson, CA (“Complainant”)
represented by Michael A. Painter, Esq.
of Isaacman, Kaufman & Painter. The Respondent is ESJ Nutritional Products, Carson City, NV (“Respondent”).
REGISTRAR AND
CONTESTED DOMAIN NAME
The contested domain name at issue is <yourlifemedicine.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she
has acted independently and impartially and to the best of his or her knowledge
has no known conflict in serving as Panelist in this proceeding.
Mr. Peter L. Michaelson, Esq. as
Panelist.
PROCEDURAL
HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy then in effect (“Supplemental Rules”).
The Complainant submitted a Complaint to
the National Arbitration Forum (the “Forum”) electronically on July 25, 2003;
the Forum received a hard copy of the Complaint, together with accompanying
Exhibits 1-4, on July 28, 2003.
On July 30, 2003, Network Solutions, Inc.
(NSI) confirmed by e-mail to the Forum that the domain name <yourlifemedicine.com> is
registered with NSI and that the Respondent is the current registrant of the
name. NSI has verified that the
Respondent is bound by the NSI registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 21, 2003 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@yourlifemedicine.com
by e-mail.
An electronic version of the Response was
received by the Forum and determined to be complete on August 22, 2003; a hard
copy version, together with Exhibits 1-11, was also received by the Forum on
the same date. The Respondent served an
initial version of the Response, submitted on-line, to WIPO rather than to the
Forum on August 21, 2003. WIPO notified
the Respondent of its error via an e-mail dated August 22, 2003. Given that: (a) WIPO received the Response
on a timely fashion; (b) the Respondent’s error in having sent the Response to
the incorrect dispute resolution service provider (WIPO rather than the Forum)
appears to be inadvertent; and (c) as noted below and as a result of the
Response, the Complainant then filed an additional submission through which,
inter alia, it did not contest the timeliness of the Response and hence waived
any objection it might have had therewith, the Panel views the Response as
having been timely filed and thus has fully considered it.
The Complainant timely filed an
additional submission, together with Exhibits 5-7, with the Forum on August 26,
2003. The Panel has fully considered
this submission as well.
On September 3,
2003, pursuant to the Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as Panelist and set
a due date of September 17, 2003 to receive the decision from the Panel.
RELIEF SOUGHT
The Complainant requests that the
contested domain name be transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1.
Confusing similarity/identicality
The Complainant contends that the
contested domain name is confusingly similar to the Complainant's registered
trademarks and service mark, i.e. its “YOUR LIFE” marks.
Hence, the Complainant concludes that the
requirements of paragraph 4(a)(i) of the Policy are satisfied.
2.
Rights and legitimate interests
The Complainant
contends that the Respondent has no rights or legitimate interests in the
contested domain name.
Specifically, the Complaint avers that:
(i) the Respondent adopted and
registered the contested domain name long subsequent to the Complainant's
adoption of its “YOUR LIFE” marks;
(ii) the Respondent adopted
and registered that domain name with the sole intent to attain commercial gain
by misleadingly diverting consumers by leading them to believe that use of the
contested domain name is by Complainant or is sponsored or endorsed by
Complainant;
(iii) through the
Respondent's unfair and misleading use of the domain name, the Respondent's
continued use is causing damage to Complainant's “YOUR LIFE” marks over which
the Complainant has no control; and
(iv) the Complainant has
directed correspondence to the Respondent at the address maintained in the
files of NSI demanding a transfer of the contested domain name to the
Complainant. Although the Complainant's
written notice to the Respondent was delivered, the Respondent has failed or
otherwise refused to respond.
Thus, the
Complainant concludes that the Respondent cannot demonstrate any rights or
legitimate interests in the contested domain name pursuant to paragraph
4(a)(ii) of the Policy.
3.
Bad faith use and registration
The Complainant
contends that the Respondent has registered and is using the contested domain
name in bad faith in violation of the Policy.
Specifically, the Complainant states that
the contested domain name is substantially similar to the Complainant's “YOUR
LIFE” marks and is purportedly used for services which are the same as or are
legally related to the Complainant's services.
In view of this, the Complainant avers that the Respondent’s actions,
which are solely intended for commercial gain, are creating a likelihood of
confusion in the minds of Internet users as to the source, sponsorship,
affiliation or endorsement of the Respondent’s web site with the Complainant --
when apparently no relationship exists between the Complainant and the
Respondent.
B. Respondent
1.
Confusing similarity/identicality
The
Respondent contends that the contested domain name is not confusingly similar
to the Complainant's “YOUR LIFE” marks
Specifically,
the Respondent states that the contested domain name is used to forward or
point Internet users to the Respondent's Internet site at <esj1.com> and
there through are redirected to the Respondent's bulletin board “Your Life
Medicine Bulletin Board”, also known as <yourlifemedicine.com> "The
Mother Of All Bulletin Boards".
The
Respondent states that it is the registered owner of the domain name
<esj1.com> and ten other domain names which function to forward Internet
users to the <esj1.com> web site.
These other domain names include: <vitaminforless.com>,
<buyanything4less.com>, <yourhealthvitamins.com>, <yourlifemedicine.com>,
<cogitoergosumvitamins.com>, <ithinkthereforeiamvitamins.com>,
<cogitoergosummedicine.com>, <ithinkthereforeiammedicine.com>,
<invitaminswetrust.com> and <inmedicinewetrust.com>.
Furthermore,
the Respondent avers that the contested domain name, <yourlifemedicine.com>, is used for services which are not the
same as or are not legally related to the Complainant's services. The
Respondent states that the Complainant is the registered owner of the
<yourlifevitamins.com> domain name, which reaches an Internet site used
to provide information regarding vitamins and dietary food supplement products
manufactured by the Complainant.
The
Respondent states that its web site at <esj1.com> provides an online
retail store service for various brand names of over-the-counter medicine,
health products, vitamins, mineral, herbs, nutritional, dietary supplements,
homeopathic remedies, home essentials, home electronics and airlines tickets.
The
Respondent also notes that the welcome page of the <esj1.com> site states
clearly the mission and goal of the Respondent as that of avoiding confusion.
Lastly,
the Respondent points to the following domains names, which it believes are
identical or similar to the Complainant's existing domain names,
<yourlifevitamins.com> and all of which the Respondent contends are then
available for registration through NSI:
<yourlifevitamins.net>, <yourlifevitamins.org>,
<yourlifevitamins.biz>, <yourlifevitamins.info>,
<yourlifevitamins.us>, <yourlifevitamins.cc>,
<yourlifevitamins.biz>, <yourlifevitamins.tv>, <your‑life‑vitamins.com>,
<yourlifevitamin.com>, <yourlifevitamine.com>,
<yourlifevitamines.com> and <your‑life‑vitamin.com>.
2.
Rights and legitimate interests
The Respondent does not appear to
specifically counter the Complainant’s allegations regarding the Respondent’s lack
of rights and legitimate interests in the contested domain name.
3. Bad Faith
The
Respondent contends that in view of the domain names noted above that are also
similar to the Complainant’s “YOUR LIFE” marks and are available for
registration through NSI, the Respondent is “not a cybersquatter which will
cause damage to those marks”. Further,
the Respondent contends that the availability of those names further indicates
that the Respondent has registered the contested domain name in good faith and
with no intent to attract, for commercial gain, Internet users to the
Respondent's web site by creating a likelihood of confusion with Complainant's
“YOUR LIFE” marks as to the source, sponsorship, affiliation or endorsement of
the Respondent's site.
4.
Reverse Domain Name Hijacking
The
Respondent requests the Panel consider whether the Complainant's actions in
filing the Complaint constitute reverse domain name hijacking under the Policy.
C.
Additional Submission
Through its additional submission, which,
as noted above, the Panel has considered, the Complainant, though not taking
any issue with the timeliness of the Response, rebuts various contentions set
forth in the Response.
First, the Complainant states that the Respondent’s contention, that its use of
the contested domain name, for services which are not the same or are not
legally related to the Complainant's services, has no merit. In that regard, the Complainant states that
its “YOUR LIFE” marks have been in continuous use for vitamins and dietary food
supplements since 1975 and thus have gained substantial recognition by the
public. As evidence of that, the
Complainant points to a 1999 Gallup Study of Vitamin Use in the United States
(a copy of which it provided in Exhibit 5 to its Additional Submission). Based on this study, the Complainant
comments that “The public's awareness of the “YOUR LIFE” trademark places it
among the well-known brands of vitamins sold in the United States”.
Furthermore, the Complainant states that
it is the owner of the domain name <yourlifevitamins.com> and its web
site (hard-copy pages of which appear in Exhibit 6 to the Complainant’s
Additional Submission), reachable through that name, is specifically directed
to provide information and market vitamins and dietary food supplement products
designated by Complainant's “YOUR LIFE” marks.
The Complainant also states that that site provides Internet users with
locations of retailers at which the Complainant's products can be purchased and
allows those users to obtain coupons which can be used for the purchase of the
Complainant's “YOUR LIFE” products.
Moreover, the Complainant states that the
address for the Respondent's web site is <esj1.com> (hard-copies of
various pages from the Respondent’s site appear in Exhibit 7 to the
Complainant’s Additional Submission).
The Complainant avers that the contested domain name has no independent
purpose other than to link to the <esj1.com> site. As shown in that exhibit, the Respondent's
web site markets vitamins and dietary food supplements manufactured by third
parties, including manufacturers which are direct competitors of the
Complainant. By providing a domain name
which incorporates the Complainant's “YOUR LIFE” marks, the Complainant
contends that Internet users are likely to be confused, mistaken or deceived
into believing that the Respondent's web site is presented by the source of the
Complainant's “YOUR LIFE” vitamins or that the source of the “YOUR LIFE”
vitamins sponsors or endorses the Respondent's web site.
Hence, the Complainant concludes that use
and registration of the contested domain name <yourlifemedicine.com> was and is in bad faith since its purpose
is nothing more than to enhance the commercial gain of the Respondent by
creating a likelihood of confusion with the Complainant's “YOUR LIFE” marks.
FINDINGS
A copy of the
WHOIS registration record for the contested domain name appears in Exhibit 1 to
the Response. This record indicates that the Respondent registered the <yourlifemedicine.com> domain name on
October 26, 2001 with NSI.
A. The Complainant’s “YOUR LIFE” marks
The Complainant owns four federal
trademark applications for the term “YOUR LIFE” and has provided, collectively
in Exhibits 1-4 to the Complaint, a copy of the federal registration, as issued
by the United States Patent and Trademark Office (USPTO), for each of these
marks. The pertinent details are as follows:
1. YOUR LIFE (block letter)
US registration 1,029,138;
registered January 6, 1976
Renewal commencing January 6, 1996
This
mark was registered for use in connection with: "vitamins " in
international class 5. This mark claims a first use date of October 31,
1972 and a first use in inter‑state commerce date of March 18, 1975.
2. YOUR
LIFE (stylized)
US
registration 1,402,829; registered July 29, 1986
This
mark was registered for use in connection with: "vitamins and dietary food
supplements" in international class 5. This mark claims first use and
first use in inter‑state commerce dates of October 30, 1985. A declaration of continued use and
incontestability was filed in the PTO and later accepted on January 7, 1992.
3. YOUR
LIFE (stylized)
US
registration 1,596,015; registered May 15, 1990
This
mark was registered for use in connection with: "vitamins and dietary food
supplements" in international class 5. This mark claims first use and
first use in inter‑state commerce dates of April 4, 1989. A renewal application was filed in the PTO
and later accepted on December 8, 2000.
4. YOUR
LIFE (block letter)
US
registration 2,084,936; registered July 29, 1997
This
service mark was registered for use in connection with: "providing
information regarding vitamins and dietary food supplements by means of a
global computer network" in international class 42. This mark claims
first use and first use in inter‑state commerce dates of October 8,
1996. A declaration of continued use
and incontestability was filed in the PTO and later accepted on January 23,
2003.
B. The Parties’ Activities
In 1975, the
Complainant adopted and commenced use of the mark “YOUR LIFE” in interstate
commerce for the purpose of designating vitamins and dietary food supplement
products.
On October 8,
1996, the Complainant adopted and commenced use of the mark “YOUR LIFE”, then
as a service mark in interstate commerce, in conjunction with providing
information regarding vitamins and dietary food supplements by means of a
global computer network.
The Complainant
owns the domain name <yourlifevitamins.com> with hard-copy print‑outs
of the home page and various other pages from this site appearing in Exhibits 7
and 7A-C to the Response. Through this
site, the Complainant provides
information and markets vitamins and dietary food supplement products
designated by the Complainant's “YOUR LIFE” marks, and locations of retailers
at which the Complainant's products can be purchased. Further, this site also allows those users to obtain coupons
which can be used for the purchase of the Complainant's “YOUR LIFE” products.
In contrast,
the contested domain name, when applied as an address to an Internet browser,
acts to forward or point users to a home page of the Respondent's web site at
<esj1.com> which carries the title <vitaminforless.com>. A hard-copy printout of the home page and
various lower level pages for this site are provided in Exhibits 4 and 4A to
the Response and in Exhibit 7 to the Complainant’s Additional Submission. The Respondent uses its <esj1.com> web
site to provide nutritional information and also market vitamins and dietary food supplements
manufactured by third parties, including manufacturers which directly compete
with the Complainant.
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that confusion is likely
to arise as a result of the Respondent’s use of contested domain name.
In particular, the contested domain name
includes Complainant's registered “YOUR LIFE” mark. The earliest allegation of first use made by the Complainant in
its “YOUR LIFE” marks indicates that the Complainant has been using its “YOUR
LIFE” mark in connection with its own vitamins and dietary supplements since at
least as early as October 1975 ‑‑ approximately 26 years prior
to the October 26, 2001 date on which the Respondent registered the contested
domain name. As a result of such use,
the Complainant’s “YOUR LIFE” marks have certainly acquired requisite secondary
meaning and distinctiveness quite some time prior to October 2001, and clearly
to a level sufficient from which the Panel can infer that potential customers
and Internet users are likely to recognize the “YOUR LIFE” marks as signifying
vitamins and dietary food supplements offered by the Complainant and not by the
Respondent.
Further,
in the context of vitamins and dietary food supplements -- which both the
Complainant and Respondent market, the Panel finds that the term
"medicine" is simply a generic term which adds absolutely no
distinctive element to the contested domain name, let alone of any magnitude
sufficient to distinguish that name from the Complainant's “YOUR Life” marks
and thus precludes confusion. In fact,
the Panel believes, and the record fails to indicate otherwise, that the
Respondent’s concatenation of the generic term “medicine” to the Complainant’s
mark is far more likely to exacerbate, rather than ameliorate, the confusion.
Therefore,
there can be no doubt that the Respondent had just this goal in mind and hence
intentionally chose to cause and opportunistically exploit the user confusion
that would inevitably arise to the Respondent’s own commercial advantage, when
it formed the contested domain name by appending the generic word
"medicine" to the mark “YOUR LIFE”.
Otherwise, why would the Respondent have chosen a domain name that
verbatim incorporates the Complainant's “YOUR LIFE” mark? The Panel can think of no plausible
reason. It is simply inconceivable to
the Panel that the Respondent was completely unaware of the “YOUR LIFE” mark
and its reputation when it formed and registered the contested domain name.
Such
confusion would undoubtedly cause Internet users intending to access
Complainant's web site, but who reach a web site through the contested domain
name, to think that an affiliation of some sort exists between Complainant and
Respondent, when, in fact, no such relationship would exist at all. See, e.g., Am. Family Life Assurance Company of Columbus v. defaultdata.com,
FA 123896 (Nat. Arb. Forum Oct. 14, 2002); AT&T Corp. v. Abreu, D2002‑0605 (WIPO Sept. 11, 2002); Pfizer
Inc. v. Order Viagra Online, D2002‑0366
(WIPO July 11, 2002); L.F.P., Inc. v. B and J Props., FA
109697 (Nat. Arb. Forum May 30, 2002); Frampton
v. Frampton Enters, Inc., D2002‑0141 (WIPO Apr. 17, 2002); Spence-Chapin
Servs. to Families and Children v. Wynman, FA 100492 (Nat. Arb. Forum Dec. 10, 2001); MPL Communications v. LOVEARTH.net,
FA 97086 (Nat. Arb. Forum June 4, 2001); Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum
July 6, 2001); MPL Communications v.
1WebAddress.com, FA 97092 (Nat.
Arb. Forum June 4, 2001); Am. Home Prods.
Corp. v. Malgioglio, D2000‑1602 (WIPO Feb. 19, 2001); Surface Prot. Indus., Inc. v. The
Webposters, D2000‑1613 (WIPO Feb. 5, 2001); Dollar Fin. Group, Inc. v. VQM NET, FA 96101 (Nat. Arb. Forum Jan. 25, 2001); eBAY Inc. v. G L Liadis Computing, Ltd., D2000‑1463 (WIPO
Jan. 10, 2001); Treeforms, Inc. v. Cayne
Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000); see
also The Pep Boys Manny, Moe and Jack
of CA v. E‑Commerce Today, Ltd., AF‑0145 (eResolution May
3, 2000).
Therefore,
the Panel finds that the contested domain name <yourlifemedicine.com> sufficiently resembles the Complainant's
“YOUR LIFE” marks as to cause confusion; hence, the Complainant has shown
sufficient similarity between its marks and the contested domain name under
paragraph 4(a)(i) of the Policy.
The
Panel believes that the Respondent has yet to provide any basis that would
legitimize any claim it has to the contested domain name. In fact, it is extremely unlikely that the
Respondent can even make such a claim.
The
simple reason is that the contested domain name contains the Complainant's mark
“YOUR LIFE” under which the Complainant provides its goods. Furthermore, the Complainant has never
authorized the Respondent to utilize the mark "YOUR LIFE", or a mark
confusingly similar thereto, in conjunction with the specific goods which the
Complainant provides under those marks, nor does the Complainant have any
relationship or association whatsoever with the Respondent.
Hence, any use to which the Respondent
were to put the mark "YOUR LIFE" or a mark confusingly similar
thereto, in connection with vitamins or dietary food supplements, or an
Internet-based service of providing information concerning those goods, would
directly violate the exclusive trademark rights now residing in the
Complainant. See, e.g., AT&T Corp., supra; MPL Communications, FA 97086 and FA
97092, supra; Am. Online, Inc. v. Fu,
WIPO Case No. D2000‑1374 (Dec. 11, 2000); Treeforms, Inc., supra.
It
is eminently clear to this Panel, as stated previously, that the Respondent, in
choosing a domain name that at its essence completely incorporates the
Complainant's “YOUR LIFE” mark and then appending to it the generic term
"medicine", is intentionally seeking to create a confusingly similar
name that opportunistically exploits Internet user confusion by diverting,
through re‑direction and diversion, Internet users away from the
Complainant's site to the Respondent's site for the latter's own pecuniary
benefit. Specifically, those users
would think they are purchasing the Complainant's goods through the
Respondent's site and, by doing so, generate profit to the Respondent from
those sales ‑‑ to the Complainant's ultimate detriment.
Such
parasitic use, which at its essence relies on instigating and exacerbating user
confusion, can not and does not constitute bona fide commercial or fair use
sufficient to legitimize any rights and interests the Respondent might have in
the contested domain name. See Frampton, supra.
In
light of the above findings, the Panel is not persuaded that the Respondent has
any rights or legitimate interests or, based on current facts provided to the
Panel, is likely to acquire any rights or legitimate interests in the contested
domain name under any provision of paragraph 4(c) of the Policy.
Thus,
the Panel finds that the Respondent has no rights or legitimate interests in
the contested domain name within paragraph 4(a)(ii) of the Policy.
The
Panel firmly believes that the Respondent's actions constitute bad faith
registration and use of the contested domain name.
Again
as stated above, it is absolutely inconceivable to this Panel that the
Respondent was unaware of the Complainant's “YOUR LIFE” mark when the former
registered the contested domain name on October 26, 2001 -- some 26 years after
the Complainant started using that mark.
In
fact, by virtue of offering highly competitive vitamins and food supplements to
those then being offered by the Complainant and through a web site resolvable through
the contested domain name, the Panel believes that not only was the Respondent
very much aware of those marks but moreover deliberately decided to utilize the
term “YOUR LIFE”, without authorization, in an attempt to cause user confusion
and, by doing so, misappropriating to itself the goodwill inherent in the
Complainant’s “YOUR LIFE” m arks for its own commercial gain and to the
ultimate detriment of the Complainant.
Hence,
the Panel views these actions as constituting bad faith registration and use in
violation of paragraph 4(b)(iv) of the Policy.
Thus,
the Panel concludes that the Complainant has provided sufficient proof of its
allegations to establish a prima facie case under paragraph 4(a) of the Policy
upon which the relief it now seeks can be granted.
Reverse Domain Name Hijacking
Given that the
Complainant had more than ample basis to bring its Complaint, the Panel finds
that its actions were clearly not occasioned by bad faith and thus do not
constitute reverse domain name hijacking.
DECISION
In accordance with paragraphs 4(i) of the
Policy and 15 of the Rules, the relief sought by the Complainant is hereby GRANTED.
The Respondent’s request to have the
Panel designate the Complainant’s actions in bringing the Complaint as reverse
domain name hijacking is DENIED.
The contested domain name, namely <yourlifemedicine.com>, is ordered TRANSFERRED from the Respondent
to the Complainant.
Peter L.
Michaelson, Esq., Panelist
Dated:
September 16, 2003
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