Skinny Fit, LLC v. Robert Anderson
Claim Number: FA1812001819115
Complainant is Skinny Fit, LLC (“Complainant”), represented by Damon W.D. Wright of Venable LLP, Washington DC, USA. Respondent is Robert Anderson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skinnyfitturmericdiet.net>, <skinnyfitturmeric.com>, <skinnyfitturmeric.net>, <skinnyfitketodiet.net>, and <skinnyfitketo.net> registered with Name.com, 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 3, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <skinnyfitturmericdiet.net>, <skinnyfitturmeric.com>, <skinnyfitturmeric.net>, <skinnyfitketodiet.net>, and <skinnyfitketo.net> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2018 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@skinnyfitturmericdiet.net, postmaster@skinnyfitturmeric.com, postmaster@skinnyfitturmeric.net, postmaster@skinnyfitketodiet.net, postmaster@skinnyfitketo.net. Also on December 11, 2018, 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 January 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a creator and marketer of several successful, industry leading health supplement products. Complainant has rights in the SKINNYFIT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,194,384, registered May 2, 2017). See Compl. Ex. E. Respondent’s <skinnyfitturmericdiet.net>, <skinnyfitturmeric.com>, <skinnyfitturmeric.net>, <skinnyfitketodiet.net>, and <skinnyfitketo.net> domain names are confusingly similar to Complainant’s SKINNYFIT mark because Respondent fully incorporates Complainant’s mark in each domain name, includes descriptive terms such as “turmeric,” “keto,” and “diet,” and adds the “.com” or “.net” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interest in the disputed domain names because respondent is not commonly known by the disputed domain names and is not authorized, licensed, or otherwise permitted to use Complainant’s SKINNYFIT mark. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names because Respondent attempts to create confusion, divert Internet users, and unfairly compete with Complainant.
Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to create confusion and divert Internet users likely for commercial gain. Respondent uses the disputed domain names to resolve to either offers selling competing nutrition supplements or a list of links to third party sites, each of which demonstrates bad faith registration and use. Respondent had knowledge of Complainant’s rights in the mark prior to registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names’ registration dates are as follows:
|
Domain Name |
Registration Date |
|
<skinnyfitturmericdiet.net> |
April 12, 2018 |
|
<skinnyfitturmeric.com> |
April 12, 2018 |
|
<skinnyfitturmeric.net> |
April 12, 2018 |
|
<skinnyfitketodiet.net> |
April 12, 2018 |
|
<skinnyfitketo.net> |
April 12, 2018 |
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark; that Respondent lacks any rights or legitimate interests in or to the dispute domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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(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 (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 Panel finds that the disputed domain names are all confusingly similar to Complainant’s trademark, SKINNYFIT. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain names by fully incorporating Complainant’s mark in each domain name, including descriptive terms such as “turmeric,” “keto,” and “diet,” and adding the “.com” or “.net” generic top-level domain (“gTLD”). This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the dispute domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the dispute domain name. Respondent is not commonly known by the disputed domain name. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names because Respondent attempts to create confusion, divert Internet users, and unfairly compete with Complainant.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain names.
Finally, the Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently uses the <skinnyfitturmericdiet.net> and <skinnyfitturmeric.com> domain names to display links to unrelated websites and uses the <skinnyfitturmeric.net>, <skinnyfitketodiet.net>, and <skinnyfitketo.net> domain names to display links to products in competition with Complainant’s business, each of which demonstrates bad faith. The use of a disputed domain name to display both competing and unrelated hyperlinks demonstrates bad faith under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides the Panel with screenshots of the resolving webpages of the disputed domain names, displaying either links such as “RECIPES!” or advertisements to health and fitness related products. See Compl. Ex. H.
As such, the panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel also finds that Respondent had actual knowledge of Complainant’s rights in the SKINNYFIT mark at the time of registration, which is evidence of bad faith registration. Complainant argues that its registration of the SKINNYFIT mark years before Respondent’s registration of the disputed domain names demonstrates Respondent had knowledge of Complainant’s rights in the mark at the time of registration. Given this fact and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights and interests in and to the trademark SKINNYFIT at the time of its registration of the disputed domain names.
As such, the panel finds that Respondent registered the domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <skinnyfitturmericdiet.net>, <skinnyfitturmeric.com>, <skinnyfitturmeric.net>, <skinnyfitketodiet.net>, and <skinnyfitketo.net> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 7, 2019
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