Nutri/System IPHC Inc. v. Domain Listing Agent/Eric Hatcher
Case No. D2008-0425
1. The Parties
Complainant is Nutri/System IPHC Inc., Wilmington, Delaware United States of America, represented by High Swartz LLP, United States of America.
Respondent is Domain Listing Agent/Eric Hatcher, Tucson, Arizona, United States of America.
2. The Domain Name andRegistrar
The disputed domain name <buynutrisystem.com> is registered with Abacus America Inc. d/b/a Names4Ever.
3. Procedural History
The initial Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) onMarch 19, 2008. On March 20, 2008, the Center transmitted by email to Abacus America Inc., d/b/a Names4Ever a request for Registrar verification in connection with the domain name at issue. On March 26, 2008, Abacus America Inc. d/b/a Names4Ever, transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 28, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 31, 2008. 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 Respondents of the Complaint and the proceedings commenced on April 3, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 23, 2008. Respondent Eric Hatcher did not submit any response to contentions of the Amended Complaint but did inquire by email on April 24, 2008 about the possibility of conferring with Complainant. Accordingly, the Center notified Respondent that it was in default.
The Center acknowledges Respondent’s April 24, 2008 email, noting that it was received after the date of default and would advise the Panel of the email when appointed and that it will be at the discretion of the Panel to consider it.
The Center appointed John E. Kidd as the sole panelist in this matter on May 7, 2008. 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 Complaint is based on the following grounds:
Complainant, its parent corporation, and its related companies are the owners of all right, title, and interest in and to the NUTRISYSTEM trademark and to a family of NUTRISYSTEM Marks.
Complainant’s parent corporation is a leading provider of weight-loss programs based on quality foods and nutritionally balance meal plans. Complainant’s business features the trademark/service mark and/or trade name NUTRISYSTEM, either alone, in combination with other terms or designs, or in stylized form. NutriSystem has operated its business under the trademark and trade name NUTRISYSTEM since 1972 and provides its services throughout the United States of America and around the world. In the year 2007, NutriSystem generated total net revenues of $775 million and is a publicly traded company on the NASDAQ Stock Exchange. NutriSystem spent $180 million marketing the NutriSystem name and marks as well as its website, “www.nutrisystem.com”, in calendar year 2007. Through longstanding and continues use, the NUTRISYSTEM trademark has acquired substantial fame, recognition and goodwill.
NutriSystem has owned the domain name <nutrisystem.com> since at least as early as 1996 and has maintained a website identified by this domain name since that time.
Complainant is the owner of numerous US trademark registrations and pending applications for the NUTRISYSTEM mark, either alone, in combination with other terms or designs, or in stylized form. In particular, NutriSystem owns twenty-five (25) US registrations featuring the NUTRISYSTEM mark, many of which have achieved incontestable status. Complainant notably owns trademark registrations for NUTRISYSTEM.COM. Complainant is also the owner of many foreign trademark registrations in jurisdictions around the world.
The NUTRISYSTEM Marks are currently valid and are not the subject of any challenge to their validity. Many of these registrations have achieved incontestable status. In particular, Registration Nos. 1,251,922; 1,297,847; 1,429,657; 1,625,052; 1,731,373; 1,767,562; 1,776.989; and 1,956,649 are incontestable pursuant to the provisions of Section 15 of the Lanham Act, 15 U.S.C. §1065, and thus provide conclusive evidence of NutriSystem’s ownership of and exclusive right in the United States of America to use the mark NUTRISYSTEM in commerce in connection with the goods and services specified in these registrations.
According to the WHOIS database records Respondent registered the domain name in dispute on August 17, 2007.
5. Parties’ Contentions
A. Complainant
On February 11, 2008, Complainant’s counsel sent a letter to Respondent Domain Listing Agent asserting Complainant’s rights in the NUTRISYSTEM trademark and demanding that Respondent cease all use of, and transfer, the <buynutrisystem.com> domain name in dispute to Complainant.
Complainant has received no response from Respondent prior to filing the Complaint.
Respondent registered the <buynutrisystem.com> domain name in dispute in 2007 notwithstanding the fact that Complainant is the current owner of more than thirty (30) years of ongoing use of the NUTRISYSTEM trademark in the United States of America and worldwide.
Respondents do not appear to be “using” the <buynutrisystem.com> domain name in dispute but rather, the domain name in dispute is “parked” with the Registrar Abacus, which offers Registrar and other web services as a default webpage associated with the domain name, including the buying and selling of domain names, website hosting and website design. The webpage at issue is headed “Future home of www.buynutrisystem.com”.
Complainant has not licensed or otherwise permitted Respondent to use the NUTRISYSTEM trademark. Complainant has not licensed or otherwise permitted Respondent to apply for or use any domain name consisting of or incorporating the NUTRISYSTEM mark or any mark similar thereto.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusing Similar
The Panel finds that Complainant’s NUTRISYSTEM trademark; either alone or in combination with other terms or designs as well as its many registered domain name sites have acquired substantial recognition and goodwill through longstanding and continuous use.
Previous panels have recognized that part of the requirements of Paragraph 4(a)(i) is met by a Complainant’s ownership of trademark registrations and/or longstanding common law rights. See Argyle Winery, Inc. v. Telmex Mgmt Services, NAF Case No. FA0202000104480 (March 4, 2002); Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000). Here, Complainant owns numerous prior trademark registrations for essentially the identical mark featured in Respondent’s registered domain name in dispute.
The domain name <buynutrisystem.com> differs from Complainant’s trademark only in that it adds the generic prefix “buy.” The mere addition of a generic word to a registered trademark either as a prefix or suffix has consistently been deemed insufficient to avoid confusing similarity under previous panel decisions. See, Yamaha Motor Corporation, USA v. Gioacchino Zerbo, WIPO Case No. D2007-1879 (February 7, 2008) (“yamahagolfcars” found confusingly similar to Yamaha trademarks); The Carphone Warehouse Limited and The Phone House B.V. v. Choi Young Suk, WIPO Case No. D2007-0921 (“thephonehouse” confusingly similar to “phonehouse”); Hardee’s Food Systems Inc. v. Denise Jones,
WIPO Case No. D2006-1571 (“hardeejobs” held confusingly similarly with “Hardee’s”); Sanofi-aventis v. Daichi Hoang, WIPO Case No. D2006-0363; The Coca-Cola Co., v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (“Coca Cola” and “cocacoladrinks” held confusingly similar); American Online, Inc. v. Yeteck Communication, Inc.,WIPO Case No. D2001-0055 (“aolcasino” found confusingly similar to AOL mark); Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802 (“itoyota” and “itoyotas” confusingly similar to “Toyota” mark); 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §23.50 (4th ed. 2005) (“Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”).
The Panel finds that the domain name in dispute is substantially identical or confusingly similar to Complainant’s registered trademarks.
B. Rights or Legitimate Interest
There is no evidence to suggest that Respondents have any right or legitimate interest in the <buynutrisystem.com> domain name in dispute. In accordance with the Policy, Paragraph 4(c), there is no evidence that Respondents: (a) have used or engaged in any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (b) are commonly known by the domain name; and (c) are making a legitimate non-commercial or fair use of the domain name.
The Panel finds that Respondent do not appear to be “using” the domain name in dispute sbut rather are passively holding it through a “parked” webpage provided courtesy of the Registrar. In the circumstances, passive holding of a domain name does not constitute use in connection with an offering of goods and services. See, e.g., Hoffman-La Roch Inc.v. Alan Truskowski, WIPO Case No. D2006-1606 (disputed domain name parked with GoDaddy.com does not indicate any right or legitimate interest in the domain name); Eveready Battery Company, Inc. v. Oscar Haynes, WIPO Case No. D2003-1005 (“The panel concludes…that Respondent lacks any rights or legitimate internet in the domain name [because] the domain name is not in use as the domain name of an active website [having] been parked for over two years.”); Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675 (“Respondent appears merely to have ‘parked’ the Domain Name [and such use] does not constitute use in connection with a bona fide offering of goods or services”).
Moreover, the Panel concludes that Respondents are not using the domain name in dispute in connection with a bona fide offering of goods and services. The webpage also purports to provide information regarding Complainant’s goods and services, but links the visitor of the webpage to other commercial websites and services. Numerous panels have held that this type of activity is not a legitimate use of a domain name under the Policy, Paragraph 4(c)(i) and (iii). See Neenah Paper, Inc. v. Wang Lee Domains Ltd, NAF Case No. FA0607000756890 (September 6, 2006) (finding use of domain name <neenapaper.com> to lead to Internet website composed of links to third-party websites through which Respondent received pay-per-click fees, is neither a bona fide offering of goods or services nor a legitimate use). Accordingly, the Panel finds that Respondent is not using the domain name in dispute in connection with a bona fide offering of goods and services, because no goods or service are offered on the website. See UBS AG v. Hok Sun Chan, NAF Case No. FA0607000755015 (August 31, 2006) (finding no legitimate rights or interest because the webpage at issue contained only links to third-party websites, and did not offer any goods or services for sale).
Furthermore, the Panel finds that there is no evidence that Respondents are making a legitimate non-commercial or fair use of the domain name because Respondents presumably are deriving “click-through” income whenever an Internet user clicks on one of the links on the parked webpage. See Jerry Damson, Inc. v. Texas International Property Associates, NAF Case No. FA0702000916991 (April 10, 2007) and David Hall Raer Coins v. Texas International Property Associates, NAF Case No. FA0702000915206) (April 9, 2007) (admitting that respondent derived advertising revenue from portal websites connecting users to a broad range of services set up under the disputed domain names). See also, Neenah Paper above; and Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262.
At the time of registering the domain name, the Panel finds that Respondent was at the very least on constructive notice of Complainant’s rights in the NUTRISYSTEM trademark, based on Complainant’s numerous federal registrations and substantial fame and goodwill in the mark. However, given the fact that the domain name in dispute incorporates Complainant’s NUTRISYSTEM mark, it is inconceivable that Respondent did not have actual notice. See Victoria’s Cyber Secret Ltd. P’ship v. Secret Catalogue, Inc., 161 F. Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that a registration on the PTO’s Principal Register is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption pursuant to 15 U.S.C § 1072); see also Victoria’s Secret v. Hardin, NAF Case No. FA0102000096694 (March 31, 2001) (finding that in light of the notoriety of Complainant’s famous marks, respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
There is no evidence to suggest that Respondent is commonly known by the name “NutriSystem” or any similar name thereto. In fact, the evidence suggests that Respondent Hatcher would appear to have used a private registration service to conceal its identity. See Hardee’s Food Systems, Inc. v. Denise Jones,
WIPO Case No. D2006-1571 (February 28, 2007). (Bad faith found where “by virtue of her private registration…with the GoDaddy.com registrar, Respondent concealed her identity, such that Complainant was forced to file an Amended Complaint after the domain name registrar revealed Respondent’s true identity to the Center”); Alarko Holding A.S. v “,”, WIPO Case No. D2007-0909 (September 12, 2007). The WHOIS information for <buynutrisystem.com> identifies the registrant only as “Domain Listing Agent.” See, e. g. Latin Telecommunicaciones S.A. v. WhoisGuard,
WIPO Case No. D2005-0380 (June 20, 2005) (registering under name WhoisGuard “suggests that Respondent is not commonly known by the domain name”).
C. Registration and Use in Bad Faith
The mere addition of a generic term to a Complainant’s trademark is a “first evidence” of bad faith. Yamaha Motor Corporation USA v. Gioacchino Zerbo,
WIPO Case No. D2007-1879 (February 7, 2008).
The Panel concludes that Complainant’s NUTRISYSTEM trademark is widely known in the United States of America and worldwide. Respondent must be taken to have constructive, if not actual, knowledge of Complainant’s famous mark at the time the domain name in dispute was registered. Absent some justification, registration of a domain name containing a famous mark is strong evidence of bad faith. For instance, in Barney’s Inc. v. BNY Bulletin Board,
WIPO Case No. D2000-0059 (April 2, 2000), the panelist found bad faith registration based, inter alia, on respondent’s actual or imputed knowledge of the complainant’s identical famous trademark. Also, in Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403 (June 27, 2000), the panel held that the disputed domain name <charlesjourdan.com> was “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.” See also Singapore Airlines Ltd. v. P&P Servicios de Communicacion S.L.,
WIPO Case No. D2000-0643 (August 29, 2000) (finding that respondent’s registration of <singaporeairlines.com> was a clear case of cybersquatting); Yahoo! Inc. v. David Ashby,
WIPO Case No. D2000-0241 (June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for respondent’s registration of the <yahooventues.com> domain name).
Respondent has not responded to Complainant’s allegations regarding this dispute. Numerous panels have found that failure to respond to such communications is clear evidence of bad faith, primarily because a rational respondent using a disputed domain name in good faith would respond disputing the complainant’s allegations. See, e.g., Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; NFL Properties, Inc., et. Al. v. BBC Ab, WIPO Case No. D2000-0147; Playboy Enterprises International Inc. v. BEG Service KB, WIPO Case No. D2001-0494.
As noted above, Respondent’s <buynutrisystem.com> domain name in dispute is essentially identical and, therefore, confusingly similar to Complainant’s NUTRISYSTEM marks. The Panel concludes that instead of finding Complainant, Internet users are greeted by links to numerous commercial third-party websites for goods or services not provided by Complainant, and which may damage Complainant’s good will.
Moreover, it is likely that Respondent is unfairly gaining “click-through” revenue from its unauthorized use of the <buynutrisytem.com> domain name to redirect Internet users to third-party commercial websites offering goods and services competitive with Complainant when those Internet users click on a “Sponsored Listing.” See Movado LLC v. Titan Net, WIPO Case No. D2006-0824 (August 14, 2006) (stating that the fact that respondent was gaining revenue via click throughs on the “www.movadocompanystore.org” website constitutes evidence of bad faith registration and use); Alarko Holding A.S. v. “,”, WIPO Case No. D2007-0909 (September 12, 2007).
Virtually all of the various factors considered by the panelists in the cases cited above finding against respondents are present in this case: (i) Complainant’s NUTRISYSTEM mark is strong and, indeed, famous; (ii) Respondent cannot convincingly argue with any credibility that it did not know of Complainant’s famous NUTRISYSTEM marks at the time of registration; (iii) Respondent has not provided, any “legitimate purpose” for the registration of the domain name at issue; and (iv) Respondent has failed to use the <buynutrisystem.com> domain name in dispute in connection with a bona fide offering of goods and services.
For all these reasons, the Panel finds that Respondent has registered and is using the domain name in dispute in bad faith under the Policy.
7. Decision
Respondent’s email of April 24, 2008 did not respond to the Complaint, nor offer any evidence or justification for its actions, as such, the email was not considered by the panel. For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute <buynutrisystem.com> be transferred to Complainant.
John E. Kidd Sole Panelist
Dated: May 21, 2008
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