The Complainant in this administrative proceeding is Metabolife International, Inc., a California corporation, located and doing business at 5070 Santa Fe Street, San Diego, California 92109. The Respondent is Spectrum Laboratories, Inc., an Ohio corporation, with its principal place of business in Cincinnati, Ohio.

2. The Domain Name and Registrar

The domain name in dispute is as follows: metabolike.com. The domain name was registered by Respondent with Network Solutions, Inc. (NSI) on November 25, 1998.

3. Procedural Background

On May 26, 2000, the WIPO Arbitration and Mediation Center received from Complainant a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on June 14, 2000.

Respondent filed a response, which was received by WIPO on June 27, 2000.

The decision of the Panel was due to WIPO on or before July 25, 2000.

4. Factual Background

As set forth in the Complaint, Metabolife owns numerous U.S. and international trademark registrations, including U.S. Registration Nos. 1,827,188 and 2,282,986, for a wide variety of goods and services, including herbal dietary supplements, vitamins and minerals, other nutritional supplements and related promotional merchandise. See Complaint, Exhibit 1. The METABOLIFE mark was first used by Complainant's predecessor in interest in April 1993. Complainant has invested in excess of $100 million in advertising and promoting its goods and services. Complainant has registered the domain name metabolife.com.

As set forth in the Response, Respondent was incorporated in September 1992 and has been in the business of developing and manufacturing health care products since that time. In November 1998, Respondent met with certain vendors engaged in the business of manufacturing and distributing a new line of weight loss products. According to these vendors, weight loss products were a rapidly growing market. The "nick name" these vendors used to describe their weight loss product was "Metabolike."

After the vendor meeting, and after completing extensive research of the weight loss market, Respondent decided to embark on the Metabolike project. As one of the preliminary steps of building the Metabolike business, Respondent registered the domain name "metabolike.com" on November 25, 1998 with NSI. On January 20, 1999, the articles of incorporation for Metabolike, Inc, an Ohio corporation, were filed.

The development of the Metabolike Web site began in September 1999, and went online that month. Over $9,000 has been expended for advertising "Metabolike" products. See Response, Exhibit C.

On or about March 13, 2000, Complainant wrote to Respondent demanding that Respondent cease producing and selling goods bearing the METABOLIKE mark. See Complaint, Exhibit 8. In a letter dated April 7, 2000, Respondent contended that its use of METABOLIKE did not infringe on the mark METABOLIFE, given the large amount of METABO- prefix products on the market.

Respondent has filed an application (Serial No. 75/754,444) with the U.S. Patent and Trademark Office to register the mark METABOLIKE for food supplements. Complainant has filed an opposition to registration of the mark.

5. Parties' Contentions

Complainant argues that the domain name metabolike.com violates the Policy. More specifically, Complainant contends that the domain name is identical or confusingly similar to the Complainant's marks in which it has prior rights.

Complainant further argues in 8 of the Complaint that Respondent should be considered as not having rights or legitimate interests in the domain name in view of the fact that: (1) Respondent is not an authorized distributor or licensee of Metabolife; (2) Metabolife's use and trademark registrations for METABOLIFE precede the date Respondent registered the domain name metabolike.com; (3) METABOLIFE is a unique and inherently distinctive coined word; and (4) Respondent is not making a legitimate noncommercial or fair use of the domain name in dispute.

Finally, Complainant contends that the domain name metabolike.com should be considered as having been registered and used in bad faith because: (1) Respondent, a direct competitor, seeks to convince the public of the similarities of the parties' products by comparing on its Web site the METABOLIFE and METABOLIKE products with respect to ingredients and other characteristics; (2) in view of Respondent's constructive notice of Complainant's trademark rights, the similarities between the domain name and the METABOLIFE mark, and the strength of the METABOLIFE mark, it may be concluded that the domain name in dispute was registered deliberately to attract the public and divert Internet traffic away from the Metabolife Web site, with the intent of causing confusion as to the source and origin of metabolike.com, of trading on the goodwill related to the METABOLIFE mark, and of seeking to capitalize on the high consumer demand for METABOLIFE products; (3) Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant; and (4) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its domain name by creating a likelihood of confusion with Complainant's mark.

Respondent, on the other hand, contends that the domain name metabolike.com does not violate any portion of the Policy. It first denies that metabolike.com is confusingly similar to metabolife.com since the parties' Web sites are not the same and since the marketplace is saturated by many other products containing the "metabo" prefix.

Respondent then argues that it has a legitimate interest in the domain name. It contends that, before Metabolife provided notice to Spectrum of any dispute over the domain name metabolike.com, Spectrum began to embark on the Metabolike project in connection with a bona fide offering of goods or services.

Finally, Respondent contends that there is no evidence of bad faith in this case, contending that none of the considerations of bad faith set forth in 4.b. of the Policy is applicable. In response to Complainant's contention that Spectrum's constructive knowledge of Complainant's use of METABOLIFE supports a determination of bad faith, Spectrum indicates that "[t]his argument is devoid of any authority or legitimacy."

6. Discussion and Findings

The Panel determines that Complainant has failed to establish all of the elements required under 4.a. of the Policy. In particular, the Panel rules that Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name 1.

The Panel's review of the record persuades it that, prior to notice of the instant dispute, Respondent began use of the domain name in issue in connection with the bona fide offering of goods or services. As noted above, the domain name metabolike.com was registered by Respondent on November 25, 1998. On January 20, 1999, the articles of incorporation for Metabolike, Inc, were filed. The development of the Metabolike Web site began in September 1999, and went online that month. Further, Respondent has spent over $9,000 advertising Metabolike products. None of the facts advanced by Complainant in 8(a)-(c) of the Complainant suggests, let alone requires, a different determination on this issue, pursuant to the relevant Policy.

In view of the above, the Panel denies Complainant's request for transfer to it of the domain name "metabolike.com".

Jeffrey M. Samuels
Panelist

July 23, 2000

Footnotes:

1. As noted in the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, "[i]t should be emphasized that a finding of legitimate right under paragraph 4 (c) means only that the streamlined dispute-resolution procedure is not available and that the dispute is a `legitimate' one that should be decided by the courts. Even though the dispute is legitimate, the domain-name holder's right may not ultimately prevail over a trademark in court." In this regard, the Panel notes that the parties are currently involved in an opposition proceeding in which the issue of whether the use of METABOLIKE is likely to cause confusion with METABOLIFE presumably will be resolved.