Weil Lifestyle, LLC v.
Vertical Axis, Inc c/o Domain Adminstrator
Claim Number: FA0702000926455
PARTIES
Complainant is Weil Lifestyle, LLC (“Complainant”), represented by Scott
D. Brown, of Skadden, Arps, Slate, Meagher & Flom
LLP,
The domain name at issue is <vitaminadvisor.com>, registered with
Nameview,
Inc.
PANEL
The undersigned certify that they acted independently and impartially
and to the best of their knowledge have no known conflict in serving as Panelists
in this proceeding.
Hon. Carolyn M. Johnson (Ret.), Diane Cabell, Esq., James A. Carmody,
Esq., (Chair), Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 27, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 28, 2007.
On March 8, 2007, Nameview, Inc. confirmed by e-mail to the
National Arbitration Forum that the <vitaminadvisor.com> domain name is
registered with Nameview, Inc. and that
Respondent is the current registrant of the name. Nameview, Inc.
has verified that Respondent is bound by the Nameview,
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 15, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 4, 2007 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@vitaminadvisor.com by e-mail.
On March 26, 2007 Respondent requested additional time to respond to
the Complaint. Complainant opposed
Respondent’s request. The National
Arbitration Forum reviewed the information submitted by both parties and
granted Respondent’s request, extending the time for Respondent to submit a
Response to April 16, 2007.
A timely Response was received and determined to be complete on April 16, 2007.
Each of the parties timely filed Additional Submissions, which were
considered by the Panel.
On April 25, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Diane
Cabell, Esq., as Panelists, James A. Carmody, Esq., Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <vitaminadvisor.com>, the domain name at issue, is confusingly similar to Complainant’s VITAMIN ADVISOR mark.
2. Respondent does not have any rights or legitimate interests in the <vitaminadvisor.com> domain name.
3. Respondent registered and used the <vitaminadvisor.com> domain name in bad faith.
B. Respondent
1.
Complainant has no rights in the domain name at issue because Respondent
registered the domain name prior to use of VITAMIN ADVISOR by Complainant as a
trademark.
2. Complainant’s mark is descriptive of the
goods and services involved and Respondent has rights and legitimate interests
in using the domain name at issue.
3. Respondent did not register and has not used
the domain name at issue in bad faith.
4. Complainant is guilty of reverse domain name
hijacking.
C. Additional Submissions
Complainant argues that its Complaint satisfies all elements of the
Policy and demonstrates that the domain name at issue should be
transferred. Complainant attaches to its
Additional Submission undated web pages which it alleges date from April 1,
2001 and which contains a text link to “VITAMIN ADVISOR” and which link
apparently resolved to another page (from 1999 web.archive.org records) headed
up as “VITAMIN ADVISER” [sic]. Complainant argues that Respondent is not
legitimately using the domain name at issue by using the associated site for
pay-per-click ads. Respondent,
Complainant says, registered the domain name at issue in bad faith because
Complainant commenced using VITAMIN ADVISOR as a common law trademark seven
months earlier.
Respondent argues that VITAMIN ADVISOR is descriptive and that there
has been no showing that it has acquired any secondary meaning sufficient to
uniquely identify Complainant’s goods and services prior to registration of the
<vitaminadvisor.com> domain name. The use of VITAMIN ADVISOR as a text link to
another web page does not create common law trademark rights. Complainant applied to register VITAMIN
ADVISOR with the USPTO approximately one and one half years after Respondent
registered the domain name at issue.
There is no proof whatsoever that Respondent was or should have been
aware of Complainant’s claimed use of VITAMIN ADVISOR as a common law trademark
when the domain name at issue was registered.
FINDINGS
Complainant Weil Lifestyle, LLC and its
predecessors in interest have been dedicated to developing, practicing, and teaching
others about the principles of integrative medicine.
One component of Complainant's products and services is Complainant's Vitamin Advisor
service, an on-line program that provides users with a list of beneficial nutritional supplements
based on their personal health profile, scientific research, and the recommendations
of Dr. Weil. Complainant has been
offering its Vitamin Advisor service since 2001, and the Vitamin Advisor has generated
gross revenues of more than $42 million since that time. Complainant claims common law trademark
rights in the VITAMIN ADVISOR mark based on
Complainant's continuous use of that mark in commerce, and Complainant has invested considerable resources
developing and promoting that mark. Complainant also currently holds a federally registered
service mark for the VITAMIN ADVISOR (and design) mark (Registration Number 2,855,726). The registration states FIRST USE IN
COMMERCE: 20011106 and that NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE
“VITAMIN” OR “ADVISOR” APART FROM THE MARK AS SHOWN.”
Respondent registered the <vitaminadvisor.com> domain name on October 2,
2001 and has apparently used the associated website for pay-per-click ads and similar purposes since then. There is no evidence in the materials before
the Panel which suggests that Complainant’s VITAMIN ADVISOR mark had achieved a
secondary meaning which exclusively or nearly exclusively served to identify
the origin of Complainant’s goods and services at or prior to the time of
registration of the domain name at issue.
The webpages annexed by Complainant to its Additional Submission do not show
that VITAMIN ADVISOR (or “VITAMIN ADVISER”) served as or was used as a common
law trademark. There is also no evidence
that the Respondent was even aware of Complainant’s common law trademark claim
at the time of registration of the <vitaminadvisor.com> domain
name.
Accordingly, it is clear that Complainant has failed to
satisfy its burden as to the first and third elements of the Policy and it is
not necessary for the Panel to explore element two.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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’s
registration of the VITAMIN ADVISOR mark with the USPTO applies only to a
design plus word mark and not to a word mark alone. Complainant’s USPTO registration explicitly
limits Complainant’s use of the terms VITAMIN and ADVISOR to the context of the
stylized drawing based on the disclaimer included in the registration. In High-Class Distributions S.r.l
v. Onpne Entertainment Services., D2000-0100 (WIPO May 4, 2000), the
panel found that the complainant failed to meet the requirements of Policy ¶
4(a)(i) because the disclaimer in the complainant’s registration was evidence
that the words of the mark out of the context of the stylized form of the mark
“would generally be regarded as incapable of distinguishing by reason of
descriptiveness.” Similarly, in Porto
Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000), the
panel held that “although the complainant has rights in the stylized form of
the trademark LOVELY GIRL in relation to women’s apparel and women’s care
products, those rights cannot prevail over the use of the words ‘lovely girls’
as an accurate description of lovely girls.”
In Porto Chico Stores the panel based its decision on its finding
that while the complainant had rights to the registered, stylized version of LOVELY
GIRL, “ownership of such a mark as a means of identifying the source of particular
goods and services does not entitle the owner of the mark to prevent use of those
words by others in commerce accurately and descriptively in accordance with
their primary meaning in the English language.” Porto Chico Stores, Inc. v.
Zambon, D2000-1270 (WIPO Nov. 15, 2000).
Respondent
registered the <vitaminadvisor.com> domain name on October 2, 2001, a month before Complainant’s
alleged first use in commerce of its mark.
In B&V Associates, Inc. v.
Internet Waterway, Inc., FA 147531 (Nat.
Arb. Forum Apr. 15, 2003), the panel
held that the purpose of the Policy was to protect existing trademarks from potentially
infringing confusingly similar or identical domain names, and thus the complainant’s
registration and rights should predate the respondent’s registration of a domain
name in order for the complainant to have rights in a mark as contemplated by Policy
¶ 4(a)(i). Complainant’s rights in the
VITAMIN ADVISOR mark were not yet established when Respondent registered the <vitaminadvisor.com>
domain name. See Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that
the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent's
domain name registration predated the complainant’s rights in its mark by
nearly two years); see also Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily
implies that Complainant’s rights predate Respondent’s registration . . . of
the domain name”).
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i).
The Panel finds it unnecessary to determine whether Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered the disputed domain name on October 2, 2001, one moth before Complainant’s
stated first use in commerce of the VITAMIN ADVISOR mark. The Policy
has a conjunctive bad faith registration and use requirement. At
least two recent panels have found that if bad faith registration cannot be
proven, the panel need not inquire into bad faith use. See The
Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006)
(“Both bad faith registration and bad faith use have to be proved or
inferred.”); see also Think Serv., Inc.
v. Carlos, D2005-1033 (WIPO Nov. 18, 2005) (finding that in order to prove
bad faith under Policy ¶ 4(b), the respondent must have at least had the
complainant’s mark in mind when registering the disputed domain name and not
just ‘someone’s mark’). There is
absolutely no evidence before the Panel that Complainant had rights as a common
law trademark or otherwise in VITAMIN ADVISOR prior to registration of the
domain name at issue and there is no evidence that Respondent actually or
constructively was aware of Complainant’s claim of such rights. Accordingly, it appears that the registration
of the <vitaminadvisor.com>
domain name was not done in bad faith.
The
Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii).
The Panel elects to make no finding with respect to reverse domain name hijacking.
DECISION
Complainant has not established all three elements required under the
ICANN Policy; accordingly, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., (Chair),
Hon. Carolyn M. Johnson (Ret.),
Diane Cabell, Esq.,
Dated: May 9, 2007
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