metabolive.com

WIPO Arbitration and Mediation Center

The Complainant is Metabolife International, Inc. a California corporation located and doing business at 5070 Santa Fe Street, San Diego, California, U.S.A.

The Respondent is Robert Williams, with an address in Southgate, California, U.S.A.

The dispute concerns the domain name "metabolive.com" (the said Domain Name) registered with Network Solutions, Inc. (the Registrar) of 505 Huntmar Park Drive, Herndon, Virginia, U.S.A.

On July 5, 2000, the Complainant submitted a Complaint electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On June 19, 2000 it submitted the hardcopy of the same to the WIPO Center.

On July 6, 2000, the WIPO Center acknowledged receipt of the said Complaint.

On June 28, 2000, the WIPO Center sent a Request for Registrar Verification to the Registrar. On July 4, 2000, the Registrar confirmed by e-mail to the WIPO Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Domain Name was the Respondent.

On July 14, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as July 14, 2000, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.

The Respondent failed to file the Response with the WIPO Center by the last date, i.e. August 3, 2000. On August 14, 2000, the WIPO Center sent the Notification of Respondent Default to the Respondent and copied it to the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On August 24, 2000, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel, with an electronic version of a Model Form of Administrative Panel Decision.

The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplementary Rules, without the benefit of any Response from the Respondent.

Metabolife owns numerous U.S. and international trademark registrations and applications for the mark METABOLIFE^® (the "Mark") (and for related designs, derivations and logos) for a wide variety of goods and services, including herbal dietary supplements, vitamins and minerals, other nutritional supplements, and related promotional merchandise. The mark METABOLIFE^® was first used by Diet Fitness Weight Loss Centers, Inc. ("DFWLC") in April 1993. On March 22, 1994, the Mark was registered to DFWLC in the principal register of the United States Patent and Trademark Office ("PTO") for use with "vitamin and mineral supplements" as Trademark No. 1,827,188. On August 25, 1998, Complainant and DFWLC entered into an agreement whereby Complainant purchased and was assigned all rights and good will in the Mark. This assignment was filed with the PTO on or before September 24, 1998. Additionally, on October 5, 1999, the Mark was registered to Complainant on the Principal Register of the PTO for use with "herbal dietary supplements" as Trademark No. 2,282,986. Complainant has provided evidence of its U.S. registration and ownership together with evidence of its international registrations of the Mark. These U.S. and international registrations are hereinafter referred to as the "Complainant’s Trademarks." Complainant itself has used the Mark in interstate commerce since July 1995. Accordingly, Complainant is the owner and prior user of the Mark. The Complainant’s Trademarks predate any use or registration of the domain name metabolive.com (hereinafter "the domain name"), are in full force and effect, and have not been abandoned. Complainant therefore has the prima facie exclusive prior right to use the trademark METABOLIFE^® throughout the world, in connection with its registered goods and services, and in connection with its associated marketing and promotional activities, such as in Internet domain names. Complainant has provided a chart showing the current Internet domain names owned by Metabolife to protect its identity from cyber piracy.

In an effort to promote the goods and services provided under the brand name METABOLIFE^®, Complainant has invested in excess of 100 million dollars in extensive advertising and media campaigns including: radio, television, print publications, the Internet and word of mouth. Its official Internet web site at www.metabolife.com makes extensive use of the Complainant’s Trademarks. As a result of these efforts, and its extensive network of authorized distributors providing the highest quality service under the Complainant’s Trademarks, Complainant has created enormous monetary value, reputation and goodwill in the Complainant’s Trademarks. These trademarks are symbols of the Complainant’s high quality reputation and valuable goodwill, and have become, through extensive use and advertising, famous and well-known trademarks throughout the U.S. Complainant has provided sample sales material and promotional merchandise containing the METABOLIFE^®brand name and evidencing the widespread fame and use thereof.

Metabolife is not related to Respondent, has no contracts or agreements with Respondent, has no business relationship or transactions with Respondent, and has no privity with Respondent whatsoever. It has not granted its permission or consent to the use and appropriation of METABOLIFE^® or any colorable imitations thereof in Respondent’s domain name, or in any manner whatsoever.

On or about February 17, 2000, Complainant sent a certified letter to Respondent at the contact address listed by the Registrar. Complainant also attempted to contact Respondent via phone and fax at the numbers listed by the Registrar, which were disconnected. Complainant later discovered that Respondent is no longer associated with S.P.I.N. Inc., but has retained ownership of the subject domain name. Finally, on June 2, 2000, Complainant sent a certified letter to a Mr. Robert Williams at 9609 Kauffman Avenue, Southgate, CA 90280. In response to this letter, Complainant received an email from Respondent on June 6, 2000 from the email address: [email protected] inquiring about the June 2, 2000 letter. The email address [email protected] is the only known method of contacting Respondent. On or about June 8, 2000, Complainant resent the June 2 letter to Respondent at the above email address, which Respondent acknowledged receiving.

On or about June 13, 2000, Respondent contacted Complainant via telephone and notified Complainant that he received the June 2, 2000, letter notifying Respondent that the domain name violated the U.S. intellectual property rights of Complainant, and requesting that Respondent cease and desist this conduct and transfer the name. During this conversation, Respondent stated that he was interested in selling the domain name to a company in the Cayman Islands (which, Complainant was informed, is a competitor of Complainant) for $12,000 and unless Complainant made a reasonable offer, Respondent would sell the domain name to this competitor. Complainant offered to pay Respondent the reasonable costs associated with the domain name, which Respondent refused.

A. Complainant

Essentially the contentions of the Complainant are that METABOLIFE^® is its trademark and trade name, and the Respondent has adopted a substantially identical word for the said Domain Name that is confusingly similar to Complainant’s trademark; that the Respondent has no rights or legitimate interests in the said Domain Name and that the said Domain Name has been registered and is being used by the Respondent in bad faith.

B. Respondent

In view of the fact that the Respondent has not filed his Response, the Panel is in no position to make out his contentions.

6.1 Effect of Respondent’s Default

By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:

"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

In the event of a default, under paragraph (14)(b) of the Rules:

"…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques WIPO Case No. D2000-0004 (February 16, 2000):-

"Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent."

In the instant administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.

6.2 Elements to be proven

However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:

i) the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

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

ii) the Respondent’s domain name has been registered and is being used in bad faith.

The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,

"…the complainant must prove that each of these three elements are present."

6.3 Identical or Confusingly Similar

The Complainant claims rights in METABOLIFE^®. It has received a number of trademark registrations in the U.S.A. and a substantial number of other countries. Complainant has established first use of the invented word METABOLIFE. It has also shown long and substantial use. Through such use, the Complainant has become the owner of the common law trademark. Ownership of the trademark is international in scope. Under the Policy, all that is required of the Complainant is to establish its rights in the trademark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the said Domain Name with the Complainant’s trademark METABOLIFE^® and finds that the second level domain (the SLD) METABOLIVE is substantially identical letter-by-letter to the Complainant’s trademark and merely embodies the syllable "LIVE" instead of "LIFE." The Panel finds that there is such similarity in sound, appearance, and connotation between METABOLIFE^® and the said Domain Name (Metabolive) as to render said Domain Name confusingly similar to Complainant’s trademark.

The Panel also notes that the SLD is also substantially identical with the word METABOLIFE, which is a component of the Complainant’s trade name. The Complainant’s domain name is "metabolife.com", and the Respondent has a confusingly similar prominent part of this domain name in the said Domain Name.

6.4 Respondent’s Rights or Legitimate Interests in the Domain Name

Under paragraph 4(c) of the Policy, the Respondent may demonstrate his rights and interests in the said Domain Name by showing:

i) his use of, or demonstrable preparations to use, the said Domain Name or a name corresponding to the said Domain Name in connection with a bone fide offering of goods or services before any notice to him of the dispute; or

ii) he (as an individual, business, or other organization) has been commonly known by the said Domain Name, even if he has acquired no trademark or service mark rights; or

iii) he is making a legitimate noncommercial or fair use of the said Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

There is no evidence of use or demonstrable preparation to use the said Domain Name on goods or services on the part of the Respondent. His web site is passive/dormant and makes no reference to any business activity, which may reasonably be a base for his rights in the said Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use the word Metabolive.

Metabolive is not the Respondent’s legal name. The Respondent, a natural person, is not commonly known as Metabolive. He is not carrying on any business under the said name. The Respondent cannot have a legitimate claim to the said Domain Name because the SLD "metabolive" used with the top level domain (the TLD) ".com" suggests a commercial enterprise which utilizes the said Domain Name for its business activities.

The evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Domain Name by Respondent.

6.5 Registration and Use in Bad Faith

As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:

"... the name must not only be registered in bad faith, but it must also be used in bad faith."

The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.

By paragraph 4(b) of the Policy, the circumstances indicating registration and use of a domain name in bad faith include the registration or acquisition of the domain name primarily for the purpose of selling or transferring the domain name registration to the Complainant, the owner of the trademark, for valuable consideration. There will also be bad faith registration and use if the domain name has been registered to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.

The registration of the said Domain Name and the subsequent offer to sell the same to the Complainant or one of Complainant’s competitors for a consideration are indicative of registration and use of the said Domain Name by Respondent in bad faith.

The said Domain Name is not being been used in relation to an active web site. Nevertheless as stated by the panel in Telstra Corporation Ltd. v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 18, 2000):

"…the concept of a domain name…being used in bad faith…is not limited to positive action; inaction is within the concept."

The existence of the said Domain Name furnishes the Respondent with an instrument of fraud and deception. The Respondent has the potential to activate his web site in such a manner as to divert the Complainant’s customers to his web site. When this occurs, the goods and services, if any, of the Respondent may be passed off as those of the Complainant.

For all the foregoing reasons, the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Domain Name be transferred to the Complainant. Complainant’s NIC tracking number at NSI for this domain name for transfer purposes is NIC-000614.a67f.

Terrell C. Birch
Sole Panelist

Dated: September 5, 2000