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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

New Chapter, Inc. v. Anna Valdieri

Case No. D2006-0109

 

1. The Parties

The Complainant is New Chapter, Inc., Brattleboro, Vermont, United States of America, represented by Bryan Cave, LLP, Chicago, Illinois, United States of America.

The Respondent is Anna Valdieri, Vienna, Austria.

 

2. The Domain Name and Registrar

The disputed domain name <zyflamend.com> was registered with Communigal Communications Ltd on 30 November2004.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2006. On January 25, 2006, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On February 1, 2006, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2006.

The Center appointed Isabel Davies as the sole panelist in this matter on March 22, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant, New Chapter Inc, a company situated in the United States of America is the manufacturer of nutraceuticals, food, dietary and nutritional supplements and natural ingredient-based cosmetics which are distributed throughout the United States and the rest of the world. The Complainant’s goods are made and sold through a variety of mediums, including: retail outlets, catalogues, and the Internet, and are purchased by tens of thousands of consumers every year.

The Complainant is also the proprietor of a number of registered trade marks, including:

- ZYFLAMEND – United States Registration No. 2,598,653, registered July 23, 2002;

- ZYFLAMEND – United States Registration No. 2,511,145, registered November 20, 2001;

- ZYFLAMEND – Community Registration No. E2955904, registered September 14, 2004.

The <zyflamend.com> domain name which is the subject of this dispute was registered with Gal Communications (CommuniGal) Ltd on November 30, 2004. The domain name offers an eclectic variety of mainly leisure-based websites from which users can select, including Air ticket, Car Hire, Insurance, Ring Tones, Dating, Housing, Mortgages. In addition, the home page references numerous websites which offer the ZYFLAMEND products for sale as well as links to various reviews of the products themselves.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that one of its most successful product lines is the ZYFLAMEND brand, which it has been manufacturing and selling since early December 1999. ZYFLAMEND products include dietary and herb supplements (in capsule and liquid form) and has included topical creams. ZYFLAMEND has been the Complainant’s best-selling product-line for a number of years, with sales totaling millions of dollars in 2005.

As a result, of its continued manufacture, sale and marketing of the ZYFLAMEND products since late 1999, ZYFLAMEND has become an extremely valuable and famous brand. As such, the Complainant has acquired considerable reputation and goodwill in its ZYFLAMEND brand name, which is highly unique.

The Complainant states that the Respondent’s domain name incorporates the entirety of the Complainaint’s ZYFLAMEND brand name in which it has common law and registered intellectual property rights. They contend that the Respondent has intentionally chosen the <zyflamend.com> domain name which is identical and confusingly similar to ZYFLAMEND. The Complainant refers to the findings of the Panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, by way of analogy. The Complaint’s case is that the only distinction between the Complainant’s ZYFLAMEND brand name and the domain name is the addition of the generic top-level domain “.com” and that such distinctions are wholly without legal significance. They conclude therefore that the <zyflamend.com> domain name and the ZYFLAMEND brand, are therefore identical.

The Complainant states that Respondent’s “www.zyflamend.com” webstite offers, among other things, “search results” containing various links to third party retailers offering and selling, nutraceuticals, supplements and other pharmacy related goods, which directly compete with the Complainant’s ZYFLAMEND products. The Respondent’s use of the ZYFLAMEND mark is not limited to resale of the Complainant’s products but provides links to numerous third-party sites which are in direct competition with the Complainant.

The Complainant also contends that the Respondent’s website contains prominent use of the Complainant’s ZYFLAMEND brand and trademark. The Respondent is not, however, in any way associated with the Complainant and has never sought or received authorization or a licence to use the Complainant’s ZYFLAMEND mark. This unauthorised use of the Complainant’s ZYFLAMEND mark serves, the Complainant alleges, to falsely imply to prospective consumers that an entity by the name of Zyflamend.com owns and is operating the website and/or that the Complainant is the source of the goods offered through the links and/or that the Complainant sponsors, endorses or is otherwise affiliated with the “www.zyflamend.com” website or the numerous links referenced thereon. In addition, the Respondent’s use of the ZYFLAMEND mark creates confusion amongst users.

The Complainant also alleges that the ZYFLAMEND mark has been registered by the Respondent in bad faith and is being used by the Respondent to intentionally divert, for commercial gain, Internet users to one or more competing websites to generate traffic and sales commissions for her own commercial benefit. They contend that this bad faith conduct provides the Respondent with an unfair commercial advantage. The Complainant relies on, inter alia, previous Net2Phone, Inc. v. Dynasty System Sdn. Bhd, WIPO Case No. D2000-0679 and contends that the Respondent has no legitimate right to use the ZYFLAMEND mark.

The Complainant also argues that, as a result of its long and continuous use of the ZYFLAMEND mark the Respondent plainly knew of its existence at the time the domain name was registered in November 2004. The Complainant also cites, as further evidence of the Respondent’s bad faith, numerous other websites which have been registered by the Respondent which incorporate well-known marks of major companies, organizations and individuals, including, for example: “www.eddiebauer.org”; “www.virginlottery.org”; and “www.departmentofjustice.org”. The Complainant contends that this exemplifies a pattern of bad faith on the part of the Respondent and that the use of its ZYFLAMEND mark by the Respondent is therefore not an isolated incident.

It is alleged, by the Complainant, that the Respondent has provided erroneous contact details for the purposes of the current dispute, and relies on previous Easyjet Airline Company v. Easy-Jet Vacuums, WIPO Case No. D2000-0024 in support of its contention that this is yet further evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name is identical to the Community and the various United States trade marks which are owned by the Complainant. As such, users of the Internet, will, on seeing the domain name, believe that the site is endorsed, authorised, or in some way connected to the Complainant. In particular, given that the domain name specifically refers and offers links to a number of other websites referencing the Complainant’s ZYFLAMEND goods. As a result, the panel considers that the domain name is identical with the Complainant’s ZYFLAMEND registered trade marks.

B. Rights or Legitimate Interests

The Respondent is in no way connected with the Complainant or its business, nor is it authorised by the Complainant to use its ZYFLAMEND brand name or marks. The Respondent has failed to assert any rights in the domain name. In the absence of any such evidence, and given the individuality of the ZYFLAMEND mark, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The Panel considers that given the distinctiveness of the Complainant’s mark, and in particular, that the Respondent’s website specifically refers to ZYFLAMEND goods on the home page, it is unlikely that the Respondent was unaware of the Complainant’s ZYFLAMEND brand/mark. Furthermore, given the reputation of the ZYFLAMEND brand in the marketplace in question and the various registered trade marks owned by the Complainant, (which pre-date the registration of <zyflamend.com>), it is equally inconceivable that the Respondent could have registered the domain name in ignorance of the ZYFLAMEND brand/marks. The Panel also considers that the numerous other domain names which the Respondent has registered which incorporate famous organizations and individuals and which are clearly unconnected with the Respondent, are further evidence that the Respondent is acting in bad faith in using the ZYFLAMEND mark.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zyflamend.com> be transferred to the Complainant.

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Isabel Davies
Sole Panelist

Dated: April 5, 2006