Weight Watchers International, Inc. v. HEG et al.
Claim Number: FA1504001615736
Complainant: Weight Watchers International, Inc. of New York, New York, United States of America.
Complainant Representative: Weight Watchers International, Inc. of New York, New York, United States of America.
Respondent: HEG of Godalming, Surrey, International, GB.
Complainant Representative: Peter Gray of , United States of America.
HEG of Godalming, United Kingdom.
REGISTRIES and REGISTRARS
Registries: Nominet UK
Registrars: Mesh Digital Limited
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
James Bridgeman, as Examiner.
Complainant submitted: April 22, 2015
Commencement: April 23, 2015
Response Date: May 8, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant holds a valid national trademark registration for the WEIGHT WATCHERS mark being United Kingdom trademark registration number 1275448, registered on October 1, 1986 in class 42 in respect of “Advisory and counselling services: all included in Class 42; all relating to dietary management”.
URS Procedure ¶ 1.2.6, and ¶ 8.1 requires Complainant to prove, by clear and convincing evidence, each of the three elements of the test therein to obtain an order that a domain name should be suspended.
Applying the tests set by URS Procedure, this Examiner finds that in accordance with URS Procedure ¶ 8.1.2 that Complainant has provided clear and convincing evidence:
- that the registered the domain name <weightwatchers.wales> is identical or confusingly similar to the word mark: WEIGHT WATCHERS for which;
- that said trademark is in current use.;
- that proof of use has been submitted directly with the URS Complaint by Complainant as required by URS Procedure ¶ 126.96.36.199;
- that Registrant has no legitimate right or interest to the domain name;’
- that the domain name <weightwatchers.wales> was registered and is being used in a bad faith.
In reaching this decision this Examiner accepts Complainant’s evidence and submissions that it is clearly more than a coincidence that Respondent chose and registered a domain name that is identical to Complainant’s WEIGHT WATCHERS mark. Respondent had constructive knowledge of Complainant’s marks at the time it registered the identical domain name and such knowledge indicates Respondent’s bad faith use and registration. See Carnival Plc v Belize Domain WHOIS Service Lt, FA 997973 (Nat. Arb. Forum July 17, 2007) (constructive knowledge of mark due to federal registration is evidence of bad faith).
Respondent has admitted in the Response that he has no rights or legitimate interest in the disputed domain name.
Respondent’s failure to make active use of the disputed domain name is further evidence of bad faith use and registration. See Kohl's Illinois, Inc. v. c/o kphls.com; c/o kohals.com; c/okohlsdepartmentstore.com; c/o khols.com, FA 1442950 (Nat. Arb. Forum June 7, 2012) (“Respondent’s failure to make an active use of the disputed domain names demonstrates bad faith registration and use under [UDRP] Policy ¶ 4(a) (iii)”); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that respondent’s failure to make active use of its domain name indicated that respondent registered disputed domain name in bad faith); Chan Luu, Inc. v. Danielle Dyke, FA 1441467 (Nat. Arb. Forum June 6, 2012) (“The Panel finds that failing to make definite use of the <chanluu.us> domain name constitutes registration and use of the domain name in bad faith under [UDRP] Policy ¶ 4(a)(iii)”).
On the balance of probabilities the disputed domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark for valuable consideration in excess of documented out-of pocket costs directly related to the domain name or to take predatory advantage of Complainant’s registered trademark in some other fashion.
Respondent has offered to transfer or delete the disputed domain name at no cost to Complainant. This offer was however made only in the Response after this Complaint was made and Respondent does not give any explanation as to why he registered the disputed domain name in these circumstances.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
James Bridgeman, Examiner
Dated: May 08, 2015
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