SBD Enterprises, LLC v. Sherry J. Means
Claim Number: FA1612001708108
Complainant is SBD Enterprises, LLC (“Complainant”), represented by Lisa Lori of KLEHR HARRISON HARVEY BRANZBURG LLP, Pennsylvania, USA. Respondent is Sherry J. Means (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southbeachdietpills.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <southbeachdietpills.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2017 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@southbeachdietpills.com. Also on December 19, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, SBD Enterprises, LLC, is a well-known provider of diet and weight loss products and services. In December 2015, Complainant acquired all rights in the SOUTH BEACH DIET mark from SBD Holdings Group Corp. d/b/a/ South Beach Diet. Complainant has rights in the SOUTH BEACH DIET mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,910,278, registered December 14, 2004). Respondent’s <southbeachdietpills.com> is confusingly similar to Complainant’s mark, as it contains the mark in its entirety—less the spaces—and merely adds the generic or descriptive term “pills” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <southbeachdietpills.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the SOUTH BEACH DIET mark in a domain name. The disputed domain name resolves to a website used to market and sell goods and services that directly compete with Complainant’s business. Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent’s use of the site to attract Internet users for commercial gain, and divert them to a competing website is evidence of Policy ¶¶ 4(b)(iii) and 4(b)(iv) bad faith. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the SOUTH BEACH DIET mark when it registered and subsequently used the disputed domain name, further evidence of bad faith per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, SBD Enterprises, LLC, is a well-known provider of diet and weight loss products and services. In December 2015, Complainant acquired all rights in the SOUTH BEACH DIET mark from SBD Holdings Group Corp. d/b/a/ South Beach Diet. Complainant has rights in the SOUTH BEACH DIET mark based upon registration with the USPTO (e.g., Reg. No. 2,910,278, registered December 14, 2004). Respondent’s <southbeachdietpills.com> is confusingly similar to Complainant’s mark.
Respondent, Sherry J. Means, created the <southbeachdietpills.com> domain name on September 22, 2016.
Respondent has no rights or legitimate interests in the <southbeachdietpills.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the SOUTH BEACH DIET mark. The disputed domain name resolves to a website used to market and sell goods and services that directly compete with Complainant’s business.
Respondent registered and uses the <southbeachdietpills.com> domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires that Complainant must 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.
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(f), 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 (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.”).
Complainant has rights in the SOUTH BEACH DIET mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <southbeachdietpills.com> is confusingly similar to Complainant’s SOUTH BEACH DIET mark under Policy ¶ 4(a)(i), as it contains the mark in its entirety, less the spaces, but with addition of the descriptive term “pills” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <southbeachdietpills.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).Complainant has not authorized Respondent to use the SOUTH BEACH DIET mark. The WHOIS information lists “Sherry J. Means” as registrant. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Respondent has failed to use the <southbeachdietpills.com> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <southbeachdietpills.com> resolves to a website used to market and sell goods and services that directly compete with Complainant’s business. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent’s use of the <southbeachdietpills.com> domain name to confuse Internet users and market goods and services that directly compete with Complainant is evidence of Respondent’s Policy ¶¶ 4(b)(iii) and 4(b)(iv) bad faith. See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent had actual knowledge of Complainant's rights in the SOUTH BEACH DIET mark prior to registration of the<southbeachdietpills.com> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <southbeachdietpills.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 6, 2017
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