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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barry D. Sears Ph.D v. Zalman Duchman

Case No. D2006-0818

 

1. The Parties

The Complainant is Barry D. Sears Ph.D., Danvers, Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Zalman Duchman, Surfside, Florida, United States of America.

 

2. The Domain Names and Registrar

There are four disputed domain names:

<homezonediet.com>

<kosherzonediet.com>

<deliverthezonediet.com>

<mykosherzonediet.com>

All are registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2006. On June 28, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 29, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for each of the Domain Names and providing the contact details for the administrative, billing, and technical contact (which are identical for each of the Domain Names). 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 July 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2006.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 2, 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 is an individual residing in the State of Massachusetts, United States of America. The Complainant’s Declaration explains that he is a scientist and author who developed a nutritional program designed “to help people control and balance their hormonal and insulin levels to achieve maximum mental productivity and as a means to improved health.” He adopted the term “zone” to analogize the health benefits of his nutritional program to the mental and physical state (colloquially dubbed “the zone”) achieved by superior athletes at the peak of their performance in sports training and events.

The Complainant, according to his Declaration, began writing, teaching, and consulting about his “zone diet,” using the ZONE mark to brand the program, in 1995. He published a book on the subject, The Zone, in 1996. The book attracted a considerable following and rose to first place on the New York Times bestseller list, remaining on that list for twenty weeks in 1996.

The Complainant has produced eight other books on the subject, all using the term “zone” in the title: Mastering the Zone, Zone Food Blocks, The Anti-Aging Zone, A Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The OmegaRx Zone, and The Anti-Inflammatory Zone. Several of these books have also appeared on the New York Times bestseller list. The Complainant reports that more than five million hard-cover copies of his ZONE books have been sold in the United States, while they have also been translated into twenty-two languages and sold in at least forty other countries. The Complainant has appeared on nationally broadcast television and radio programs to discuss his books, and he has presented his diet program at numerous conferences and seminars in the United States.

Building on the success of his publications, the Complainant advertises and distributes a variety of ZONE-branded health and nutrition products, such as nutritional supplements and recipes. Since 1998, he has also offered ZONE-branded training and consulting services including meal planning, diet and nutrition counseling, and related information services for individuals or physicians. The Complainant publishes an e-magazine, The Omega Zone, and his websites (notably “www.zonediet.com,” “www.zonenetonline.com,” “www.zonecafe.com,” “www.zonelabsinc.com,” and “www.drsears.com”) advertise and provide information about his various ZONE products and services. The Complainant also offers, or licenses others to offer, prepared foods, catering, and restaurant services employing his diet program.

The Complainant declares that he owns approximately 70 trademarks and service marks comprising or including the word “zone” to designate a variety of health and nutrition products and services. These include the following standard-character marks registered on the Principal Register of the United States Patent and Trademark Office (USPTO), as confirmed on the USPTO database:

Mark	Reg. No.	Registered	First Use in Commerce
ZONE	2,689,749	Feb. 25, 2003	May 1995
ZONE SKIN CARE	2,623,974	Sep. 24, 2002	June 2000
OMEGAZONE	2,863,212	July 14, 2004	Mar. 1, 2002
ZONERX	2,929,836	Mar. 1, 2005	Apr. 23, 2002
ZONE CUISINE	2,997,305	Sep. 20, 2005	Sep. 2003
ZONE CUISINE	2,968,210	July 12, 2005	Sep. 2003
DR. SEARS ZONE APPROVED	3,060,942	Feb. 21, 2006	Nov. 16, 2005
ZONENET	3,058,099	Feb. 7, 2006	Mar. 2004
ZONE SHAKE	3,038,265	Jan. 3, 2006	June 1, 2004
ZONE CAFЙ	3,090,926	May 9, 2006	Jan. 28, 2005

The Domain Names were all registered by the Respondent in November 2005. From the WHOIS database entries, it appears that the Respondent is an individual residing in the State of Florida, United States of America.

The Domain Name <homezonediet.com> currently resolves to a website at “www.zoneathome.com” offering home delivery of “Zone Diet Fresh Food” in the South Florida area.

The Domain Name <kosherzonediet.com> currently resolves to the “Kosher” page of the “www.zoneathome.com” website, offering daily delivery of “Glatt Kosher Zone meals and snacks” in Los Angeles and South Florida.

The Domain Name <deliverthezonediet.com> currently resolves to a parking website hosted by GoDaddy.com and featuring links to the Complainant’s “www.zonediet.com” website as well as other diet and weight loss websites.

The Domain Name <mykosherzonediet.com> similarly resolves to a GoDaddy.com parking website, although the links featured on this page include a different set of diet, weight loss, and health websites.

The <www.zoneathome.com>website, to which two of the Domain Names resolve, includes information and tips clearly derived from the Complainant’s publications and similar to those found on the Complainant’s websites (as the Complaint painstakingly documents). There is no direct attribution of the Complainant’s works on the “www.zoneathome.com” website, nor is there a disclaimer of affiliation with the Complainant. No individual or company name is given to identify the operator of the website or the services it advertises. An email contact address is displayed on the website, as well as telephone numbers and a postal address in Miami Beach, Florida.

The Complaint states “on information and belief” that a company named Zone at Home, Inc. provides the goods and services advertised on the “www.zoneathome.com” website, and that the Respondent is “related” to that company. The Panel finds support for these contentions in the following facts available online from official sources:

* the WHOIS database shows the Respondent as the registrant of the “www.zoneathome.com” website;

* the “Corporations Online” database operated by the Florida Department of State, Division of Corporations, lists a Florida corporation with the name Zone at Home, Inc. at the same postal address shown for the Respondent in his listings as the registrant and contact for the Domain Names;

* the same source shows that the corporation was registered in Florida in November 2005, approximately a week after the Domain Names were registered.

No further information concerning the Respondent or the Respondent’s business and his interests in the Domain Names is available on this record, and the Respondent has not replied to email and courier communications from the Complainant and the Center.

 

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Names are confusingly similar to his ZONE, ZONE DIET, and various ZONE composite marks, as registered or as found in pending applications for trademark registration.

The Complainant states that he has not authorized the Respondent to use any of these marks and that there is no evidence of the Respondent having rights or legitimate interests in the marks.

The Complainant contends that pointing the Domain Names either to the Respondent’s competing website or to parking pages advertising other competing websites is evidence of a bad-faith intent to divert Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks. He infers the Respondent’s actual knowledge of the marks because of their fame and because of the apparent references to the Complainant’s ZONE diet program on the Respondent’s website and on the parking websites to which the other two Domain Names resolve. The Complainant also argues that the Respondent had constructive notice of the marks, including ZONE, that were registered prior to registration of the Domain Names.

The Complainant concludes that the Respondent knew or should have known of the Complainant’s marks at the time the Domain Names were registered and acted in bad faith by registering the Domain Names and putting them to the uses described above.

B. Respondent

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

 

6. Discussion and Findings

Under Paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a Domain Name, the Complainant must demonstrate each of the following:

“(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.”

As in other cases where a respondent fails to reply to a UDRP complaint, the Panel must still satisfy itself that the Complainant has met his overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts, supported by plausible evidence (such as documents or sworn statements), must provide a sufficient prima facie basis for finding confusing similarity with the Complainant’s mark(s) and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Names and has registered and used them in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

A. Identical or Confusingly Similar

The Complaint refers to the Complainant’s ZONE, ZONE DIET, and ZONE composite marks as bases for this UDRP proceeding.

The Complainant indisputably holds a US registered ZONE standard character mark, as well as several registered composite marks that incorporate the word “zone.” While there is evidence of pending applications for design marks incorporating the words “ZONE Diet,” there is no evidence in the record or in the USPTO database of a live, registered ZONE DIET mark. The Complaint does not provide sufficient evidence to support a claim of common-law rights in an unregistered ZONE DIET mark. Moreover, none of the registered composite marks are strikingly similar to the Domain Names, except for the ZONE portion of the marks. Therefore, the Panel will examine the Domain Names for confusing similarity only to the registered ZONE mark itself.

“Zone” is a common English word, generally denoting a space, area, or region. The Complainant’s ZONE mark uses the word suggestively, however, invoking the sports colloquialism referring to a physical and mental state of optimal performance. The word “zone” appears in many marks and domain names, generally in combination with other descriptive words (e.g., “www.topozone.com” and “www.gamezone.com”) that are more congruent with its dictionary meaning. Very few of these uses could be considered confusingly similar to the Complainant’s ZONE mark, because the accompanying descriptive words typically have nothing to do with optimizing health, diet, and nutrition.

Here, however, the Domain Names all include the ZONE mark in its entirety and add the word “diet.” Diet is precisely what the Complainant’s famous ZONE-branded goods and services concern. The other words included in the Domain Names do not diminish the likelihood that an Internet user would consider that a website labeled with “zone” and “diet” is associated in some way with the author of the famous “ZONE diet.” To the contrary, the additional words “home,” “kosher,” “my kosher,” and “deliver” all plausibly relate to either home delivery of meals compatible with the Complainant’s ZONE diet program or to a Kosher implementation of that diet program. Thus, the words added to the mark ZONE in the Domain Names enhance rather than diminish the likelihood of confusion. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (finding <guinessbeer.com> confusingly similar to the GUINESS mark because the mark is associated with beer and other alcoholic beverages).

Thus, the Panel finds that the Complainant has satisfied the first element of the UDRP Complaint.

B. Rights or Legitimate Interests

The Complainant states that he has not authorized the Respondent to use the ZONE mark, and this is uncontested.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

From the available record and a review of the websites to which the Domain Names resolve, there is no apparent noncommercial use of the Domain Names. Two of them point to the competing commercial website registered by the Respondent, and two point to parking pages that appear to be customized to include commercial links to diet and nutrition websites, including at least some that appear to be in competition with the Complainant.

There is no evidence that the Respondent is commonly known by any of the Domain Names, and a search of the USPTO database does not reveal that any of the Domain Names is a US registered trademark.

Of greater potential interest is the justification described in Policy, paragraph 4(c)(i) – evidence that the Respondent was using, or demonstrably preparing to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services before notice of this dispute in July 2006. The Complaint argues that the Respondent’s use of the Domain Names to point to competing providers of diet products and services cannot be deemed a bona fide offering of goods or services by the Respondent. See, e.g., The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474.

That argument is clearly persuasive with respect to the two Domain Names that resolve to parking pages advertising a variety of products and services (some of them competing with the Complainant’s), with which the Respondent does not appear to be connected in any way. The Respondent has no evident rights or legitimate interests in so using these Domain Names, unconnected with any bona fide offering of goods or services by the Respondent himself.

The other two Domain Names point to “www.zoneathome.com.” This is a website registered by the Respondent and used for what is apparently a legitimate business, offering home delivery of meals advertised as compatible with a “Zone diet.” The domain name for that website corresponds to the registered name of a Florida company with which the Respondent is apparently connected, Zone at Home, Inc. The Complainant could conceivably challenge the corporate name and various “ZONE” references on the Respondent’s website on trademark grounds, but there is no evidence in the record of such a challenge. In any event, the resolution of such a dispute is not within the scope of this UDRP proceeding. Thus, the Panel must conclude for UDRP purposes that the Respondent is engaged in a bona fide offering of goods and services, taking orders for prepared meals via telephone and the “www.zoneathome.com” website. Indeed, the Panel notes that there are other apparently competing websites offering home delivery of “Zone” meals in Southern Florida, Los Angeles, and other urban regions of the United States, such as “www.zonedietathome.com” and “www.zonechefs.com.” The latter websites are apparently operated by ZoneChefs, L.L.C., a New York company that has applied to the USPTO to register ZONE DIET AT HOME as a US trademark (Serial No. 78707904, filed September 7, 2005).

But in contrast to domain names corresponding to the business names or marks of other competitors offering similar goods or services, it is significant that none of the Domain Names in this proceeding corresponds to the Respondent’s company name, the name that appears on the Respondent’s website, or to any known trademark, service, mark, or trade name held by the Respondent. Thus, the Respondent’s choice of the Domain Names is not obviously covered by the Policy, paragraph 4(c)(i). Conceivably, the Respondent could demonstrate how the Domain Names were intended to be used in connection with a legitimate “Zone at Home” business. But the Respondent has not come forward with such an explanation to rebut the Complainant’s argument that the most likely reason for registering multiple “zone diet” domain names was to confuse and divert Internet users seeking a website associated with the Complainant and his famous ZONE mark and diet program.

Consequently, the Panel finds that the Complainant has established the second element of the UDRP Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint relies on one of these -- Policy, paragraph 4(b)(iv):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Such an intention can very plausibly be inferred in this case from several undisputed facts:

* The Complainant has used the ZONE mark for fifteen years, achieving a degree of fame as the mark has appeared in his best-selling books, on his websites, and in connection with his ZONE-branded diet products and services;

* The Complainant’s ZONE-branded diet program, products, and services have also been the subject of substantial media and advertising exposure, particularly in the United States where both the Complainant and the Respondent are located;

* The ZONE mark was registered in the United States in February 2003, nearly three years before the Domain Names were registered;

* The Respondent offers “Zone diet” meals in competition with products and services offered or licensed by the Complainant;

* The Respondent has pointed two of the Domain Names to his own competing website at “www.zoneathome.com”;

* The Respondent’s website includes “Zone diet” content that echoes, in detail, the Complainant’s terminology and approach as found in his published works and on his websites.

It is highly probable, therefore, that the Respondent was aware of the Complainant’s celebrated, fifteen-year-old diet program, products, and mark when the Domain Names were registered in November 2005. See, e.g., eBay Inc. v. SGR Enterprises and Joyce Ayers., WIPO Case No. D2001-0259 (actual or constructive notice of the Complainant’s rights in a mark supports an inference of bad faith). As described above in connection with the first element of the UDRP Complaint, the Domain Names are confusingly similar to the Complainant’s ZONE mark, and the addition of “diet” and other relevant descriptive words heightens the likelihood of confusion. It is more likely than not that this confusion was intended, and that the Respondent, a direct competitor, sought commercial gain by taking advantage of the ZONE mark to divert Internet users from the Complainant’s websites to his own. The Respondent has not come forward in this proceeding with an alternative explanation for his registration and use of the Domain Names.

The Panel concludes, therefore, that the Complainant has satisfied the third element of the UDRP Complaint.

 

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 Names, <homezonediet.com>, <kosherzonediet.com>, <deliverthezonediet.com>, and <mykosherzonediet.com>, be transferred to the Complainant.

---

W. Scott Blackmer
Sole Panelist

Dated: August 16, 2006