The Complainant is McKeith Research Ltd, of London, United Kingdom of Great Britain and Northern Ireland, represented by Williams Powell, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Forsyte Corporation, of Nassau, Bahamas.
2. The Domain Name and Registrar
The Disputed Domain Name <gillianmckeith.com>is registered with AdoptADomain.net Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 20, 2007, the Center transmitted by email to AdoptADomain.net Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2007, AdoptADomain.net Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2007.
The Center appointed Charné Le Roux as the sole panelist in this matter on August 28, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is McKeith Research Ltd, a UK Limited Company with an address in London, UK. It was formed in October 1998. It asserts rights in the trade mark DR GILLIAN McKEITH and owns several registrations in international classes 5, 30 and 31 for marks incorporating DR GILLIAN McKEITH, including:
DR GILLIAN McKEITH’s OatQuis
DR GILLIAN McKEITH’s MilQuiOats
DR GILLIAN McKEITH’s LIVING FOOD LOVE BAR
DR GILLIAN McKEITH’s LIVING FOOD HEART BAR
DR GILLIAN McKEITH’s ORGANIC JUICE ENERGY
DR GILLIAN McKEITH’s LIVING FOOD ENERGY
DR GILLIAN McKEITH’s LIVING FOOD IMMUNE DEFENSE
DR GILLIAN McKEITH’s FAST FORMULA WILD PINK
DR GILLIAN McKEITH’s FAST FORMULA HORNY
DR GILLIAN McKEITH’s NOT MILK,
The registrations cover a wide variety of foodstuffs, prepared meals, non-pharmaceutical food supplements, non-alcoholic drinks and the like. The first registration obtained was for the mark DR GILLIAN McKEITH’s LIVING FOOD ENERGY dated March 1999, others followed in 2001, 2002 and 2004.
The Complainant also asserts rights in its range of DR GILLIAN McKEITH trade marks through widespread use that it has made of them in relation to food supplements and healthcare, dietary consultancy, instructional and entertainment services. The Complainant submitted various articles published on the internet that feature DR GILLIAN McKEITH branded goods and services, including an invitation to join the DR GILLIAN McKEITH club on the website at “www.gillianmckeithclub.com”. The Complainant’s principal, DR GILLIAN McKEITH, is the author of best selling books and also presents a popular UK television show watched by viewers in 17 countries world wide.
The Respondent registered the Disputed Domain Name on October 20, 2005. The Disputed Domain Name is currently owned by the Respondent on record and is connected to a website which features sponsored links to the websites of third parties that relate to health care but also other topics including the sale of airline tickets, ringtones, car insurance and the like.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is the owner of the trade mark DR GILLIAN McKEITH (and variations of it), through use that it has made of the marks since approximately 1998 and also registrations that it obtained for them in the United Kingdom. The Complainant contends that the Disputed Domain Name is similar to its principal trade mark DR GILLIAN McKEITH in that it comprises the distinctive element of the trade mark, namely “Gillian McKeith”.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Disputed Domain Name is used purely to redirect internet users to a search portal featuring certain information on DR GILLIAN McKEITH but also unrelated information, purely for the Respondent’s own commercial purposes;
b) the Respondent has never been commonly known by the Disputed Domain Name and has never done business under the Disputed Domain Name;
c) the Respondent has intentionally attempted to attract, for commercial gain, internet users to an online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of a service on the Respondent’s website or location;
d) the Disputed Domain Name suggests that the Complainant is or may be associated with the Respondent and there is a likelihood that the Domain Name was registered in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name;
e) the Disputed Domain Name contains links entitled “free sexy webcam videosGillian McKeith” and other links with a similar sexual content which will be associated with the Complainant’s trade mark and which is potentially damaging to the Complainant’s business and repute in its trade mark.
The Complainant furthermore contends that the Respondent has registered and is using the Disputed Domain Name in bad faith because the Respondent is attempting to attract internet users to its website for commercial gain. This is based on the substantial reputation that attaches to the trade mark DR GILLIAN McKEITH and the subsequent confusion that will be created with the Disputed Domain Name. The website attached to the Disputed Domain Name also contains links to the websites of unrelated third parties at “www.worldbooks.co.uk”, “www.whsmith.co.uk” and “www.naturesclock.co.uk” which are accessed by clicking on various “Gillian McKeith” links, for example “Gillian McKeith books”. Presumably click-through revenue will be generated in this way.
The Complainant contends that the Respondent, by incorporating various references to “Dr. Gillian McKeith” in the website attached to the Disputed Domain Name, acknowledges that consumers associate the name “Gillian McKeith” with the activities of “Dr. Gillian McKeith”.
The Complainant contends that the association of the name “Gillian McKeith” with pornographic material is potentially damaging to the Complainant.
The Complainant also contends that the fact that there is no obvious relationship between the Respondent and the name “Gillian McKeith”, that the Respondent does not have a founding principal or director with this name and is not conducting business under the name “Gillian McKeith” either, is evidence of bad faith.
The Complainant requests that the Disputed Domain Name be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it owns rights in the range of DR GILLIAN McKEITH trade marks based on its trade mark registrations and use of the marks.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark DR GILLIAN McKEITH. The only difference between the domain name and the Complainant’s trade mark is the title “dr” which appears in the Complainant’s trade mark. This is not a particularly distinctive feature of the Complainant’s trade mark and will not obviate the likelihood of confusion with the Disputed Domain Name.
B. Rights or Legitimate Interests
The Panel in Do The Hustl,e LLC v. Tropic Web,WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than a mere assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interest in a domain name.
The Complainant in this matter has made the required prima facie showing, to which the Respondent has not reacted. By failure to file a response, the Respondent has failed to demonstrated rights or legitimate interests in the Disputed Domain Name. See Time Out Group Ltd v. Marc Jacobson,WIPO Case No. D2001-0317.
On the record presented in this matter, the Respondent registered the Disputed Domain Name after use and registration of the DR GILLIAN McKEITH range of trade marks had already taken place. In fact, the trade mark DR GILLIAN McKEITH’s LIVING FOOD ENERGY was registered more than 5 years prior to the registration of the Disputed Domain Name. The Panel finds it quite probable that the Respondent was aware of the Complainant’s trade mark when it registered the Disputed Domain Name.
The Panel finds that internet users would in all likelihood be attracted to the Disputed Domain Name as a consequence of the DR GILLIAN McKEITH trade mark and that they would be likely to access the website attached to the Disputed Domain Name because of interest in the Complainant’s services and activities.
The Panel also finds that the Respondent’s choice of the Disputed Domain Name indicates an intention to derive a benefit from the goodwill that attaches to the Complainant’s trade mark, particularly since the Respondent undoubtedly generates revenue through the sponsored links that appear on the website.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on paragraph 4(b)(iv) of the Policy, which provides that bad faith may be evidenced by use by the Respondent of the domain name with the intention to attract, for commercial gain, internet users to the Respondent’s website or other online location, by creating the likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Panel finds on the record presented, that a case has been made out in terms of paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent is intentionally attempting to divert internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant’s DR GILLIAN McKEITH trade mark and that the Respondent is in all likelihood engaging in such conduct in order to reap a commercial benefit.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <gillianmckeith.com> be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: September 11, 2007
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