dietrite.com

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Royal Crown Company, Inc., (a Delaware corporation) having its principal place of business in White Plains, New York, 10604.

The Respondent is New York Broadcast Services, Inc. Three addresses as given in the Complaint. They are in: Jericho, NY 11753; Dix Hills, NY 11746; and Deer Park, NY 11729.

The domain name in dispute is "dietrite.com".

The Registrar with whom the domain name is registered is Network Solutions, Inc. of Herndon, Virginia.

This administrative proceeding was brought under the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by ICANN on August 26, 1999. The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on April 19, 2000, and in hard copy on April 26, 2000.

On April 27, 2000, the Center sent a request to Network Solutions, Inc., for verification that the domain name in dispute was indeed registered by it and asking for confirmation of certain details. The Network Solutions response was provided on the same day. It confirmed that it was the Registrar of "dietrite.com", and that the Registrant is New York Broadcast Services of 10 Arbor Lane, Dix Hills, New York 11746. The status of the domain name was characterized as "ACTIVE". According to the Registrar’s data, the "Administrative Contact" and the "Technical Contact" and the "Billing Contact" had the same name "DomainNames.com Ltd.". However, slightly different addresses were given for each of these contacts. All of the addresses given for the contacts were located in the United Kingdom.

A Formal Requirements Compliance Review was made by the Center in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Center verified that "the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules." It also determined that the required fee payment had been made to the Center by the Complainant.

On May 5, 2000, the Center notified the Respondent of the Complaint and the commencement of the Administrative Proceeding. A copy of the Complaint and the required cover sheet were sent to each of the addresses which had been provided to the Center. May 5, 2000, marks the date of the formal commencement of this proceeding.

On May 29, 2000, a representative of DomainNames.com Ltd. sent an email message to the Center acknowledging that he had received the correspondence and asking for clarification with respect to the obligations of his company. He indicated that he had spoken to the Center "around two weeks ago" with regards to the case D2000-0315 "Dietrite.com" and had "attempted to pass on all correspondence to the address of the registrant but with no luck." In response, the Center advised that DomainNames.com Ltd. was not a party but that he "should transmit the documents in question to the domain name registrant."

The notification to the Respondent concerning the Complaint specifically advised that the Respondent was required to submit its Response by May 24, 2000, and that failure to do so would be considered to be a default. No Response was received by the Center.

A Notification of Respondent Default was communicated by the Center on May 25, 2000, to all of the Respondent’s addresses that had been made available to the Center.

On May 25, 2000, William L. Mathis was invited to serve as a Panelist in this proceeding and on May 26, 2000, he transmitted to the center his Statement of Acceptance and Declaration of Impartiality and Independence.

Thereafter, on May 29, 2000, William L. Mathis was notified of his appointment, and the case file was forwarded to him.

Certificates attached to the Complaint as Exhibit A show the Complainant to be the owner of two trademarks registered on the Principal Register by the United States Patent and Trademark Office. Registration No. 1,302,990 relates to DIET RITE for "soft drinks and syrup used in the preparation thereof". This registration was issued initially in 1984 and remains in force. Registration No. 600,085 is for DIET-RITE for "dietetic soft drinks and concentrates for making the same". It was issued initially in 1954, has been renewed, and is in force at the present time.

It is alleged that the Complainant has used its marks consistently since 1954. Further, the allegations indicate that the use has been extensive and has resulted in the mark being widely known:

"Complainant has spent millions of dollars over a period of decades in advertising and promoting its goods under its DIET RITE mark, and has accumulated hundreds of millions of dollars from the goods sold under this mark. As a result, the mark DIET RITE is among the most famous, widely-recognized and highly respected marks in the United States and the trade and general public have come to know, recognize and identify goods with the DIET RITE mark." (Page 6 of Complaint)

Within a month after the February 16, 1998 date of registration of the domain name in dispute, the Complainant sent a complaint letter to the Respondent at the Dix Hills, New York address shown in the WHOIS database. A copy of this letter is attached to the Complaint as Exhibit C. It refers to both of the trademark registrations mentioned above and expresses concerns about trademark infringement, unfair competition and false advertising. It requests that the Respondent stop all use of the domain name and agree to transfer it to the Complainant.

A response from the president of New York Broadcast Services, Inc. is attached to the Complaint as Exhibit D. It says:

"We are in receipt of your certified correspondence dated March 10, 1998. With respect to your concern about trademark infringement, please be advised that we are not currently using, nor do we intend to use our registered domain name "DIETRITE.com", in any manner of commerce that could infringe upon your trademarked use of DIET RITE for soft drinks and syrups. Furthermore, as you may know, mere registration of a domain name in itself does not constitute trademark infringement.

If we can be of any further assistance in this matter, please feel free to contact me by telephone at our Jericho offices listed above, or if you prefer, by email at [email protected]."

Across the bottom of the letter from New York Broadcast Services, Inc. there is a display of the words "Advertising • Media Buying • Production". The overall impression created by the sheet is that New York Broadcast Services, Inc. is in a business that involves advertising, producing advertisements, and arranging for the placement of the advertisements in various media.

The Complainant responded to this communication on April 3, 1998, stating that "the Domain Name Registration Agreement you executed to register this domain name with Networks Solutions, Inc. (‘NSI’) states that you agreed to be bound by NSI’s Dispute Policy", and threatened to lodge a complaint with NSI.

A follow-up was sent by Complainant to the Respondent about a year and a half later. This is attached to the Complaint as Exhibit F. It pointed out that Network Solutions had placed the registration for the disputed domain name on "hold" and again asked that the Registrant consider relinquishing the domain name to the Complainant.

The Complaint also indicates that the Respondent does not perform advertising, media buying or production services for the Complainant and is not licensed or otherwise authorized to use the Complainant’s mark.

There is no evidence as to any website that is accessible through use of the domain name in dispute.

Complainant

The contentions of the Complainant may be summarized as follows:

a) The domain name in dispute is identical or confusingly similar to a trademark in which the Complainant has rights;

b) The Respondent has no rights or legitimate interests in respect of the domain name; and

c) The domain name was registered and is being used in bad faith.

Since no Response was submitted by the Respondent, no contentions are presented directly by the Respondent. However, attention is again invited to the Exhibit D letter referred to above. In this letter, New York Broadcast Services, Inc. asserts that mere registration of the domain name does not constitute trademark infringement and denies having had any intention to use the disputed domain name in any manner of commerce that could infringe "upon your trademarked use of DIET RITE for soft drinks and syrups."

The Panel turns first to the issue of confusing similarity. The Panel does not accept the Complainant’s allegations that "dietrite.com" is "identical" to either of its registered trademarks DIET RITE or DIET-RITE. Differences include the ".com" suffix on the domain name and the inclusion in the registered trademarks of the space or hyphen between DIET and RITE. However, these differences are insignificant to an evaluation of confusing similarity. The Panel finds that each of the registered trademarks conveys substantially the same commercial impression as the disputed domain name. The Panel agrees with the Complaint’s assertion that, the disputed domain name is so "similar to Complainant’s mark as to cause confusion and lead to deception as to the sponsorship of Complainant’s goods" (Complaint, sentence bridging pages 5 and 6).

It is not believed that the Exhibit D letter from the Respondent to the Complainant really denies the fact of confusing similarity. Instead, the comments in the letter are directed toward lack of an intention to use the disputed domain name "in any manner of commerce" that would infringe upon DIET RITE for soft drinks. That is, the letter denies an intent to use "dietrite.com" as a trademark for soft drinks supplied by Respondent. This does not address the confusing similarity criteria of the Policy under which this proceeding is being conducted. The Panel is of the view that confusing similarity exists when a domain name is so similar to a previously existing trademark as to cause interested persons to assume the website designated by the domain name is somehow connected with the products supplied under the trademark or the suppliers of such products.

The Panel next considers the issue of whether the Respondent has rights or legitimate interests in respect of the domain name. In this connection, Paragraph 4.c. of the Policy provides some guidance. This paragraph sets out in a nonexclusive fashion three sets of circumstances for particular consideration. It says that, "if found by the Panel to be proved based on its evaluation of all evidence presented" any of the following will demonstrate the Respondent’s rights or legitimate interests to the domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you … have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

With respect to (i), the record contains no evidence that New York Broadcast Services, Inc. has ever used or made demonstrable preparations to use "dietrite.com" or any corresponding name in connection with a bona fide offering of any goods or services. Hence, the Panel does not find that the circumstances of subpart (i) of Paragraph 4.c. of the Policy have been proved.

Nor is there any evidence that the Respondent has ever been know by "dietrite" or that the Respondent is making a legitimate non-commercial or fair use of the domain name. Accordingly, the panel finds that none of the three sets of circumstances to which the Policy refers as being indicative of a Respondent’s rights or legitimate interests in a domain name exists in this case.

Consideration also has been given to the fact that Paragraph 4.c. of the Policy leaves open the possibility that still other factors might establish a respondent’s rights or legitimate interests in a domain name in some cases. However, no evidence of such factors appears in the present record. Hence, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name "dietrite.com".

Finally, the Panel turns to the question of whether Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4.b. of the Policy describes four sets of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. All of them involve an appraisal of the Respondent’s intentions with respect to the domain name in dispute. Of course, it is the Respondent who is in the best position to show what its intentions have been and are now. However, the Respondent has chosen not to offer in this case any evidence or explanations of any kind.

In these circumstances, the Panel looks to the indirect evidence and whether inferences can be drawn reasonably from such evidence.

Factors of importance are the nature and the fame of the Complainant’s registered trademarks and the understandings prevalent in the community at the time.

Complainant’s Diet Rite and Diet-Rite trademarks are suggestive of a property of a soft drink product. Since such products often contain sweetening agents, the potential user of a DIET RITE soft drink received from the trademark a suggestion that this drink is going to be alright from a dietary perspective, in that the sweetener used is not one which contributes many calories. Given Complainant’s "hundreds of millions of dollars" in sales and "millions of dollars" in advertising with respect to DIET RITE soft drinks over many years, the fame of the trademark can hardly be doubted.

The Panel finds therefore that, at the February 16, 1998, date when Respondent registered the "dietrite.com" domain name with Network Solutions, Inc., the soft drink trademark DIET RITE already was widely recognized in the United States and that the public had come to know and identify Complainant’s soft drinks with the DIET RITE trademark.

Respondent’s business name "New York Broadcast Services" suggests a connection with broadcasting, a subject which has no apparent direct relationship to the intake of food and drink or diets. That is, "dietrite" just does not fit in with a broadcasting business.

The March 27, 1998, letter (Complaint Ex. E) from Respondent to the Complainant is on stationary which refers to the activities of "Advertising", "Media Buying", and "Production". Such activities might well be carried on by a business concerned with assisting manufacturers of goods with the preparation and placement of broadcast advertisements designed to promote sales of the manufacturer’s goods. Such businesses are sometimes referred to as advertising agencies. It is the view of the Panel, however, the domain name "dietrite" does not fit in with an advertising agency.

The inappropriateness of "dietrite" for use in connection with an advertising and/or broadcasting service business may be weighed in the context of a time and place in which DIET RITE already had the status of a very well known trademark for soft drinks which are advertised heavily. The Panel finds it virtually inconceivable that Respondent did not know of the DIET RITE soft drinks in February 1998. This points to an abusive domain name registration, intended to pose a threat to Complainant rather than to promote a legitimate business of the Respondent. By early 1998, cyber piracy had come to be understood as a threat to trademark owners. The practice of registering as domain names the trademarks of other companies in hope of selling them to the trademark owners had become notorious. See in this connection the April 23, 1998, decision in Panavision Intl., L.P. v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q. 2d 1511 (9^th Cir. 1998). Various undesirable potential consequences associated with such practices had been noted, but there were difficulties to be faced by trademark owners who attempted to deal with the problems through conventional court proceedings. In order for a court challenge to proceed, the court ordinarily must have personal jurisdiction over the defendant. However, the cyber pirate could be difficult to find and proofs as to the locus of the effects produced by his registration as a domain name of another’s well known trademark could be elusive.

When the registration of "dietrite.com" by New York Broadcast Services is viewed against the backdrop of knowledge of cyber piracy, its threat to Complainant is intensified. Many of the known facts about Respondent in this case are consistent with piracy. The choice of a domain name that is inappropriate for Respondent’s own business fits in with a purpose of selling the domain name to Complainant. Respondent’s unexplained multiple addresses and the naming of a U.K. company as the pervasive contact for the registration fit in with an attempt to become unavailable for suit.

The bad faith nature of Respondent’s registration and use of "dietrite.com" is confirmed by Respondent’s March 27, 1998 letter (Complaint Ex. D) to Complainant and by its election not to respond to the Complaint in this administrative proceeding. Viewed in a realistic context, Respondent’s refusal to explain even generally any legitimate interest in "dietrite.com" in fact communicated the defiant and threatening message that it would be beyond the power of Complainant to protect Complainant’s trademarks. The letter’s statement, "If we can be any further assistance in this matter, please feel free to contact me…" can be taken as a proposal for negotiation of a price (or other consideration) for removal of the threat.

Accordingly, the Panel resolves the evidence against the defaulting Respondent and finds that the circumstances described in Paragraph 4.b.(i) of the Policy have been adequately proved. That is, the Panel finds that Respondent registered the "dietrite.com" domain name for the primary purpose of transferring it to Complainant for a consideration in excess of Respondent’s costs. According to Paragraph 4.b. of the Policy, this finding "shall be evidence of the registration and use of … [the] domain name in bad faith." There being no evidence to the contrary in the present record, the Panel concludes that "dietrite.com" has been registered and is being used in bad faith.

For these reasons, the Panel decides that the "dietrite.com" domain name in dispute is confusingly similar to marks in which the Complainant has rights, and that the Respondent does not have rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the domain name "dietrite.com" be transferred to the Complainant.

William L. Mathis
Panelist

Dated: June 14, 2000