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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry D. Sears, Ph.D. v. YY / Yi Yanlin

Case No. D2007-0286

 

1. The Parties

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

The Respondent is YY / Yi Yanlin of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <wwwzonediet.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2007. On March 1, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On the same date, Intercosmos Media Group d/b/a directNIC.com 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 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 March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2007.

The Center appointed Luca Barbero as the sole panelist in this matter on April 10, 2007. 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 contends that it is the owner of over seventy trademarks and service marks consisting of or comprising ZONE for health and nutrition products and services, such as the ZONE trademark (No. 2689749) registered on February 25, 2003 in the United States of America and the ZONE SKIN CARE trademark (No. 2623974) registered on September 24, 2002 in the United States of America.

The Respondent registered the domain name <wwwzonediet.com> on April 28, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant is a scientist and author who has achieved considerable fame in connection with a lifelong hormonal and insulin control program, first created about 15 years ago. The Complainant’s program uses food as a drug to help people control and balance their hormonal and insulin levels to achieve maximum mental productivity and as a means to improved health. In 1995, the Complainant branded its writing, teaching and consulting on the benefits of an insulin balanced hormonal control diet with the term ZONE.

The Complainant emphasizes that the term ZONE is not used in its ordinary sense to mean “an area” (e.g., “play zone” describing a specific area dedicated to playing) but as fanciful.

The Complainant indicates that its ZONE branded health and nutrition products and services are widely known – from its ZONE branded books, numerous and frequent live and taped appearances, including seminars, conferences, radio shows, and network television interviews, across the United States of America – and is therefore known throughout the United States of America. The Complainant asserts that it has built up valuable goodwill and reputation in the trademarks ZONE and ZONE DIET and its composite marks incorporating ZONE for health and nutrition products and services designed to help people control hormone levels and insulin levels.

The Complainant states that it is the owner of over seventy trademarks and service marks consisting of or containing ZONE for a wide array of health and nutrition products and services such as the ZONE trademark (No. 2689749) registered on February 25, 2003 in the United States of America and the ZONE SKIN CARE trademark (No. 2623974) registered on September 24, 2002 in the United States of America.

The Complainant also states that it owns common law trademarks, inter alia the ZONE and ZONE DIET trademarks (word marks) used since 1998 in connection with “education and counseling services in the fields of diet, health and nutrition, meal planning services” and the ZONE trademark (figurative mark) used since 1995 for “printed materials namely, a series of books in the field of diet, health and nutrition” which have been widely used since prior to the Respondent’s registration and use of the <wwwzonediet.com> domain name in April 2003.

The Complainant asserts that its unregistered trademarks consisting of or comprising the word ZONE have acquired secondary meaning in the mark entitling it to common law trademark protection since the Complainant has continuously and substantially used the marks ZONE, ZONE DIET, ZONE CRUISE and ZONE CONSULTANTS in connection with education and counseling services in the fields of diet, health and nutrition since 1998; the Complainant has continuously and substantially used the mark ZONE and ZONE DIET since 1995. Furthermore, thousands of consumers have purchased ZONE and ZONE DIET products and services and participated in the ZONE CRUISE; the Complainant has featured ZONE and ZONE DIET branded products and services on numerous television, radio and live appearances, including appearances on nationally broadcast programs such as 20/20, Dateline NBC, The Montel Williams Show, and Live with Regis and Kelly, and the Complainant’s ZONE branded books have been translated into 22 different languages.

The Complainant and its authorized licensees also maintain a network of ZONE and ZONE DIET branded websites located at various Internet addresses, including <zonediet.com> and <zoneliving.com>, offering a wide variety of goods and services including ZONE branded vitamins, supplements, skin care products, fish oil, and printed publications.

The Complainant points out that the disputed domain name is redirected to a website containing hyperlinks to several third party websites offering competing diet, health and nutrition products and services and various pop up advertisements for third party websites and products.

The Complainant states that the disputed domain name encompasses the Complainant’s entire distinctive ZONE and ZONE DIET marks and the dominant portion of the ZONE registered marks. The only difference between the Complainant’s ZONE DIET mark and the Respondent’s domain name <wwwzonediet.com> is the insertion of “www” before ZONE DIET and the gTLD designation “.com”. The addition of the designation “.com” is non-distinctive because it is a gTLD required for registration of a domain name.

With reference to the rights or legitimate interests in the disputed domain name, the Complainant states that the Respondent has no rights or legitimate interest with respect to Complainant’s ZONE and ZONE DIET marks or the domain name <wwwzonediet.com>.

The Complainant states that the <wwwzonediet.com> domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent and that there is nothing in the Respondent’s Whois information that indicates that the Respondent is commonly known by the disputed domain name.

The Complainant indicates that the Respondent did not, prior to notice of this dispute, use the <wwwzonediet.com> domain name or a trademark corresponding to the domain name, in connection with a bona fide offering of goods or services and has not made a legitimate non-commercial or fair use of the <wwwzonediet.com> domain name.

The Complainant underlines that the Respondent is using the <wwwzonediet.com> domain name to divert Internet traffic intended for Dr. Sears to the Respondent’s “link farm” website where the Respondent provides links to numerous competing third party websites and generates pop up advertisements for unrelated third party websites and products.

The Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s marks ZONE or ZONE DIET, or any confusingly similar variations thereof.

With reference to the circumstances evidencing bad faith, the Complainant alleges that the Respondent registered and is using the <wwwzonediet.com> domain name in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to the Respondent’s website where the Respondent provides links to websites that advertise and sell competing diet products and services and to pop up advertisements for various third party websites and products by creating a likelihood of confusion the with Complainant’s ZONE trademarks.

The Complainant asserts that the Respondent had actual knowledge of its trademark rights since some of its trademark registrations have been issued prior to the Respondent’s registration of the disputed domain name; the Respondent’s domain name resolves to a website that advertises and promotes competing diet, health and nutrition products and services; the Respondent’s domain name encompasses in its entirety the Complainant’s ZONE and ZONE DIET marks; and the ZONE and ZONE DIET branded products and services are well known and famous in the United States of America.

The Complainant highlights that the mere act of “typosquatting,” or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore, the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the registered trademarks ZONE owned by the Complainant since the addition of the word “diet” does not exclude the likelihood of confusion between the domain name and the Complainant’s trademarks considering that “diet” is merely descriptive of the products that the Complainant provides in connection with its ZONE trademarks.

It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark).

Furthermore, the Panel shares the finding that the addition of the prefix “www” constitutes a typosquatting that does not exclude the likelihood of confusion between Complainant’s trademarks and the disputed domain name (Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274; Bayer Akiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205 (<wwwbayer.com> confusingly similar to BAYER); Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (<wwwpfizer.com> confusingly similar to PFIZER).

The Panel, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, is of the opinion that the Policy is applicable to common-law trademarks if the Complainant has shown that the name has become a distinctive identifier associated with the Complainant or its goods and services as held in Imperial College v. Christophe Dessimoz, WIPO Case D2004-0322 and Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395.

In the case at hand, the Panel finds that the Complainant has established that the ZONE DIET trademark is used since 1998 in the field of diet, health and nutrition with thousand of consumers that have purchased ZONE DIET products and services, as per evidence provided to the Panel.

In comparing the Complainant’s marks to the disputed domain name <wwwzonediet.com>, it should be taken into account the well established principle that the suffixes, including the generic top level domain names, must be excluded from consideration as being merely a functional component of the domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (“the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”); Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 (“the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

The Panel finds that the Complainant has therefore proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks and name under any circumstance.

Furthermore, there is no indication that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services and/or that it intends to make a legitimate, non-commercial or fair use of the domain name.

The Panel notes indeed that the domain name was at the time of the filing of the Complaint - and still is at the time of the drafting the present decision - pointing to a sponsored pay per click website aimed only at directing visitors to competing third party commercial websites.

The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate, non-commercial use of the domain name under the Policy as indicated inter alia in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated:

“the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”

Moreover, the Panel notes that the Respondent’s website also generates various pop up advertisements for third party websites. The Panel finds that such use does not constitute bona fide offering of goods or services or a legitimate, non-commercial use of the contested domain name (Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928; Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018; Cox Holdings, Inc. v. Gary Lam, WIPO Case No. D2004-0931).

The Panel concurs with the views expressed in Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536, where the panel stated that the Respondent’s “typosquatting” does not constitute fair use and is the obverse of a legitimate non-commercial or fair use of a domain name (see Time Warner Entertainment Company, L.P., and Hanna Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol and the Cupcake Patroll, WIPO Case No. D2001-0184; Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016; and Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205).

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith, the Respondent has simply added the prefix “www” to Complainant’s ZONE DIET trademark. The Panel finds that this particular kind of typosquatting, consisting of the registration of a domain name with the mere addition of the acronym “www” to a registered trademark, should be regarded as a clear circumstance evidencing the Respondent’s bad faith at the time of the registration.

Furthermore, the Panel finds that in light of the intense use of the trademarks ZONE and ZONE DIET and the domain name <zonediet.com> in relation with health and nutrition products and services, the Respondent was in all likelihood well aware of the Complainant’s trademarks.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of a complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

The Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services. Indeed, the domain name is pointing to a sponsored website aimed with a number of targeted pay per click links directing visitors to competing third party commercial websites and generating pop up advertisements.

The Panel also finds that typosquatting constitutes an additional evidence of bad faith (National Association of Professional Baseball Leagues v. Zuccarini, WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”)).

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

 

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, <wwwzonediet.com>, be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Dated: April 26, 2007