LA Weight Loss Centers Inc. v. Cayman
Trademark Trust c/o Modern Limited - Cayman Web Development
Claim
Number: FA0504000464493
Complainant is LA Weight Loss Centers Inc. (“Complainant”),
represented by Joseph T. Helmsen of Pepper Hamilton LLP,
One Mellon Center, 500 Grant Street, 50th Floor, Pittsburgh, PA 15219. Respondent is Cayman Trademark Trust c/o Modern Limited - Cayman Web Development (“Respondent”),
PO Box 908, George Town, Grand Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <laweightlosscenter.com>, registered with Bulkregister.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 19, 2005.
On
April 18, 2005, Bulkregister confirmed by e-mail to the National Arbitration
Forum that the domain name <laweightlosscenter.com> is registered
with Bulkregister and that Respondent is the current registrant of the name. Bulkregister
has verified that Respondent is bound by the Bulkregister 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
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 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@laweightlosscenter.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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." 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 makes the following assertions:
1. Respondent’s <laweightlosscenter.com>
domain name is confusingly similar to Complainant’s LA WEIGHT LOSS CENTERS
mark.
2. Respondent does not have any rights or
legitimate interests in the <laweightlosscenter.com> domain name.
3. Respondent registered and used the <laweightlosscenter.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, LA Weight Loss Centers Inc., is one of the
world’s fastest growing weight management companies. Founded in 1989, Complainant’s business involves weight loss
counseling and dietary products.
Complainant operates over 325 corporate LA WEIGHT LOSS CENTERS in the
United States, Canada and the United Kingdom.
Complainant was
the original holder of several registrations with the United States Patent and
Trademark Office (“USPTO”) for the LA WEIGHT LOSS CENTERS mark (including Reg.
No. 2,254,168 issued June 15, 1999 and Reg. No. 2,271,058 issued August 17,
1999) and other related marks.
Additionally, Complainant held registrations for its marks in numerous
other countries throughout the world.
In September 2004, Complainant assigned its trademark registrations to
LAIP, LLC (“LAIP”), a company in which Complainant owns a 50% interest. On the same date, LAIP granted, by license,
to Complainant certain exclusive rights in the marks, including the LA WEIGHT
LOSS CENTERS mark.
Respondent
registered the <laweightlosscenter.com> domain name on August 26,
2001. The disputed domain name diverts
Internet users to a website that lists links to various products and services,
including several that are to Complainant’s competitors. Respondent presumably receives pay-per-click
fees for any diversions to third-party websites through Respondent’s 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."
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.
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.
Respondent’s
failure in this instance to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response a panel is free to make inferences from the very failure
to respond and assign greater weight to certain circumstances than it might
otherwise do).
Complainant has
established presumptive rights in the LA WEIGHT LOSS CENTERS mark through
registration with the United States Patent and Trademark Office. Respondent has provided no response and has,
therefore, failed to dispute Complainant’s prima facie case of
rights. Therefore, the Panel finds that
Complainant has rights in the LA WEIGHT LOSS CENTERS mark for purposes of
Policy ¶ 4(a)(i). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption).
The <laweightlosscenter.com>
domain name deviates from Complainant’s LA WEIGHT LOSS CENTERS mark only with
the omission of the letter “s” from the word “centers.” It has been widely held under the Policy
that a slight change, such as the omission of a letter from a complainant’s
registered mark, is insufficient to distinguish a domain name from a mark. Therefore, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to the complainant’s marks); see
also State Farm Mut. Auto. Ins. Co.
v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding
that the<statfarm.com> domain name is confusingly similar to the
complainant’s STATE FARM mark); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to the complainant's AMERICAN AIRLINES registered
marks).
Accordingly, the Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant
asserts that Respondent has no rights or legitimate interests in the <laweightlosscenter.com>
domain name that contains a confusingly similar variation of Complainant’s LA
WEIGHT LOSS CENTERS mark. Complainant
has made a prima facie case in
support of its allegations, which shifts the burden to Respondent to make a
showing that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). However, Respondent has
failed to respond to Complainant’s allegations and to provide evidence of
rights or legitimate interests.
Respondent has, therefore, failed to meet its burden and the Panel
concludes that Respondent lacks rights and legitimate interests in the disputed
domain name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that, once a
complainant asserts that a respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to that respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
Complainant
contends that the <laweightlosscenter.com> domain name diverts
Internet users to a website that lists links to various websites unrelated to
Complainant, including several that compete with Complainant’s weight loss
services. Thus, the evidence shows that
Respondent is using a domain name that is confusingly similar to Complainant’s
registered LA WEIGHT LOSS CENTERS mark to attract Internet users searching for
Complainant’s weight loss products and services to Respondent’s website that
displays links to products and services unrelated to Complainant as well as
links to Complainant’s competitors. It
is well-established precedent under the Policy that this type of diversionary
use, presumably for the purpose of benefiting from pay-per-click compensation,
is not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii) and, therefore, does not bestow rights and legitimate
interests upon Respondent under Policy ¶ 4(a)(ii). See Disney Enters., Inc. v. Dot Stop, FA 145227
(Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of
Complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that
Respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to Complainant and presumably with the purpose
of earning a commission or pay-per-click referral fee did not evidence rights
or legitimate interests in the domain name).
Complainant
claims that Respondent is not commonly known by the <laweightlosscenter.com>
domain name. Respondent has not filed a
response and has not, therefore, provided the Panel with any evidence to rebut
Complainant’s assertion. Therefore, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Nokia Corp. v. Private, D2000-1271 (WIPO
Nov. 3, 2000) (finding that the respondent is not commonly known by the mark
contained in the domain name where the complainant has not permitted the
respondent to use the NOKIA mark and no other facts or elements can justify
prior rights or a legitimate connection to the names “Nokia” and/or
“wwwNokia”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <laweightlosscenter.com> domain name to profit from
consumer confusion by intentionally attracting Internet users searching for
Complainant’s LA WEIGHT LOSS CENTERS products and services. The Panel finds that Respondent profits from
these intentional diversions through click-through fees earned by diverting
Internet users to the third-party websites linked through Respondent’s
website. Therefore, the Panel determines
that Respondent’s attempts to divert Internet users for commercial gain by
attracting them to Respondent’s website through a likelihood of confusion with
Complainant’s mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using Complainant’s famous marks and likeness); see
also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
Respondent’s
registration of a domain name that differs from Complainant’s LA WEIGHT LOSS
CENTERS mark by only one letter suggests that Respondent knew of Complainant’s
rights in the mark. In addition the
connection between the weight loss-related content on the website and
Complainant’s business is further evidence of Respondent’s actual
knowledge. Furthermore, Complainant’s
registration of the mark with the USPTO bestows upon Respondent constructive
knowledge of Complainant’s rights in the mark.
Respondent’s registration of a domain name confusingly similar to a mark
despite actual or constructive knowledge of another’s rights in the mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively.”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark
and the content advertised on Respondent’s website was obvious, Respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”).
The Panel finds
that Complainant has satisfied 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 <laweightlosscenter.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 31, 2005
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