Nutri/System IPHC, Inc. v. Dr Shikha Sharma / Nutri-Health
Claim Number: FA1606001678729
Complainant is Nutri/System IPHC, Inc. (“Complainant”), represented by Lisa Lori of KLEHR HARRISON HARVEY BRANZBURG LLP, Pennsylvania, United States. Respondent is Dr Shikha Sharma / Nutri-Health (“Respondent”), represented by Kirit S. Javali of Jafa & Javali, Advocates, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutrihealthsystems.com>, registered with ZNet Technologies Pvt Ltd.
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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2016; the Forum received payment on June 9, 2016.
On June 10, 2016, ZNet Technologies Pvt Ltd. confirmed by e-mail to the Forum that the <nutrihealthsystems.com> domain name is registered with ZNet Technologies Pvt Ltd. and that Respondent is the current registrant of the name. ZNet Technologies Pvt Ltd. has verified that Respondent is bound by the ZNet Technologies Pvt Ltd. 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 June 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2016 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@nutrihealthsystems.com. Also on June 13, 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.
A timely Response was received and determined to be complete on July 25, 2016.
On August 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it is a well-known and highly respected provider of diet and weight loss products and services for more than 40 years, and has registered the trademark NUTRISYSTEM with the U.S Patent and Trademark Office (“USPTO”) since 1983.
Complainant states that it is a famous and highly esteemed leader in the weight loss industry and became a publicly traded company in October of 1999, and, in the same year, launched its website <nutrisystem.com>. Complainant also argues that it owns a renowned brand and marks, evidenced by its media exposure and the success stories from celebrities and everyday people who have lost weight using its products.
Complainant argues that it has spent hundreds of millions of dollars in the advertisement and promotion of its brand through the Internet, television, print, direct mail, telemarketing efforts, and its website and states that, based on its federal trademark registration and extensive use, it owns the exclusive right to use their marks for a weight management program.
Complainant defends that the disputed domain name is nearly identical and confusingly similar to its marks, as it incorporates the mark in its entirety and merely adds the term “health,” the letter “s,” and the generic top-level domain (“gTLD”) “.com.”, arguing that it is an example of the practice of “typosquatting”.
Complainant alleges that the Respondent has no right or legitimate interests in the disputed domain name, as it is not commonly known by the domain name and, at the time Respondent registered the domain name, it had no trademark or intellectual property rights related to it. Complainant also states that, at the time Respondent registered the domain name, it had been operating under and widely known by the marks for approximately 40 years. Moreover, Complainant defends that the Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
Complainant affirms that it has sent Cease and Desist letters to Respondent, the first of which Respondent replied to, but Respondent did not reply to the second Cease and Desist letter. Complainant argues this failure to reply allows the Panel to accept all allegations of fact in the Complaint as true and conclude that the owner of the domain name has no rights or legitimate interests in it.
Complainant states that Respondent is not using the disputed domain name for a bona fide offering of goods or services, as it is using a confusingly similar domain name to market and sell goods and services that directly compete with Complainant’s business, not using it for a legitimate noncommercial or fair use.
Complainant argues that the earliest date on which Respondent registered the disputed domain name was July 2, 2008, which is after Complainant’s registration of its relevant marks with the USPTO and its registration of the domain name <nutrisystem.com>.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith, due to the Respondent’s typosquatting behavior and its use of the domain name to market and sell goods and services that directly compete with the Complainant. Complainant also argues that Respondent had actual notice of Complainant’s rights in the NUTRISYSTEM marks when it registered the domain name, since Complainant’s marks were registered well before the domain name’s registration and due to the fame and goodwill attributable to Complainant’s marks, as well as the Respondent’s failure to respond to the second Cease and Desist letter.
B. Respondent
Respondent is a well-known and highly specialized preventative healthcare and wellness service provider. Respondent has been actively working in the field of weight management and lifestyle-related disorders for the last seventeen years.
Respondent argues that the disputed domain name is not identical or confusingly similar to Complainant’s marks, as the domain name is a combination of three generic words: “nutri”, “health” and “systems”, which does not come under “typosquatting”, and as it is visually, phonetically and conceptually dissimilar to Complainant’s domain name. Moreover, Respondent states that the suffix ‘s’ is also the part of the generic word ‘SYSTEMS’, which differentiates the Complainant’s Mark from the Respondent’s domain name.
Respondent alleges that it was unaware of the Complainant’s marks or domain name at the time of registration of the disputed domain name. Respondent argues that Complainant has failed to establish the exclusive rights in the word “nutrisystem”, because the mark has not acquired sufficient secondary meaning so as to grant the Complainant exclusive rights to use it. Moreover, Respondent argues that the Complainant’s trademark is not registered in India.
Respondent argues that the question of similarity between two trademarks/domain names or the likelihood of deception or confusion arising from their use is not to be decided in isolation, but would need to be determined always in the background of the surrounding facts and circumstances, referencing that Complainant has no operations presently in India.
Respondent affirms that it has rights and legitimate interests in the domain name, as it has been actively working in the field of weight management and lifestyle related disorders for the last seventeen years and because the disputed domain name has come to be understood and recognized in India as being associated with Respondent’s goods and services.
Respondent argues that on 14th October, 2003 it incorporated the company in the name of Dr. Shikha’s Nutri Health Systems Private Limited in India. Respondent states that it has been promoting the disputed domain name through various channels and that it has advertised extensively through print media publishing, various advertisements in leading newspapers and magazines of India. Moreover, Respondent affirms that when searched for NUTRISYSTEM, Respondent’s domain name does not appear in the first few pages of search results.
Finally, Respondent alleges that the disputed domain name was not registered in bad faith, as it was not registered with intent to typosquat and as it was not aware of Complainant’s mark at the time it registered the domain name, and that Respondent answered Complainant’s cease and desist letter dated April 28, 2016, explaining all the facts and denying Complainant’s allegations.
Complainant is a well-known provider of diet and weight loss products and services for more than 40 years, and has registered the trademark NUTRISYSTEM with the U.S Patent and Trademark Office (“USPTO”) since 1983.
Complainant states that it is a famous and highly esteemed leader in the weight loss industry and became a publicly traded company in October of 1999, and, in the same year, launched its website <nutrisystem.com>.
Respondent registered the domain name <nutrihealthsystems.com> on July 2, 2008.
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.
First, the Panel notes that Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that it is clear that Complainant has rights in the NUTRYSISTEM mark pursuant to its trademark Registrations with the United States Patent and Trademark Office. These registrations evidence Complainant’s use of the mark in commerce since the 1980s. Complainant’s use and registration predate Respondent’s July 2, 2008 registration of the disputed domain name.
The Panel agrees that registration with the USPTO suffices to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant also demonstrates the fame of its NUTRISYSTEM mark through submissions of U.S Today, People Magazine and Forbes.com articles regarding the Complainant’s services and stories from celebrities in relation to their weight loss progress, which demonstrates its well-known trademark.
The disputed domain name is confusingly similar to the Complainant's NUTRISYSTEM registered trademark because it incorporates a well-known mark in its entirety and merely adds: (i) the generic word “health”, which is related to the business in which the Complainant operates, (ii) the letter “s”, and (iii) the gTLD “.com”. The Panel agrees that neither the addition of a generic term, nor the addition of a letter serves to adequately distinguish Respondent’s domain name from a complainant’s mark. See Nutri/System IPHC, Inc. v. Domain Name Proxy service Inc., D2013-2127 (WIPO Jan. 2014)(finding the disputed domain name <nutradietsystem.com> is confusingly similar to the Complainant's NUTRISYSTEM mark despite the minor spelling difference and the addition of a generic or descriptive word).
Likewise, the addition of the gTLD “.com” does not detract from the similarity between the mark and the disputed domain name.
Therefore, the Panel finds the disputed domain name is confusingly similar to the mark in which Complainant has rights.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
After analyzing the case, including the content of the websites under the disputed domain name, the Panel notes that there is no evidence that Respondent has any trademark rights related to NUTRISYSTEM,nor that Respondent provides a bona fide offering of goods or services, nor that there is legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that when a respondent links a confusingly similar domain name to a site offering goods and services which compete with a complainant’s business, the respondent is not making bona fide offerings through the domain name. See Global Rental Co., Inc. v. Truck Sales, FA 1498509 (Forum June 7, 2013) (finding a domain advertising the same types of trucks as the complainant was not being used to make bona fide offerings); Computerized Sec. Sys., Inc. v. Hu, FA 0157321 (Forum June 23, 2003) (finding a domain name selling electronic locks similar to those offered by the complainant was not being used to make bona fide offerings).
While the WHOIS information lists “Dr Shikha Sharma / Nutri-Health” as registrant, there is no evidence in the record that the Respondent was commonly known by the terms on the disputed domain name prior to its registration, as, at the time Respondent registered the disputed domain name, it had no trademark or intellectual property rights related to it, and also there is no evidence that the Respondent is using the mentioned terms for seventeen years to identify its services. Moreover, the Panel notes that Respondent would have been aware of Complainant’s well-known marks at the time it registered the domain name, especially considering the fact that Respondent acts in the same market segment as the Complainant. See Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
The Panel finds that Respondent has failed to provide corroborating support demonstrating it is commonly known by the disputed domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel also finds that it is highly unlikely that Respondent registered the disputed domain name without actual knowledge of Complainant, as they are competitors in the same market segment, and registration with actual knowledge is evidence of Respondent’s bad faith registration.
Therefore, the Panel finds that Respondent lacks rights or interests in the disputed domain name under Policy paragraph 4(c)(i) and (ii) as the evidence establishes that while Respondent is competing with Complainant, Respondent is not using the disputed domain name to make bona fide offerings and is not commonly known by the domain name.
It is also clear that Respondent is not making legitimate noncommercial use of the disputed domain name under Policy paragraph 4(c)(iii).
In view of the above, the Panel finds Respondent does not have legitimate rights or interests in the disputed domain name.
At the time Respondent registered the disputed domain name, due to the fame of Complainant’s trademark, Respondent must have had at least constructive knowledge of the NUTRISYSTEM mark and Complainant’s right therein, as the Complainant had been operating under such mark for approximately 40 years. Additionally, Respondent provides the exact same services as the services offered by Complainant, which increases the chances of knowing about the Complainant’s rights at the time it registered the disputed domain name.
The Panel finds that the fact that Respondent is using the disputed domain name to offer competing services disrupts Complainant’s business, constituting bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Furthermore, Respondent’s awareness of Complainant’s trademark may also be inferred because the mark NUTRISYSTEM is well-known. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, D2000-0911(WIPO Oct. 2, 2000) (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Panel notes that the incorporation of a well-known mark may add to a totality of circumstances in which a finding of bad faith is proper under a nonexclusive Policy ¶ 4(a)(iii) analysis. In the present case, the Panel verifies that it is well clear that Complainant has strong rights in the NUTRISYSTEM mark by virtue of its trademark registrations, its long use of the mark in commerce, its large customer base as well as its investment in advertisement and promotion of its brand thought the Internet, television, direct mail, telemarketing efforts and website. Moreover, the Panel notes that Respondent uses the same marketing strategy used by Complainant, which is to show testimonials of persons who had lost weight.
In view of the above, and considering the totality of the circumstances of the case, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Complainant has therefore satisfied the third and final requirement of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutrihealthsystems.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Dated: August, 23, 2016.
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