DECISION

Aloe Vera of America, Inc. v. Adam Norins

Claim Number: FA0105000097291

PARTIES

The Complainant is Aloe Vera of America, Inc., Dallas, TX, USA (“Complainant”) represented by Scott A. Klundt, of Quarles & Brady Streich Lang, LLP. The Respondent is Adam Norins, Phoenix, AR, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "foreverliving.tv", registered with Dot TV Corporation International.

PANEL

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.

Honorable Anthony J. Mercorella (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 18, 2001; the Forum received a hard copy of the Complaint on May 21, 2001.

On May 18, 2001, Dot TV Corporation International confirmed by e-mail to the Forum that the domain name "foreverliving.tv" is registered with Dot TV Corporation International and that the Respondent is the current registrant of the name. Dot TV Corporation International has verified that Respondent is bound by the Dot TV Corporation International 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 May 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2001 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@foreverliving.tv by e-mail.

A timely response was received and determined to be complete on June 11, 2001.

On June 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Anthony J. Mercorella (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The subject of this complaint is the domain name foreverliving.tv.

The Complainant contends that the domain name at issue here, “foreverliving.tv”, is confusingly similar to Aloe Vera of America, Inc.’s (hereinafter “AVA”) FOREVER LIVING PRODUCTS mark. The domain name incorporates the distinctive portion of AVA’s word and design marks “Forever Living” and adds only the generic terms “.tv”. Moreover, the Complaintant argues that since design marks cannot be reproduced in a domain name, it is appropriate to consider only the similarity of the dominant textual element of the mark to the disputed domain name.

The Complainant further contends that the Respondent in this case, Adam Norins, cannot generate any legitimate interest in the “foreverliving.tv” domain name, that he is not making a legitimate commercial or non-commercial use of the “foreverliving.tv” domain name. The Respondent has not made a substantive use of the “foreverliving.tv” domain name since first registering the name on October 23, 2000. From this date to at least as late as April of 2001, no site was hosted by this domain name.

According to the Complainant, the Respondent stated that if his Cobra health insurance benefits were reinstated he might change his mind about selling the domain name registration to the Complainant. The Respondent refused to transfer the domain name unless he received reimbursement for his medical bills. Under ICANN policy, paragraph 4(b)(i), a Respondent’s bad faith registration and use of a domain name may be demonstrated by “circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark. . . for valuable consideration in excess of the Respondent’s documented out-of-pocket costs related to the domain name.”

Here, the Respondent’s registration and passive possession of the “foreverliving.tv” domain name, his offers to sell the domain name to FLPI (originally by using a false name), and his transparent attempts to secure insurance benefits in exchange for selling the registration all constitute bad faith use in the view of the Complainant. Moreover, a Respondent’s registration of a domain name confusingly similar to his/her former employer’s trademark is alleged to be additional evidence of bad faith use. Finally, in the instant case, the Respondent’s registration of the domain name just two months after he ended his employment with FLPI is claimed as further evidence of bad faith. As a former employee, the Complainant contends that the Respondent was obviously aware of AVA-FLPI name and marks.

B. Respondent

The Respondent contends that AVA owns the trademark to FOREVER LIVING PRODUCTS (“FLP”), not foreverliving. Furthermore, an individual looking for the website FOREVER LIVING PRODUCTS.com would have to leave off the entire word “products.” The Respondent claims that he has not just added or subtracted an extra(s) or miscellaneous letter, but in fact, has added a whole word. The Respondent points to the fact that currently there is no site www.foreverliving.tv, as evidence of the fact that no goods or services are being offered. In addition, the Respondent contends that he will eventually be making a legitimate, non-commercial and fair use of the domain name, without intent for commercial gain to mislead and divert customers or, to tarnish the trademark or service mark at issue. The Respondent intends to post a bulletin board where all past, present and future employees, may exercise their freedom of speech and post their views, be it positive or negative about the company. The site will be a forum for an individual to exercise his thoughts about FOREVER LIVING PRODUCTS. The Respondent claims that this website could actually serve as a boost in business and not disrupt FLP’s business at all.

FINDINGS

It is my finding that the domain name registered by the Respondent is confusingly similar to the trademark held by the Complainant, that the Respondent has no legitimate interest with respect to the domain name and that the domain name has been registered and used in bad faith.

Accordingly, the Complainant’s request to have the domain name, “foreverliving.tv”, transferred from the Respondent to the Complainant is granted.

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.

Identical and/or Confusingly Similar

The Complainant holds trademark registrations for the FOREVER LIVING PRODUCTS mark, while the Respondent has registered “foreverliving.tv”. The fact that the Respondent has deleted the word PRODUCTS from Complainant’s mark and inserted instead “.tv” is not sufficient to avoid a finding that the two marks are confusingly similar. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

Rights or Legitimate Interests

In this matter, the Respondent has passively held the domain name “foreverliving.tv”. Prior to the initiation of this dispute, the Respondent was not using the domain name in connection with a bonafide offering of goods and services or making a fair, non-commercial use of the domain name “foreverliving.tv”. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Moreover, Respondent is not commonly known by the FOREVER LIVING mark or the infringing domain name. Finally, while the content of Respondent’s proposed website may enjoy First Amendment and Fair Use protection, those protections do not equate to rights or legitimate interest “with respect to a domain” which is confusingly similar to another’s trademark. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by mark). See also Robo Enterprises, Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum, Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name “roboenterprises-investors.com”, noting that while the content of Respondent’s web site may enjoy first amendment and fair use protection, those protections do not equate rights or a legitimate interest “with respect to [a] domain name” which is confusingly similar to another’s trademark).

Registration and Use in Bad Faith

The Respondent has made no formal use of the domain name “foreverliving.tv”. As far as the record reveals, to date the only purpose served through the Respondent’s registration of this domain name has been to allow the Respondent to attempt to obtain insurance benefits from his former employer, the Complainant. See VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it “for far more than he paid for it” by sending a general email to the Complainant offering the domain name for sale); Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). In addition, there is no support for the contention that since the Respondent has yet to use the domain mere registration is not sufficient to constitute use and bad faith. Even though the Respondent has not used the domain name, it makes no sense whatsoever to wait until he actually uses the name when inevitably, such use will create the confusion the Complainant herein fears. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

The Respondent, through his alter ego, Mike Rogers, has offered his domain name “foreverliving.tv”, for sale to the Complainant and directed the Complainant to bid on the domain name at Respondent’s auction site. Such offers to sell a domain name have continuously been held to be evidence of bad faith. It is noted for the record that the Respondent did not refute, or even address, this allegation. Accordingly, it must be assumed to be admitted.

Finally, given Respondent’s former employment at FOREVER LIVING PRODUCTS, he was obviously aware of Complainant’s mark upon registering the domain name “foreverliving.tv”. See William Hill Org. v. Fulfillment Management Servs. Ltd., D2000-0826, (WIPO Sept. 17, 2000) (finding bad faith registration and use (even though no pattern of conduct existed) where “Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent’s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired”); Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name); Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the Respondent registered the domain names, kwasizabantu.com, kwasizabantu.org, kwasizabantu.net, in bad faith where Respondent published negative comments regarding the Complainant’s organization on the confusingly similar website).

All of the foregoing, taken together, clearly evidence registration and use in bad faith.

DECISION

It is the decision of this panel that the domain name “foreverliving.tv” be transferred from the Respondent to the Complainant.

Honorable Anthony J. Mercorella, Panelist

Dated: July 3, 2001