Sensa Products, LLC v. 1 d
Claim Number: FA1112001418934
Complainant is Sensa Products, LLC (“Complainant”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA. Respondent is 1 d (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensa-weight-loss.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 7, 2011.
On December 8, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sensa-weight-loss.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sensa-weight-loss.com. Also on December 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
[a.] The Infringing Domain Name is confusingly similar to Sensa’s SENSA mark. UDRP Rule 3(b)(ix)(1): UDRP ¶4(a)(1).
Dr. Alan Hirsch, creator of the SENSA® Weight-Loss System, has appeared on Dateline NBC, The Oprah Winfrey Show, CNN, The CBS Early Show, Good Morning America and Extra TV. Since its launch, the SENSA® Weight-Loss System has been reviewed in hundreds of local, national and international media sources. As a result of Sensa’s use and registration of the SENSA marks in 2009, and as a result of the substantial publicity generated by Sensa’s unique product, Sensa enjoys strong rights in its mark for dietary weight control.
Sensa has spent in excess of Thirty-four Million dollars ($34,000,000.00) on advertising, including radio at $7,349,979, print ads at $2,479,729, Shop NBC, Home Shopping Network and affiliate marketing.
Complainant SENSA owns two U.S. Trademarks and foreign marks as well. These registrations are incontestable under U.S. Trademark law and are conclusive evidence of: (1) the validity of the SENSA mark as a service mark; (2) the validity of the mark registration; (3) Sensa’s ownership of the SENSA mark; and (4) Sensa’s exclusive right to use the SENSA mark in commerce. 15 U.S.C. § 1115(b); see also Reed Elsevier, Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum, Mar. 18, 2004). Therefore, this Panel will not need to analyze the validity of the SENSA mark or perform any analysis of trademark law. Rather, the Panel need only apply the Policy to Sensa’s incontestable trademark rights.
Sensa’s ownership of its Federal Trademark Registrations for SENSA is sufficient, under the UDRP, to establish rights in the SENSA mark. See Miller Brewing Co. v. Miller Family, FA104177 (Nat. Arb. Forum, Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its Federal Trademark Registrations). Therefore, Sensa has rights in its SENSA mark under UDRP ¶4(a)(1) based on its registrations of the mark with the United States Patent and Trademark Office and non-U.S. agencies.
Respondents’ infringing Domain Name is confusingly similar to Complainant’s SENSA mark because <Sensa-Weight-Loss.com> is virtually identical to the SENSA mark. Under the UDRP, the slight difference between the SENSA mark and <Sensa-Weight-Loss.com> does not offset the overwhelming similarity between the infringing Domain Name and Sensa’s well-established mark.
Not only does Respondent use Complainant’s SENSA trademark in its Domain Name, but its web site virtually copies Complainant’s web site complete with the SENSA mark. Further, the page is replete with ads for products that compete with Complainant’s products. The Respondent merely adds the words “weight loss” to the Complainant’s mark. As a result, Respondent’s use of SENSA within its Domain Name is likely to cause confusion with the Complainant’s mark.
[b.] Respondent does not possess any legitimate rights or interest in the Infringing Domain Name. UDRP Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent cannot establish legitimate rights or interests in the infringing Domain Name because Sensa already owns the SENSA mark. Under UDRP ¶4(c.), Respondent can only establish legitimate rights or interests in the infringing Domain Name if: (1) before notice of the dispute, it was using the Domain Name in connection with a bona fide offering of goods or services; (2) it is commonly known by the Domain Name; or (3) it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain. See UDRP ¶4(A)(II); 4(c). Respondent cannot demonstrate any of these three requirements.
Respondent is using the infringing Domain Name for commercial gain by using hyperlinks to competing products of the Complainant, which hyperlinks are featured prominently on its web site. Respondent is not connected to Sensa. So Respondent’s use of the infringing Domain Name to unfairly compete with Sensa is not a bona fide offering of goods or services pursuant to UDRP ¶4(c)(1).
The WHOIS information lists the registrant of the disputed domain name as “1d”. Using the WHOIS information, it appears that the Respondent here is not nominally similar to Complainant’s mark and thus may not say that he is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).
Based upon Sensa’s wide-spread use of the well-known SENSA mark in the dietary supplement industry, Respondent’s registration of the infringing Domain Name, to offer directly-competitive products through hyperlinks to competitors, was clearly intended to trade off of consumer recognition of the SENSA mark.
[c.] Respondent registered and is using the infringing Domain Name in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP ¶4(A)(III).
Respondent registered and uses the <Sensa-Weight-Loss.com> domain name in bad faith under a Policy ¶4(b)(ii) evaluation.
The Respondent registered <Sensa-Weight-Loss.com> on December 13, 2010, in Bad Faith and has used it continuously in Bad Faith ever since that time.
B. Respondent failed to submit a Response in this proceeding.
Complainant Sensa Products, LLC created the SENSA Weight-Loss System, a dietary weight control program. Complainant holds two trademark registrations for the SENSA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,583,092 registered March 3, 2009).
Respondent 1 d registered the disputed domain name on December 13, 2010. Respondent uses the disputed domain name to resolve to a website meant to look similar to Complainant’s, but which offers pay-per-click links to competing weight loss programs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the SENSA mark under Policy ¶4(a)(i). In support of this claim, Complainant has provided the Panel with evidence of its registration of the SENSA mark with the USPTO, inter alia (e.g., Reg. No. 3,583,092 registered March 3, 2009). Previous panels have determined registration of a mark with the USPTO is sufficient to confer rights in a mark. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶4(a)(i).”); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark). This Panel agrees and holds Complainant has sufficiently established rights in the SENSA mark under Policy ¶4(a)(i). Respondent’s operation in a country other than Complainant’s country is irrelevant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends the <sensa-weight-loss.com> domain name is confusingly similar to its SENSA mark pursuant to Policy ¶4(a)(i). The disputed domain name includes Complainant’s mark, while adding the descriptive terms “weight” and “loss,” two hyphens, and the generic top-level domain (“gTLD”) “.com.” The inclusion of descriptive terms in a disputed domain name does not adequately distinguish the domain name under UDRP precedent. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The terms “weight” and “loss” are clearly descriptive of Complainant’s dietary weight control program. The addition of punctuation, such as hyphens, is also insufficient to distinguish a domain name from a mark under Policy ¶4(a)(i). Finally, it has been widely held affixing a gTLD does not alter the fact a domain name is confusingly similar (to hold otherwise would be to sub silentio overturn the UDRP). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Based on these findings, the Panel concludes the <sensa-weight-loss.com> domain name is confusingly similar to its SENSA mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
It is well-established Complainant has the initial burden of presenting a prima facie case detailing its rights. Once this requirement has been satisfied, as it has been here, the burdens shifts to Respondent to present a Response addressing Complainant’s claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). Where a Respondent fails to produce a Response, some panels have inferred an admission Respondent lacks rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Out of an abundance of caution, this Panel will continue to examine the record to determine whether such rights or legitimate interests exist under Policy ¶4(c).
Complainant claims Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶4(c)(ii). The WHOIS information identifies the domain name registrant as “1 d,” which the Panel finds to be dissimilar to the <sensa-weight-loss.com> domain name. Respondent has failed to satisfy its burden of producing a Response addressing Complainant’s allegations. Without a Response, there is no evidence in the record to support the claim Respondent is commonly known by the disputed domain name. Absent such evidence, the Panel must find Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain name for a website which looks similar to Complainant’s, but which offers pay-per-click links to competing weight loss programs. Complainant argues this is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Previous panels have held using a domain name for a website featuring competing hyperlinks does not satisfy both Policy ¶4(c)(i) and Policy ¶4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). This Panel agrees and finds Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s provision of information about Complainant’s competitors on the website housed at the disputed domain name suggests bad faith under Policy ¶4(b)(iii). Respondent’s use of a confusingly similar domain name may lead some Internet users to unwittingly visit Respondent’s site when they had been searching for information about Complainant’s weight loss program. These misdirected visitors will then be subjected to advertising material from competing weight loss programs, and some visitors may choose a competing program instead. The Panel finds this type of misdirection to constitute bad faith disruption of Complainant’s business under Policy ¶4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)).
Respondent’s registration and use of the disputed domain name also suggests bad faith under Policy ¶4(b)(iv). By choosing to operate at a confusingly similar domain name, Respondent seeks to create confusion among consumers as to the source of its website. Respondent hopes wrongfully associating itself with Complainant’s business will result in Respondent’s website receiving a higher amount of user traffic, theoretically generating more revenue from click-through fees. Respondent has attempted to create confusion for its own commercial benefit. The Panel finds this satisfies Policy ¶4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <sensa-weight-loss.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 13, 2012
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