Nutri/System IPHC, Inc. v. ELVIS CASTRO / INTROPERU
Claim Number: FA1701001713967
Complainant is Nutri/System IPHC, Inc. (“Complainant”), represented by Lisa Lori of KLEHR HARRISON HARVEY BRANZBURG LLP, Pennsylvania, USA. Respondent is ELVIS CASTRO / INTROPERU (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orangenutrisystem.com>, registered with eNom, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2017; the Forum received payment on January 24, 2017.
On January 25, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <orangenutrisystem.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@orangenutrisystem.com. Also on January 31, 2017, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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, Nutri/System IPHC, Inc., together with its parent company, Nutrisystem, Inc., is a well-known provider of diet and weight loss products and services. Complainant uses the NUTRISYSTEM mark to market and sell its products and services throughout the United States and Canada on the Internet, by telephone, on television, and in certain retail stores. Complainant has rights to the NUTRISYSTEM mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) and other trademark offices throughout the world (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). Respondent’s <orangenutrisystem.com> is confusingly similar to Complainant’s NUTRISYSTEM mark, as the domain name contains the mark in its entirety, merely adding the generic term “orange,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <orangenutrisystem.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent permission to use the NUTRISYSTEM mark in a domain name. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that is being used to advertise and sell goods and services that directly compete with Complainant’s business.
Respondent has registered and used the disputed domain name in bad faith. Respondent uses the disputed domain name and resolving website to attract Internet users and directly compete with Complainant. Additionally, Respondent’s typosquatting behavior is, in itself, evidence of bad faith. Finally, Respondent had actual or constructive notice of Complainant’s rights in the NUTRISYSTEM mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Nutri/System IPHC, Inc. of Wilmington, DE, USA. Complainant is the owner of domestic and international registrations for the mark NUTRISYSTEM, which it has continuously used since at least as early as 1983, in connection with its provision of diet and weight loss products and services.
Respondent is Elvis Castro/IntroPeru, of Lima Peru. Respondent’s registrar’s address is listed as Kirland, WA, USA. The Panel notes that the disputed domain name was created on or about August 10, 2016.
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 claims rights in the NUTRISYSTEM mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,251,922, registered Sept. 20, 1983). Registration of a mark with the USPTO has been found to be sufficient to establish rights in that mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s registration of the NUTRISYSTEM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <orangenutrisystem.com> is confusingly similar to Complainant’s NUTRISYSTEM mark, as the domain name contains the mark in its entirety, merely adding the generic word “orange” and the gTLD “.com.” Addition of a generic word and a gTLD to a mark in order to form a domain name has been found to not distinguish the domain name from the mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The Panel here finds the disputed domain name to be confusingly similar to Complainant’s NUTRISYSTEM mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <orangenutrisystem.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the NUTRISYSTEM mark in any way. Where a response is lacking, WHOIS information has been held to support a finding that the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record identifies Respondent as “ELVIS CASTRO” with “INTROPERU.” Additionally, prior panels have found a lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in a disputed domain name. See 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). The Panel here finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name and resolving website to offer goods and services that compete with Complainant’s business. Past panels have found that use of a disputed domain name to compete directly with a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). The Panel here finds that Respondent is lacking in rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii) for failing to use <orangenutrisystem.com> for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent’s bad faith registration and use of <orangenutrisystem.com> is evinced by Respondent’s use of the resolving website to offer goods and services which compete with Complainant’s business. Previous panels have found use of a disputed domain name to resolve to a website which competes with Complainant to be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so has been found to cause customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that Respondent’s typosquatting behavior is further evidence of its bad faith. Panels have found that typosquatting can be evidence of bad faith under Policy ¶ 4(a)(iii). See Ghost Management Group, LLC v. Ruben Granados / ShooshTime Inc., FA1505001619814 (Forum June 29, 2015) (holding that the respondent had engaged in typosquatting, which is bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent had simply removed the letter “m” at the end of “.com” and had otherwise fully incorporated the complainant’s mark). In the current case, Respondent has added an entire word to Complainant’s mark to create its <orangenutrisystem.com>. However, addition of a word to a mark has been held to not constitute typosquatting. See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum April 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). The Panel here finds that Respondent’s <orangenutrisystem.com> is not typosquatting and as such cannot support a claim of bad faith registration and use on that basis.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <orangenutrisystem.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 17, 2017
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