WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Walter P. Maksym, Jr. v. Dzone Inc., Yeonju Hong
Case No. D2012-0869
1. The Parties
The Complainant is Walter P. Maksym, Jr. of Chicago, Illinois, United States of America (“U.S.”), self-represented.
The Respondent is Dzone Inc., Yeonju Hong of Gwangju, Korea.
2. The Domain Name and Registrar
The disputed domain name <dietsdontwork.com> (the “Domain Name”) is registered with Fabulous.com (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 26, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 1, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on June 4, 2012. 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.
The Panel issued a procedural order on June 25, 2012 requesting that the Complainant provide evidence supporting his contention that he is the assignee to the rights in the book “Diets Don’t Work” by Dr. Robert M. Schwartz within 48 hours. In response to the Complainant’s request for an extension of time because the supporting evidence was in storage, the Panel allowed him time until July 4, 2012 to file the evidence. In order that the Respondent is treated equally, the Panel also ordered that it will accept any evidence filed by the Respondent within the new deadline. The Complainant filed its evidence on July 3, 2012 and the Respondent filed its response on July 4, 2012.
4. Factual Background
The late Dr. Robert M. Schwartz was the author of the book, “Diets Don’t’ Work” (“the Book”). The Book was first published in 1982. “Diets Don’t Work” was registered as a trade mark in the U.S. on February 19, 1993 by Dr. Schwartz under trade mark number 1802371 in Class 41 in relation to educational services; namely, conducting courses, seminars, and workshops in the field of weight loss and physical conditioning and distributing course materials therewith. From the records in the USPTO, the trade mark was cancelled on December 15, 2000.
Dr. Schwartz passed away on September 8, 2001. On March 24, 2004, his estate assigned the copyright, trade mark and all intellectual property rights and interests in connection with the Book and other related works to the Complainant. The Complainant’s claim is based on unregistered trade mark rights in “Diets Don’t Work” which he has acquired as a result of long and extensive use of the mark.
The Domain Name was registered on October 10, 2000. The Domain Name is connected to a website (“the Website”) which is a parking page with links to a variety of websites including those relating to weight loss and dieting.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to his trade mark “Diets Don’t Work” which it has unregistered rights by reason of long and extensive use. The following are the claims made by the Complainant in relation to use:
(1) The Book was first published in 1982 and has been in continuous publication and sale since then.
(2) The Book is still sold on the “www.amazon.com” website.
(3) The cover of the Book makes a claim that over 600,000 copies have been sold.
(4) The Book was based on a series of seminars and courses under the title Diets Don’t Work by Dr. Schwartz.
(5) The Book was on the New York Times bestseller list at one time;
(6) The Book has been recommended by the Harvard University School of Public Health and other major universities.
(7) Dr. Schwartz also produced, marketed and distributed a video for “Diets Don’t Work” in 1985 and wrote the book “Diets Still Don’t Work” in 1990. Both the video and the book have been in continuous sale since first publication.
(8) The Book has been featured in more than 2000 radio and television shows in many parts of the world including the U.S., Canada and United Kingdom. The programs include the Oprah Winfrey show (at least 5 times in the 1970 and 1980s), Barbara Walters’ The View and the Sally Jesse Raphael Show.
(9) The Book has also been quoted in many publications including USA Today, Cosmopolitan, Men’s Health and Redbook.
(10) The Complainant acquired these rights from the original owner of the trade mark on March 24, 2004 and through his various companies including Diets Don’t Work, Inc. has published, distributed, licensed, promoted and sold books, DVDs, videos, audio tapes, apparel, course seminars, lectures, consulting services and other related products for weight loss under the name “Diets Don’t Work”.
(11) He has also licensed the book to publishers to translate in foreign languages including Japanese in 2004 and 2007, Russian in 2005 and Korean in 2007.
(12) The cover of the Japanese or Korean version of the book bears the name “Diets Don’t Work”.
(13) The Complainant owns the domain name <dietsdontwork.net> which was registered on September 19, 2004.
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that, for various reasons, the Respondent has no rights or legitimate interests in the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
First, neither the Respondent nor its business has ever been known by the Domain Name.
Second, the Respondent is in the business of registering, misusing and selling domain names particularly domain names of trade marks belonging to third parties. It owns thousands of domain names under various aliases including Dzone, Inc, Yeonju Hong, and other entities. The Website states that the Domain Name is for sale with the contact address listed as […]@gmail.com which is also the contact address for two of the proported aliases. The Domain Names that it has registered in the past include the following trademarks: Dell, Save the Children Federation, Inc, Columbia Pictures Industries, Nintendo, Missoni, Sheraton, Expedia and Accor.
Third, the Respondent is a known cybersquatter operating under various aliases and has had many UDRP decisions against it and its various aliases for misuse of the trade marks of third parties.
Fourth, the Respondent’s business is not in connection to a bona fide business offering but rather to direct Internet traffic to various third party websites and/or offering to sell the Domain Name to the Complainant or a third party thereby unlawfully profiting from the Complainant’s trade mark and goodwill.
(iii) Registered and Used in Bad Faith
Lastly, the Complainant contends, also for various reasons, that the Respondent registered and is now using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
First, it was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the owner of the trade mark or a competitor of the Complainant.
Second, the Domain Name was registered in order to prevent the Complainant from reflecting the mark in a corresponding Domain Name and the Respondent has engaged in a pattern of such conduct as evidenced in the UDRP decisions against the Respondent and its different aliases. The Complainant contends that the Respondent is offering the Domain Name for sale for not less than USD 10,000. The […]@gmail.com appears to be the contact name used by all the various aliases.
Third, the Domain Name was registered primarily for the purpose of disrupting the Complainant’s business.
Fourth, the Domain Name is being used to intentionally attempt to attract for commercial gain, Internet users to the Website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Website or location or of a product or service on the website or location.
B. Respondent
(i) Identical or Confusingly Similar
The Respondent contends that the Complainant has failed to submit any evidence that it is the owner of a registered trade mark for “Diets Don’t Work” or the assignee of the rights in the book Diets Don’t Work by Dr. Schwartz. The Complainant failed to provide evidence of his rights to the book and the name by July 4, 2012. It therefore had no better rights in the name than anyone else.
The Complainant’s domain name <dietsdontwork.net> was registered on September 19, 2004 which postdates the registration of the Domain Name.
A third party has registered <dietsdontwork.org> on July 29, 2000 which also predates the Complainant’s domain name and the owner of the domain name also owns the trade mark for “Diets Don’t Work”.
(ii) Rights or Legitimate Interests
The Respondent was unaware of the existence of the books “Diets Don’t Work” by Dr. Schwartz when registering the Domain Name on October 10, 2000. The Domain name was registered as a part of its business which invests and trades in descriptive, generic, dictionary word, and keyword domain name combinations.
The Respondent has used the Domain Name in connection with pay-per-click advertising of generic goods and services, none of which mentioned or were competitive with the Complainant’s trade mark.
(iii) Registered and Used in Bad Faith
The Domain Name was not registered in bad faith as the Respondent was unaware of the book “Diets Don’t Work” by Dr. Schwartz when registering the Domain Name some 12 years ago on October 10, 2000. It was registered in good faith when it expired in 2000 for its value as a keyword domain name combination. It did not register the Domain Name with the intent to sell it to the Complainant or a competitor.
The Respondent has many domain names but they are unrelated to the present case. Investing and trading in domain names is part of the Respondent’s business and any of the disputes against the Respondent were at least six years ago and it has “repented” of its “previous behaviours”.
(iv) Reverse Domain Name Hijacking
For all the reasons above, the Respondent is requesting the Panel to make a finding of Reverse Domain Name Hijacking against the Complainant.
6. Discussion and Findings
A. Procedural
Following the filing by both parties of its respective evidence on July 3 and July 4, 2012, the Complainant requested for permission to file a response to the Respondent’s response. The Panel refused to accept any additional filings. Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The purpose of the UDRP is to provide for a quick and inexpensive way to resolve domain name disputes. Each party has one opportunity under the Rules to put forward its entire case. The Complainant being the initiator of the proceedings has an obligation to anticipate the possible arguments that the Respondent may put forward as there may be no other opportunity to file additional evidence. It is only in exceptional circumstances that a Panel will allow additional evidence to be filed. In this case both parties had already been given some leeway in relation to the filing of their respective evidence. The Complainant, in its application to the Center to file additional evidence, did not provide any reason why such additional evidence would be relevant to the case and why he was unable to provide that information in the Complaint. Hence it is not an appropriate case under the circumstances for any more additional evidence to be considered.
B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Panel has considered the evidence and is satisfied that the Complainant is the assignee of all the intellectual property rights in the book and name “Diets Don’t Work” originally created by Dr. Robert M. Schwartz. In order to satisfy the first UDRP element, the Complainant has to prove that he has rights to the trade mark which is identical or confusingly similar to the Domain Name. In this case as there is no reliance by the Complainant on any registered right, the Complainant would have to prove that he has common law or unregistered trade mark rights in the mark “Diets Don’t Work”.
The Consensus View in Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The fact that the Complainant is the owner of the copyright in a book titled “Diets Don’t Work” does not on its own satisfy the first element. The Consensus View makes it clear that the Complainant typically has to show that the name has become a distinctive identifier associated with the Complainant or his goods and services. The Complainant has made a number of assertions in relation to the fame of the Book and the long and extensive use of the name. However the Panel finds the Complainant has failed to provide sufficient supporting evidence to substantiate these claims.
Aside from the claim on the cover of the book that over 600,000 copies have been sold, the Complainant has not provided any sales or advertising figures in relation to the book and all the other related activities done under the name “Diets Don’t Work”. It is also not clear when the 600,000 copies were sold. The Panel looked at the soft copy of the book on sale on the Amazon website and the copyright notice on the inside cover appears to suggest that the book was printed in 1996. There is an absence of any information as to what the recent sales figures are which is crucial in making any determination in relation to the reputation and goodwill in the mark “Diets Don’t Work” acquired by the Complainant.
It is not clear from the allegations made in the Complaint when the book was on the New York Times Bestseller list, recommended by the various universities, featured on the various television shows or quoted in the various magazines and journals. No evidence was submitted to substantiate these claims and if the publicity of the book occurred only in the early 1980s when the book was first published, that will affect the relevance of the promotional activities of a claim that the Complainant has common law rights in “Diet Don’t Work” mark at this time.
In the case of S.N.C. Jesta Fontainebleau v. Po Ser,
WIPO Case No.D2009-1394, where the complainant had put only limited evidence before the panel in relation to a name in which it claimed common law rights, the complainant invited the panel to conduct a Google search of the name which the panel did and found that all the references on the first page of the search results were references to the complainant’s hotel complex. It was clear to the panel that that name was best known for the name of the Complaint’s hotel complex, which suggested to the panel that the name had a significant reputation. Further the fact that the respondent’s website featured many hyperlinks to the complainant’s competitors suggested that the name was generally well-known as the name of the complainant’s hotel complex.
The Panel did a Google search of the name “Diets Don’t Work” and the Complainant or his business did not feature on the first page of the search results. The Book did come up on the Amazon website, but this came after a website connected to the domain name <dietsdontwork.co.uk> for personal training services, an article in The Guardian with the title “Diets Don’t Work in the Long Term, says survey”, an article in Psychology Today titled “Why Diets Don’t Work…and what does?” There was also a website connected to <dietsdontwork.org> which belonged to a third party who also apparently owns the trade mark for “Diets Don’t Work” in the U.S.
The trade mark “Diets Don’t Work” is a descriptive term and as stated in the Consensus View of the WIPO Overview 2.0, paragraph 1.7, the Complainant is required to present compelling evidence of secondary meaning or distinctiveness.
The Complainant having not established to the satisfaction of the Panel that he owns trade mark rights, it follows that he is unable to succeed in respect of this element and therefore fails to prove the Complaint. It is therefore unnecessary for the Panel to consider the issue of identity or confusing similarity, rights or legitimate interests to the Domain Name and bad faith.
It is however necessary for the Panel, having reached this finding, to consider the issue of reverse domain name hijacking as raised by the Respondent.
D. Reverse Domain Name Hijacking
The Respondent submits that the Panel should make an order finding Reverse Domain Name Hijacking under paragraph 15(e) of the Rules.
The mere fact that the Complaint was not successful is not itself sufficient for a finding of Reverse Domain Name Hijacking. The Complaint failed not because of any bad faith on the part of the Complainant but because of insufficient evidence filed to support a claim of ownership of unregistered trade mark rights or common law rights.
The Panel has reached the conclusion that it is not prepared to make a finding of reverse domain name hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
Karen FongSole Panelist
Dated: July 11, 2012
