Bodybuilding.com, LLC v. Marc Joyce
Claim Number: FA1401001539825
Complainant is Bodybuilding.com, LLC (“Complainant”), represented by David J. Steele of Christie, Parker & Hale, LLP, California, USA. Respondent is Marc Joyce (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bodvbuilding.com>, registered with ENOM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2014; the National Arbitration Forum received payment on January 17, 2014.
On January 22, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <bodvbuilding.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 January 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2014 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@bodvbuilding.com. Also on January 23, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" 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 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
Complainant contends as follows:
Complainant, Bodybuilding.com, LLC, uses its BODYBUILDING.COM mark in connection with its highly successful and widely known <bodybuilding.com> website which offers workout plans, vitamin and mineral supplements, and motivation for users to achieve their fitness goals. Complainant has, through its extensive and continuous use of its BODYBUILDING.COM trademark, service mark, and trade name, created tremendous goodwill in its BODYBUILDING.COM mark.
The subject domain name is confusingly similar to Complainant’s BODYBUILDING.COM mark because Respondent has merely replaced the letter “y” with a visually similar letter “v” to form the domain name <bodvbuilding.com>.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name. Respondent uses the subject domain name to redirect users to another website selling a supplement directly competing with Complainant’s BODYBUILDING.COM goods. Respondent has designed its website to visually resemble Complainant’s own website available at <bodybuilding.com>.
Respondent has registered and is using the disputed domain name in bad faith. The only reason for Respondent’s registration of the confusingly similar domain name and the hosting of the website is to unlawfully misdirect users searching for Complainant to Respondent’s website. Respondent uses the subject domain name to redirect users to a website selling a dietary supplement directly competing with Complainant’s BODYBUILDING.COM offering. Respondent has designed its website to visually resemble Complainant’s own website at <bodybuilding.com>. Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the BODYBUILDING.COM mark as evidenced by Respondent’s explicit use of the correctly spelled BODYBUILDING.COM mark and logo.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant demonstrates that it has common law trademark rights in the BODYBUILDING.COM mark.
Respondent is not affiliated with Complainant and had not been authorized to use the BODYBUILDING.COM mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in BODYBUILDING.COM.
Respondent registered and used the at-issue domain name to address a website that mimicked Complainant’s website. Respondent’s <bodvbuilding.com> website marketed a dietary supplement directly competing with products offered by Complainant.
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(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 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 at-issue domain name is identical to a trademark in which Complainant has rights.
It is well settled that a Complainant need not have registered its trademark to proceed under the Policy. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Here, Complainant presents sufficient evidence in its unopposed papers to presume that Complainant’s BODYBUILDING.COM mark has acquired secondary meaning and thus Complainant has common law trademark rights therein. Therefore, the Panel finds that Complainant has rights in a mark for the purposes of Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and on-going and secondary meaning was established).
Furthermore, in forming the at-issue domain name Respondent merely replaced the letter “y” with the visually similar letter “v.” Respondent’s substitution of one letter for another is irrelevant to similarity analysis under Policy ¶ 4(a)(i) and so the Panel concludes that Respondent’s <bodvbuilding.com> domain name is confusingly similar to Complainant’s BODYBUILDING.COM mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “MARC JOYCE” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <bodvbuilding.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent used the <bodvbuilding.com> domain name to redirect Internet users to another website selling a dietary supplement directly competing with Complainant’s BODYBUILDING.COM products. Moreover, Respondent’s <bodvbuilding.com> website mocks Complainant’s <bodybuilding.com> website and displays Complainant’s BODYBUILDING.COM mark throughout. Respondent’s use of the <bodvbuilding.com> domain name, either to sell competing products or to pass itself off as Complainant, are neither Policy ¶ 4(c)(i) bona fide offerings of goods or services, nor Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses of the domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see aso, Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above, Respondent used the confusingly similar at-issue domain name to offer products for sale that compete with those offered by Complainant. Respondent’s scheme was designed to benefit Respondent by increasing traffic to its website. Respondent relied on Internet users being diverted to <bodvbuilding.com> due to such users’ inadvertent mistyping of Complainant’s trademark bearing domain name. Using the domain name in the manner demonstrates bad faith under Policy ¶4(b)(iii) in that the use is disruptive to Complainant’s legitimate business See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (finding that “Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business). Moreover, Respondent’s use of the domain name to diverts Internet users to its own website -one designed to resemble Complainant’s website- for commercially gain additional demonstrates that Respondent registered and used the <bodvbuilding.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where respondent hosted a website that “duplicated [c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark.”)
Furthermore, Respondent is typosquatting. Typosquatting is a form of cybersquatting that relies on typographical errors made when an Internet user mistypes or misspells an intended destination when entering such destination into a web browser’s address bar or a search engine’s input field. The typosquatter, here Respondent, expects that some mistyped addresses will match a URL that the typosquatter controls, and then exploits the resulting misplaced visitors via click-through advertisements, by the online sale of goods or services, or otherwise. Respondent, in forming the at-issue domain name, substitutes the visually similar letter “v” for the letter “y” in Complainant’s mark. Therefore, without some other plausible explanation for registering a domain name that is a mistyping of Complainant’s trademark, there is no doubt that Respondent’s purpose in registering and using <bodvbuilding.com> was to typosquat on Complainant’s trademark. Typosquatting, in and of itself, shows bad faith under Policy ¶4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent had knowledge of Complainant’s rights in the BODYBUILDING.COM mark prior to registering the <bodvbuilding.com> domain name. Respondent’s prior knowledge of Complainant’s trademark is shown by Respondent’s explicit use of the correctly spelled BODYBUILDING.COM mark and logo on its <bodvbuilding.com> website and indicates Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bodvbuilding.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 19, 2014
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