LA Weight Loss Centers, Inc. v. Nevis Domains LLC.
Claim Number: FA0609000791382
Complainant is LA Weight Loss Centers, Inc. (“Complainant”), represented by Michael J. Leonard, of Pepper Hamilton LLP, 3000 Two Logan Square, Eighteenth and Arch Streets, Philadelphia, PA 19103-2799. Respondent is Nevis Domains LLC. (“Respondent”), 222-3 Main Street, Charlestown, II Nevis.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <laweightlosscenter.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 7, 2006.
On September 12, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <laweightlosscenter.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 September 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2006 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has operated a weight management company since
1989.
Complainant, which
currently operates more than 325 corporate LA Weight Loss Centers in the
United States, has offered weight loss counseling and dietary products and
supplements under the LA WEIGHT LOSS CENTERS mark since at least 1998.
Complainant was the original holder of several tradmark
registrations for the LA WEIGHT LOSS CENTERS mark throughout the world,
including registrations with the United States Patent and Trademark Office
(“USPTO”) (i.e., Reg. No. 2,254,168, issued June 15, 1999, and 2,271,058,
issued August 17, 1999).
On September 27, 2004, Complainant assigned its trademark
registrations to LAIP, LLC (“LAIP”) as a part of a corporate
restructuring.
Complainant owns a 50 percent interest in LAIP, which has
granted to Complainant, by license, exclusive rights to the LA WEIGHT LOSS
CENTERS mark, and Complainant exercises its rights in the LA WEIGHT LOSS
CENTERS mark pursuant to its license.
In connection with its business, Complainant owns and uses
domain name registrations for the <laweightloss.com> and
<laweightlosscenters.com> domain names.
Complainant initiated an arbitration proceeding regarding the <laweightlosscenter.com> domain name, and an arbitrator ordered the transfer of the disputed domain name to Complainant on May 31, 2005.
However, for reasons unknown to Complainant, the domain registrar
facilitated registration of the disputed domain name on or about January 31,
2006, without the consent of Complainant.
Respondent registered the <laweightlosscenter.com>
domain name on or about January 31, 2006.
Respondent’s domain name resolves to a website featuring links to third-party websites that directly compete with Complainant’s business.
Respondent’s <laweightlosscenter.com> domain name is confusingly similar to Complainant’s LA WEIGHT LOSS CENTERS mark.
Respondent does not have any rights or legitimate interests in the domain name <laweightlosscenter.com>.
Respondent has registered and now uses the <laweightlosscenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of its federal trademark registrations with the USPTO for the LA WEIGHT LOSS CENTERS mark. Those registrations demonstrate Complainant’s rights in the mark in satisfaction of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005): “Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).” See also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes its rights in the mark for purposes of Policy ¶ 4(a)(i)).
We further conclude that Respondent’s <laweightlosscenter.com> domain name is confusingly similar to Complainant’s LA WEIGHT LOSS CENTERS mark pursuant to Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s mark in its entirety, with the omission of the letter “s” and the spaces between the terms of the mark, and with the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the omission of spaces between the terms of a mark does not sufficiently distinguish the resulting domain name from a competing mark. For example, in Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found the <hannoverre.com> domain name to be identical to the HANNOVER RE mark, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” See also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s domain name <plannedparenthood.com> nearly identical). Moreover, prior panels have consistently held that the omission of a single letter from a mark does not negate the creation of confusing similarity between the domain name and the mark pursuant to Policy ¶ 4(a)(i). In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that a domain name which differed by only one letter from a trademark had a tendency to be confusingly similar to the trademark where the trademark was highly distinctive. See also 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 renders the domain name confusingly similar to a complainant’s marks). Additionally, previous panels addressing the addition of a gTLD to a mark have concluded that such an addition does not distinguish the resulting domain name from the mark for purposes of Policy ¶ 4(a)(i). See Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (holding that the <cesamet.com> domain name was identical to a complainant’s CESAMET mark because the addition of the gTLD “.com” did not distinguish the disputed domain name from the mark); likewise see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant establishes a prima facie case, the burden of proof shifts to Respondent to establish that it nonetheless has rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Complainant has demonstrated a prima facie case to the satisfaction of the Panel. However, we will evaluate the evidence of record to determine whether there is any basis for concluding that Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
In this connection, we first observe that the evidence before us does not demonstrate that Respondent is commonly known by the <laweightlosscenter.com> domain name pursuant to Policy ¶ 4(c)(ii). And, specifically, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Consequently, we cannot conclude that Respondent is commonly known by the <laweightlosscenter.com> domain name under 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the mark).
Further, it is undisputed on this record that Respondent’s <laweightlosscenter.com> domain name resolves to a website offering links to third-party websites that directly compete with Complainant’s weight management business. Consequently, we conclude that Respondent has not engaged in a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor has it engaged in a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s website for commercial gain does not constitute either 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)); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute 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)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute that Respondent’s <laweightlosscenter.com> domain name resolves to a website offering links to the websites of Complainant’s competitors. In the circumstances described, we are at liberty to and do presume that Respondent receives click-through revenue by diverting Internet users seeking Complainant’s website to those of Complainant’s competitors. Thus Respondent has registered and uses the disputed domain name in order to trade off of the goodwill associated with Complainant’s registered mark, thereby benefiting commercially. We conclude, therefore, that Respondent registered and uses the <laweightlosscenter.com> domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where a respondent registered the domain name <bigtex.net> to infringe on a complainant’s goodwill and attract Internet users to that respondent’s website); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and a complainant’s AOL mark, indicating bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Additionally, it is evident that Respondent registered the
contested domain name with either or both actual and constructive knowledge of
Complainant’s rights in the LA WEIGHT LOSS CENTERS mark by virtue of
Complainant’s prior registrations of its marks with the USPTO. Registration of a confusingly similar domain
name despite such actual or constructive knowledge, without more, evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See, for example, Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <laweightlosscenter.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 27, 2006
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