The Lotte Berk Method Limited v. ATTN: lotteberkmethod.com
Claim Number: FA0603000667767
Complainant is The Lotte Berk Method Limited (“Complainant”), represented by Howard C. Miskin, of Stoll, Miskin & Badie, 350 Fifth Avenue, Suite 4710, New York, NY 10118. Respondent is ATTN: lotteberkmethod.com (“Respondent”), c/o Network Solutions, Yukon Territory Box 447 Zimbabwe.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lotteberkmethod.com>, registered with Go Daddy Software, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 28, 2006.
On March 28, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lotteberkmethod.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lotteberkmethod.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lotteberkmethod.com> domain name is identical to Complainant’s LOTTE BERK METHOD mark.
2. Respondent does not have any rights or legitimate interests in the <lotteberkmethod.com> domain name.
3. Respondent registered and used the <lotteberkmethod.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Lotte Berk Method Limited, is a physical
exercise and fitness consultant that invented a unique exercise method under
the LOTTE BERK METHOD mark in 1970.
Complainant owns several studios that are specifically designed to
practice the exercise method.
Complainant has registered the LOTTE BERK METHOD mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 3,025,691 issued
December 13, 2005, filed July 19, 2004).
Respondent registered the <lotteberkmethod.com>
domain name on June 5, 1999.
Respondent’s domain name resolves to its main website at the
<bodyfitstudio.com> domain name, which provides fitness services similar
to, and in competition with, those offered by Complainant.
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 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.
Even though Complainant registered the LOTTE BERK METHOD
mark with the USPTO on December 13, 2005, Respondent registered the disputed
domain name on June 5, 1999. However,
the Panel finds that Complainant is not required to own a trademark registration
for the LOTTE BERK METHOD mark in order to establish rights to the mark
pursuant to Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see also SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist).
Complainant has been continuously and extensively using the LOTTE BERK METHOD mark in connection with its fitness and exercise services since 1970, almost thirty years before Respondent registered the <lotteberkmethod.com> domain name on June 5, 1999. Consequently, Complainant’s LOTTE BERK METHOD mark has generated substantial goodwill and consumer recognition in connection with Complainant’s popular exercise method. Therefore, the LOTTE BERK METHOD mark has acquired secondary meaning sufficient to establish common law rights in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
The <lotteberkmethod.com> domain name is identical to Complainant’s LOTTE BERK METHOD mark pursuant to Policy ¶ 4(a)(i), because Respondent’s domain name wholly incorporates Complainant’s mark and merely adds a generic top-level domain. Panels have held that the addition of a generic top-level domain to a complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the disputed domain name is identical to Complainant’s mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <lotteberkmethod.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <lotteberkmethod.com>
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); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Complainant alleges that there is no evidence in the record
suggesting that Respondent is commonly known by the <lotteberkmethod.com>
domain name, and Complainant has not authorized or licensed Respondent to use
the LOTTE BERK METHOD mark. Despite the
WHOIS information identifying Respondent as “ATTN: lotteberkmethod.com,”
Respondent has not provided any affirmative evidence that it is commonly known
by that name. Therefore, Respondent has
not established rights or legitimate interests in the <lotteberkmethod.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004)
(finding that although “the WHOIS information for the <yasexhoo.com>
domain name states that the registrant is YASEXHOO . . . this alone is
insufficient to show that Respondent is commonly known by the domain name.”); see
also Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb.
Forum Jan. 14, 2004) (“Though Respondent’s WHOIS
information lists Respondent’s name as ‘o. operaciontriunfo.us’ and
organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel
that Respondent was actually commonly known by the [<operaciontriunfo.us>]
domain name.”).
Furthermore, Respondent’s <lotteberkmethod.com> domain name, which includes Complainant’s LOTTE BERK METHOD mark, resolves to a website at the <bodyfitstudio.com>, a direct competitor of Complainant. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion.
Therefore, Respondent’s use of the disputed domain name to intentionally divert Internet users seeking Complainant’s products and services to a direct competitor for its own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Because Respondent’s domain name is identical to Complainant’s LOTTE BERK METHOD and resolves to the website of a direct competitor of Complainant, the Panel finds that Respondent has registered and used the <lotteberkmethod.com> domain name for the sole purpose of disrupting Complainant’s business. In Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001), the respondent registered the <penthaus.com> domain name, which the panel found was confusingly similar to the complainant’s PENTHOUSE mark, and was using it to redirect Internet users to a competing pornographic website. The panel found that as a competitor of the complainant, respondent’s registration of the confusingly similar domain name constituted bad faith registration and use. Id. Here, Respondent’s website at the <lotteberkmethod.com> domain name offers fitness and exercise services similar to those offered by Complainant under the LOTTE BERK METHOD. Therefore, Respondent’s registration and use the disputed domain name is indicative of bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Respondent is using the <lotteberkmethod.com>
domain name, which is identical to Complainant’s LOTTE BERK METHOD mark, to
redirect Internet users seeking Complainant’s products and services to the
website of a direct competitor of Complainant.
Respondent likely receives referral fees for each consumer it diverts to
this website. Therefore, Respondent is
taking advantage of the confusing similarity between Respondent’s domain name
and Complainant’s LOTTE BERK METHOD mark, and profiting from the goodwill
associated with the mark. Use of the
disputed domain name for this purpose provides evidence of bad faith
registration and use under Policy ¶ 4(b)(iv).
See Perot Sys. Corp. v.
Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith
where the domain name in question is obviously connected with the complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lotteberkmethod.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 8, 2006
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