WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Diet Center Worldwide, Inc. v. Jason Akatiff
Case No. D2012-1609
1. The Parties
Complainant is Diet Center Worldwide, Inc. of Akron, Ohio, United States of America, represented by Renner, Kenner, Greive, Bobak, Taylor & Weber of United States of America.
Respondent is Jason Akatiff of Carlsbad, California, United States of America, represented by Coast Law Group, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dietcenters.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2012. On August 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. On September 1, 2012, September 3, 2012, and September 4, 2012, Respondent and its representative sent by email to the Center request for extension to the response due date, to which Complainant objected. On September 10, 2012, the Center confirmed with the parties that no extension was granted. On September 13, 2012, the Response was submitted to the Center as a supplemental filing.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 18, 2012. 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.
The Panel addresses here the issue of whether Respondent’s late-filed Response will be accepted in order to facilitate addressing the factual background and the contentions of the parties in sections 4 and 5 that follow.
As Complainant noted in its objection to the granting of an extension for the filing of the Response, Respondent (through counsel) did not make a request for an extension until four days before the due date for the Response. Complainant further noted that it had substantially earlier transmitted a cease-and-desist letter to Respondent in December 2011, and that Respondent had failed to reply despite a follow-up inquiry from Complainant. In this regard, while it is not unusual for a respondent to require some days to retain counsel and gather evidence/materials, Complainant is in this case correct in observing that Respondent should have been prepared to respond to the Complaint, and that Respondent’s “out of the country” justification for requesting an extension is not strong.
With that said, it is not uncommon for parties to request and be granted relatively brief extensions for the filing of submissions in these administrative panel proceedings, including on grounds that counsel has been recently retained and requires some time to adequately prepare. The Response in this case was filed one week following the formal deadline for submission, and prior to appointment of the Panel. In deciding whether to accept the late filing, the Panel must balance the respective interests of Complainant, Respondent and the Center.1 There is no apparent harm to Complainant because there is no indication that appointment of the Panel was delayed by Respondent’s submission of the Response or, if there was some delay, it was brief. The Center has an interest in the efficient processing of submissions and cases, including in adherence by parties to the procedural rules. However, in a case such as this where there was minimal (if any) delay in appointment of the Panel, the Center’s efficiency interests would not be significantly affected by accepting the Response. Respondent was incorrectly advised by its counsel that failure to respond to the Complaint would result in its loss “by default”, and Respondent’s counsel is further incorrect in stating in its request to the Panel that “if the merits of this Response are not considered, Respondent’s rights in the domain name will likely be disregarded.” However, Respondent alleges certain facts that are relevant to a determination by the Panel, and Respondent’s legal rights and interests might be adversely affected if the Panel elected to reject its Response (which it has the discretion to do).
Taking into account the respective interests of the parties, the Panel accepts Respondent’s late-filed Response.
4. Factual Background
Complainant is the owner of registrations for the word trademark DIET CENTER on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 1496217, dated July 12, 1988, in international class (IC) 41, covering, inter alia, educational instruction in weight loss, control and maintenance; registration number 1419558, dated December 2, 1986, in IC 42, covering, inter alia, consulting services in the field of human weight control and diet programs; registration number 1441361, dated June 2, 1987, in IC 30, covering various food products; registration number 1442042, in IC 16, dated June 9, 1987, covering pamphlets, brochures, etc. (disclaiming exclusive right to use “diet” apart from the mark as shown); registration number 1442367, dated June 9, 1987, in IC 32, covering, inter alia, powdered concentrates used to make soft drinks, and; registration number 1440999, dated June 2, 1987, covering protein dietary supplements. With respect to each of the aforesaid trademark registrations, Complainant has filed an affidavit under Section 15 of the Lanham Act (15 USC §1065) establishing incontestability.
Complainant operates a commercial website at <dietcenter.com>. Complainant has controlled the domain name <dietcenter.com> since 1996. Other than by reference to its web address, Complainant has provided virtually no information regarding the nature of its business. The Panel has visited Complainant’s website and it appears to offer a variety of weight loss programs and nutrition products, including the opportunity to enroll in an online weight loss program. In addition, there is a link to information concerning franchising opportunities for Diet Center establishments.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The Registrar’s verification indicates that the record of registration of the disputed domain name was created on May 19, 1997. The Registrar did not provide information concerning when the current registrant registered or acquired the disputed domain name. However, Respondent indicates that it acquired the disputed domain name from a third-party on or about March 28, 2010, and has provided evidentiary support for that (in the form of a DomainTools Whois History showing update of the disputed domain name registration on March 28, 2010 in the name of Respondent).
The disputed domain name is currently used by Respondent in connection with a website that is headed “Diet Center Directory Resource”, followed by two paragraphs of text, as follows:
“Welcome to DietCenters.com, the Web's growing source for diet & weight loss information. Please pardon our appearance we are only two dietians working hard to help as many people as we can! Here we have link information for reputable companies that support weight loss plans and dietary information, which meet our standards. Other useful information such as articles on the low fat diet and the low carb diet will come soon. The goal of DietCenters.com is to try to give you the information you need to make the right decisions about your diet & weight loss needs.
Diet Center is basically a corporate conglomerate with individual franchise offices which in some cases employ un-licensed Dietitians. It is sort-of a watered down version of Weight Watchers and Jenny Craig. The main service is all about embarassing face to face nutrition counseling, general education about diet programs, and other sales gimicks to promote their brand label food products. Most of these diet food products utilize unhealthy "thermogenic" diet supplements to enhance more rapid weight loss. This is basically a mediocre program that focuses on nutrition and behavior modification. They really de-emphasizes exercise and at the same time try to sell a host of questionable "thermogenic" diet and weight loss supplements that run counter to the standard recommendations of most registered dietitians, which they claim to be. Diet Center is first-and-foremost a franchise type of business. Compared to traditional Dietians in private practice, they are over-priced and really spend more time trying to sell their branded of food products. A much more comprehensive approach to a weight loss and healthy living can be found in VirtualDietCenter.com. This service is also much more cost effective.” [Typographical and syntax errors uncorrected]
These two paragraphs are followed by various links with text descriptions of those links. The links and text descriptions are not necessarily accurate. For example, the link to “e-Weight Loss & Fitness Exercises” with text explanation “100’s of ‘how to’ pages and photos! The internet's most comprehensive and completely FREE resource for weight loss and fitness exercise” directs the Internet user to a link farm that indicates the domain name may be for sale. The link to “Natural Weight Loss Tips” with text “Natural weight loss tips, articles, ebooks, programs, supplements. Get a free copy of ‘Cellulite Report’ and 5 other eBooks” is inactive. Various other links direct Internet users to link farm pages. There are eight links to “Virtual Diet Center” with text description “Personalized weight loss and meal plan solutions developed and supported by registered dietitians, 1000s of pages of nutrition info, weight loss buddies, 1-on-1 consultations”. This is a link to an active website that offers membership subscription weight loss services.
Respondent has provided certain materials from the Waybackmachine Internet archive indicating that on January 29, 2005 the disputed domain name was directed to a website headed “Feeding the Hungry” that, following a few paragraphs of statements regarding the need to feed the world’s poor, apparently included a list of organizations that support provision of food to the needy. However, such lists were not included in the Waybackmachine-related documentation provided by Respondent. This website is sufficiently rudimentary that it does not suggest much more than a parking page. Respondent has also provided a Waybackmachine printout of the website identified by the disputed domain name from February 6, 2005 that is rather similar to the present website, though without the second paragraph of text quoted above. This second paragraph appears in a Waybackmachine website printout of November 21, 2008, where the complete content appears to be more or less identical to the current content on the website identified by the disputed domain name.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademark DIET CENTER as evidenced by registration at the USPTO and by use in connection with a commercial website. Complainant argues that the disputed domain name is identical or confusingly similar to its trademark, adding only the letter “s”, and conveying the commercial impression that Respondent is sponsored, endorsed by or affiliated with Complainant. Complainant contends that Respondent must have been aware of its trademark when it registered the disputed domain name.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not known by the disputed domain name nor has it been authorized by Complainant to use its name and registered marks; (2) Respondent does not have any trademark registration or pending applications for “Diet Centers”; (3) there is no evidence that Respondent used the disputed domain name in connection with a bona fide offer of goods or services prior to Complainant’s first use of its trademark or the filing date of its applications for registration; (4) Respondent is using the disputed domain name to host a website with links to websites with commercial activities in the weight loss industry, which is misleadingly diverting consumers for commercial gain.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent uses the disputed domain name to provide links to Internet users that divert them to other commercial websites that could harm the goodwill associated with Complainant, and is presumably acting for commercial gain either from pop-up advertising or referral fees; (2) Respondent is engaged in “typosquatting” because the disputed domain name differs from Complainant’s trademark solely by the addition of the letter “s”, and; (3) Respondent continued to use the disputed domain name despite correspondence from Complainant objecting to that use.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent concedes Complainant’s registration of its DIET CENTER trademark at the USPTO, but argues that Complainant’s marks are limited in that the terms are “extremely descriptive, if not generic”. Respondent refers to the fact that the registrations are based on claims of acquired distinctiveness, and that in one case exclusive use of the term “diet” is disclaimed. Respondent argues that in addition needing to demonstrate secondary meaning, Complainant’s protection only extends to the goods for which the trademark is registered “namely diet-related food, drink, supplements, printed materials, consulting services, and educational services”.
Respondent contends that Complainant’s rights in its mark have eroded over time because: (1) the term “diet, nutrition & energy centers” was registered on the supplemental register in 1997; (2) Yelp! shows a business listing for “health and Diet Center” in Salinas, California; (3) another business operates using the term “HCG Diet Center” in connection with a website at <hcgdietcenter.net>, and (4) in 1993 Complainant apparently issued a statement disclaiming association with some other business that had use the term “Diet Center” in a combination name that had been objected to by a third-party. Respondent also refers to an opinion expressed by a domain name blogger in respect to this proceeding that the disputed domain name is generic.
Respondent argues that the Policy is clear that a complainant that fails to show compelling evidence of secondary meaning has failed to establish rights in the trademark. Respondent also argues that a transfer should not be ordered when terms are descriptive or at least laudatory of the subjects of services in respect of which the trademark and the domain names are used, citing Hotels Unis de France v. Christopher Dent /Exclusivehotel.com, WIPO Case No. D2005-1194.
Respondent contends that the disputed domain name is directed to a website that is only a resource center for diet information, and that the content “constitutes sincere criticism, which is legitimate fair use”. Respondent contends that Complainant has failed to provide evidence of confusion in fact among Internet users.
Respondent argues that the disputed domain name is being used for a bona fide offering of goods and services, and that where domain names consist of common words or phrases pay-per-click links may be sufficient to establish rights or legitimate interests, citing Quester Group, Inc. v. DI S.A., WIPO Case No. D2010-1950.
Respondent contends that Complainant has failed to allege or show that Respondent registered or use the disputed domain name in bad faith because: (1) following its purchase of the disputed domain name in March 2010, Respondent never solicited payment from Complainant or to capitalize from resale; (2) Respondent did not register the disputed domain name with the intent to trade on Complainant’s goodwill or mislead consumers as to source, and there is no evidence that Respondent was targeting Complainant and its marks when it registered the disputed domain name; (3) the disputed domain name was used for a substantial period of time in connection with a webpage referring to feeding the hungry, then in 2005 became a directory for weight loss resources, was textually edited in 2008, and was purchased from the prior owner in March 2010. Despite the change in ownership there is been no change to the substance or content of the website. According to Respondent, this makes it clear that Respondent did not register the disputed domain name with the intent to trade on Complainant’s goodwill. Respondent contends that a party may register and use a domain name with common terms as long as it is not targeting the goodwill of a trademark owner.
Respondent argues that Complainant is barred from pursuing this action by the doctrine of laches since the Policy came into effect in 1999, the disputed domain name has been used “peacefully” since that time, and Respondent is only acting now.
Respondent asserts that Complainant is engaged in reverse domain name hijacking because it is attempting to use exceptionally limited trademark rights to gain control “of a domain name and gripe site that is making fair use of generic terms”.
Respondent requests the Panel to deny the remedy sought by Complainant, and to make a finding of reverse domain name hijacking.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceedings. Respondent evidenced receipt of notice, and filed a late Response. The Panel is satisfied that Respondent received adequate notice of these proceedings. The Panel has accepted Respondent’s late filing. Respondent was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark DIET CENTER on the Principal Register of the USPTO dating from as early as 1986. Complainant has provided evidence of use of the trademark in commerce in the United States, including on the Internet.
Respondent appears to have conceded the fact of Complainant’s trademark registrations, although it argues that Complainant’s rights are weak or nonexistent because DIET CENTER is “extremely descriptive, if not generic”. Because of this weakness, according to Respondent, Complainant’s trademark rights at best extend to uses for which the trademarks are registered. Presumably, to the extent that Respondent is arguing that the alleged trademarks are generic, it is suggesting that Complainant’s trademark rights are questionable.
In any event, the trademark rights alleged in this case arise under the law of the United States of America. Complainant registered its trademark at the USPTO (in various classes) in 1986 and 1987. It has filed affidavits of incontestability (15 USC § 1065(3)), and those affidavits have been acknowledged by the USPTO. The U.S. Supreme Court has made clear that a mark that is incontestable may not be challenged on grounds that it is merely descriptive (see Park N' Fly v. Dollar Park and Fly, 469 U.S. 189 (1985)).
The Lanham Act provision on incontestability leaves open the possibility to demonstrate that a registered trademark is or has become generic. A generic term is one that is used to denote a genus or class of thing (see Park N’ Fly, 469 U.S. at 194, citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976), and stating “Generic terms are not registrable, and a registered mark may be canceled at any time on the grounds that it has become generic. See §§ 2, 14(e), 15 U.S.C. §§ 1052, 1064(e)).”
Although DIET CENTER is a descriptive term, Respondent has provided little evidentiary support (i.e., the comment of a blogger) for its contention that the term is generic. Each of the terms in the combination has a variety of potential meanings or connotations. The term “diet” may generally refer to substances consumed by humans or animals, sometimes for specific medical purposes, or it may refer to a programmatic effort directed at weight loss.2 The term “center” has various potential meanings or connotations, including as a facility for a particular activity or service, or as a source from which information originates.3 The terms could be used to describe a university research center where human nutrition is studied, or a place where an individual might go for counseling concerning weight loss. If Respondent had intended to conclusively demonstrate that the term “Diet Center” is generic for a genus or class of thing, it should have provided a substantial body of references to establish this, especially in the face of an existing incontestable trademark registration. Respondent has not done this, and the Panel does not consider it “self-evident” that DIET CENTER refers to a genus of thing that necessarily matches the Complainant’s activity to make a finding that it is a generic term.
In this regard, compare the panel decision in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, in which a claim to common law or unregistered trademark rights in the term “pet warehouse” was rejected. In that proceeding, the USPTO had previously rejected the complaining party’s application for registration of the term as a mark. A U.S. Court of Appeals had previously determined a similar combination term incorporating “warehouse” to be a generic designation. The respondent had provided substantial evidence of third-party use of the combination term, both in a descriptive sense and as the name of competing businesses. The panel in that proceeding did not make a specific finding that the asserted trademark was generic or commonly descriptive, but found that the complaining party asserting rights had failed to carry its evidentiary burden of establishing rights. In the present proceeding, on the other hand, the trademark DIET CENTER has been registered at the USPTO for more than 25 years, and the mark enjoys incontestable status. Respondent was required to overcome a presumption of validity and to prove genericness with substantial evidence. It provided little evidence to support its position.
Without prejudice to any assessment as to the strength of the Complainant’s trade mark rights, the Panel determines that Complainant has rights in the trademark DIET CENTER for purposes of the first element of the Policy.4
The disputed domain name <dietcenters.com> differs from Complainant’s trademark by addition of the single letter “s”.5 Even considering that Complainant’s trademark is substantially descriptive, the visual impression, sound and meaning of the disputed domain name and Complainant’s mark are sufficiently similar that there is a substantial likelihood of Internet user confusion between the terms.
The Panel determines that Complainant has rights in the trademark DIET CENTER, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not known by the disputed domain name nor has it been authorized by Complainant to use its name and registered marks; (2) Respondent does not have any trademark registration or pending applications for “Diet Centers”; (3) there is no evidence that Respondent has used the disputed domain name in connection with a bona fide offer of goods or services prior to Complainant’s first use of its trademark or the filing date of its applications for registration; (4) Respondent is using the disputed domain name to host a website with links to websites with commercial activities in the weight loss industry, which is misleadingly diverting consumers for commercial gain. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent makes a number of arguments to suggest that it has established rights or legitimate interests in the disputed domain name. One argument is that the website hosted at the disputed domain name is a “legitimate gripe site”, and this presumably would establish that Respondent is making legitimate noncommercial or fair use of the disputed domain name. Since the website includes links to various profit-making enterprises, and presumably Respondent earns some revenue from or through those links, Respondent’s use of the disputed domain name cannot be characterized as noncommercial use.
Respondent might be able to establish nominative fair use of the disputed domain name by showing that it was using the term “Diet Center” to identify Complainant, that it was using the trademark term because it would be difficult to readily identify Complainant without use of the mark, that it had not used more of the mark than was reasonably necessary, and that it had done nothing to suggest sponsorship or endorsement of its website or services by Complainant (see, e.g., Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399). But, Respondent is not principally using the disputed domain name to identify Complainant. Its website is self-characterized as a Diet Center Directory Resource with links to a variety of websites with diet information and services. While there is a reference to Complainant in the text on the website, that reference does not appear to be the principal reason for the website. With respect to Respondent’s characterization of the website as a “legitimate gripe site”, the links to commercial diet information and service providers do not appear to be “selective” in the sense of providing a remedy to some problem presented by Complainant. Respondent has not provided evidence (and it is not apparent from a visit to Respondent’s website) that the commercial competitors of Complainant addressed by some of the links are offering a better or different service than Complainant that somehow would justify the redirection of Internet users. A number of the links are to link farm pay-per-click pages that include some further diet related links. A number of the links are non-functional (i.e., directed to inoperative domain names). The Panel concludes that Respondent’s reference to operating a “legitimate gripe site” as justifying any nominative fair use of the disputed domain name is not supported by the evidence provided by Respondent.
Respondent also argues that it has made a bona fide offering of goods and services prior to notice of the dispute. In this regard, Respondent argues that Complainant’s trademark is highly descriptive (even if subject to some protection), and that it has the right to use “diet centers” to provide information (i.e., principally links) to third parties offering dietary information and counseling services in a purely descriptive sense. In other words, Respondent argues that it is not seeking to take advantage of Complainant’s goodwill in its trademark, but is “neutrally” offering an information resource to consumers.
Respondent’s argument raises the question whether it is fairly using the disputed domain name to direct Internet users to sources of information and resources regarding diet programs, or is instead using it to confuse Internet users regarding an association with Complainant so that it may earn click-through revenues by providing links to third-party competitors of Complainant. Having examined Respondent’s website, the Panel considers that it is more in the nature of a pay-per-click link farm than an attempt to provide consumers with information and resources regarding diet programs. In this regard the Panel considers that Respondent is seeking to take advantage of the goodwill in Complainant’s trademark (in light of the confusing similarity between the trademark and the disputed domain name), and that Respondent’s use is not a fair one for purpose of the Policy.6
Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent has failed to rebut that prima facie showing. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent by its own account acquired the disputed domain name from a third-party in March 2010. This Panel has previously drawn a distinction between transfers of disputed domain names between related parties and transfers between unrelated parties. In respect to transfers between related parties and consequent changes to registrant data or re-registration, the intent of the domain name registration owner at the time of the initial registration is normally maintained. An initial registration in good faith does not become a potential registration in bad faith when the transfer is effectively to the same person (see, e.g., Schweizerische Bundesbahnen SBB v. Gerrie Villon, WIPO Case No. D2009-1426), absent some exceptional circumstance demonstrating that the related party transfer was in fact itself undertaken for bad faith purposes (see, e.g., Intelligen LLC v. Converg Media LLC, Case No. D2010-0246). A similar approach has recently been used by the U.S. Ninth Circuit Court of Appeals in GoPets v. Hise, 657 F.3d 1024 (9th Cir. 2011), where in interpreting the U.S. Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C.A. § 1125(d), the Court found that a transfer from the initial registrant to a family-owned corporate entity did not constitute a new registration for the purposes of assessing (or re-assessing) bad faith (657 F. 3d at 1031-32).
The language used by the Ninth Circuit may well have been intended to apply more broadly than to related party transfers, although the case before it involved only a related party transfer. The Ninth Circuit said:
…the text of § 1125(d)(1) considered in isolation does not answer the question whether “registration” includes re-registration. Looking at ACPA in light of traditional property law, however, we conclude that Congress meant “registration” to refer only to the initial registration. It is undisputed that Edward Hise could have retained all of his rights to gopets.com indefinitely if he had maintained the registration of the domain name in his own name. We see no basis in ACPA to conclude that a right that belongs to an initial registrant of a currently registered domain name is lost when that name is transferred to another owner. The general rule is that a property owner may sell all of the rights he holds in property. GoPets Ltd.'s proposed rule would make rights to many domain names effectively inalienable, whether the alienation is by gift, inheritance, sale, or other form of transfer. Nothing in the text or structure of the statute indicates that Congress intended that rights in domain names should be inalienable.
We therefore hold that Digital Overture's re-registration of gopets.com was not a registration within the meaning of § 1125(d)(1). Because Edward Hise registered gopets.com in 1999, long before GoPets Ltd. registered its service mark, Digital Overture's re-registration and continued ownership of gopets.com does not violate § 1125(d)(1). (657 F. 3d at 1031-32)
At least one Federal District court within the Ninth Circuit has adopted a broad interpretation of the language in GoPets v. Hise. In AIRFX.com v. AirFX LLC, (D. Ariz. 2012), Slip Copy, 2012 WL 363872, CV 11-01064-PHX-FJM, the Arizona District Court said:
Defendant argues that GoPets is distinguishable, because in GoPets Hise transferred the domain name to an entity he co-owned, and here Lurie purchased airfx.com from an unrelated third party. According to defendant, the purpose of the ACPA will be undermined if a cybersquatter who purchases a domain name in bad faith is immune from liability simply because the domain name he purchased existed before a mark was distinctive. Nothing in the language of GoPets indicates that it should be read as narrowly as defendant suggests. GoPets did not distinguish between transfers of a domain name to related parties and other kinds of domain name transfers. To the contrary, GoPets broadly reasoned that if an original owner's rights associated with a domain name were lost upon transfer to "another owner," the rights to many domain names would become "effectively inalienable," a result the intention of which was not reflected in either the structure or the text of the ACPA. Id. at 1031-32.
The District Court went on to hold that the issue whether the domain name holder registered in bad faith was determined at the time of the initial registration by an unrelated third party when the complaining party had not yet established trademark rights. In so holding the District Court was rejecting a contrary determination under the Policy made by a National Arbitration Forum panel in AirFX, LLC v. ATTN AIRFX.COM, NAF Claim No. FA1104001384655. In the NAF case, the panelist was aware of a potential sequencing problem, but did not address it to any meaningful extent in ordering the transfer.
As a general rule, WIPO UDRP panels have treated the acquisition of a domain name by a party unrelated to the previous registrant as a new registration within the meaning of the Policy. The circumstances existing at the time of that new registration govern whether the new holder has undertaken the registration in bad faith (see, e.g., Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, and references therein).
When Respondent acquired the disputed domain name in March 2010 and modified the registration data, Complainant had rights in its trademark. Such rights dated back at least as early as 1986 when Complainant initially secured its trademark registration with the USPTO. The disputed domain name was created by its initial registrant in March 1997. Therefore, under either the GoPets v. Hise/AIRFX.com v. AirFX LLC reasoning, or the general practice of WIPO UDRP panelists, Complainant held trademark rights at the time the disputed domain name was registered.7
In rendering a decision in this proceeding, the Panel must still determine whether to assess bad faith at the time of the purchase and re-registration by Respondent (from an unrelated party) in 2010, or at the time of the initial registration in 1997.8
As other UDRP panels have also done in cases such as Twitter, Inc. v. Geigo, Inc, WIPO Case No. 2011-1210, this Panel will continue to follow the general approach of WIPO UDRP panelists and consider that the transfer of a domain name to an unrelated third party constitutes a new registration for purposes of assessing bad faith. Although the Panel recognizes that domain names have attributes of intangible property, the rights of the domain name registration holder are contractual in nature and subject to the terms and conditions of a registration agreement.9 When an unrelated third party changes registrant data and/or re-registers with a new registrar, that party is accepting representations and warranties under the registration agreement as of the date of the change.10 These effectively include that the new registration is being undertaken in good faith (see paragraph 2 of the Policy).
With the greatest deference owed to the national courts,11 this Panel observes that the Ninth Circuit Court of Appeals decision in GoPets v. Hise was interpreting the ACPA, not the Policy. The precise holding addressed the situation of related party transfers and in that regard was consistent with general WIPO UDRP panel practice under the Policy. The language used by the Ninth Circuit can also be read more broadly, as did the Arizona District Court in AIRFX.com v. AirFx LLC. But, again, that court was interpreting the ACPA. Given the significant differences in the legislative history and the language of the ACPA and the Policy, this Panel is not inclined to extrapolate from the apparent ACPA-related development in the Ninth Circuit, noting that there is at least some disagreement among the Circuits regarding interpretation of the term “registration” as it is used in the ACPA.12 While administrative panels under the Policy tend to look to the law of the country of the parties when they are within the same country, the Policy is a set of rules that operates within its own unique context.13 The UDRP incorporates generally accepted principles of trademark law, without representing a linear application, to the extent that this would even be possible in its international setting. For example, in order to provide safeguards for registrants, a UDRP transfer requires bad faith on behalf of the registrant, going in this respect beyond conventional trademark law. In this connection, the Panel further notes the mutual jurisdiction provisions which enable party recourse to national courts. The Panel observes that it will assess the bad faith element as of the time Respondent by its own account acquired the disputed domain name (i.e., March 2010).
When Respondent acquired and registered the disputed domain name Complainant had rights in a trademark that is nearly identical and confusingly similar. A basic search of the USPTO trademark database would have made Respondent aware of Complainant’s trademark registration. A Google search would have led Respondent to Complainant’s commercial website where a notice of Complainant’s trademark registration is incorporated in its prominent top banner. Respondent registered and uses the disputed domain name to direct Internet users to a website where it provides links to providers of services and goods competitive with those of Complainant. Respondent is presumably earning income from the links on its website based on click-throughs or otherwise. Respondent appears to be acting for commercial gain. The disputed domain name is nearly identical to Complainant’s trademark, and Internet users are likely to associate the disputed domain name with Complainant and its trademark as the source, sponsor, affiliate and/or endorser of Respondent’s website. While there is some information critical of Complainant on Respondent’s website, this would not be apparent to Internet users when they initially visit that website. By the time such Internet users read the paragraph referring to Complainant, they would have been exposed to the list of links Incorporated on the same page. Such Internet users would be diverted to competitors of Complainant through the use of Complainant’s trademark by Respondent in the disputed domain name. Moreover, the close similarity of the disputed domain name to Complainant’s trademark also makes it likely that a simple typographical error will take them to Respondent’s website where the services and products of competitors of Complainant are listed and linked.
As the Panel in this proceeding has determined that Respondent newly registered the disputed domain name in 2010, the issue of delay impacting assessment of bad faith would not in any event meaningfully arise. Moreover, application of the doctrine of laches as argued by Respondent has been rejected on numerous occasions by UDRP panelists rendering decisions under the Policy (see, e.g., Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, and references therein), although delay in bringing a complaint may be a factor relevant in assessing bad faith. While the Panel acknowledges the option that Complainant has had, if it considered that appropriate, to file a UDRP case against a previous registrant(s) of the disputed domain name, in this proceeding, as the panel has determined, there is no material issue of latches.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Having made a determination in favor of Complainant, the Panel consequentially rejects Respondent’s request for a finding of reverse domain name hijacking.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dietcenters.com> be transferred to Complainant.
Frederick M. Abbott
Dated: October 5, 2012
1 The Rules refer to extensions of time periods by the Center or the Panel in "exceptional cases" (see paragraphs 5(d) and 10(c), Rules). However, Rule 10(b) states that “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” The Panel must balance the interest in giving Respondent a fair opportunity to present its case -- as well as considering whether a specific event is "exceptional" -- in determining whether to accept a late-filed submission.
2 See, e.g., definition of "diet" at http://www.merriam-webster.com/dictionary/diet.
3 See, e.g., definition of "center" at http://www.merriam-webster.com/dictionary/center?show=0&t=1348773627
4 The Panel is not concluding that DIET CENTER might not be demonstrated to be generic or commonly descriptive, but that Respondent has not made such a demonstration, for purpose of these Policy proceedings.
5 For purposes of the Policy, the gTLD “.com” is not relevant to the confusing similarity analysis in circumstances such as those present here.
6 Respondent argued that the protection afforded to Complainant based on its trademark registrations should extend only so far as the products or services covered by those registrations. Complainant’s registrations cover educational instruction in weight loss, control and maintenance; consulting services in the field of human weight control and diet programs, and; various nutrition products and supplements. These are precisely the types of services and products referenced in the text and/or by the links on Respondent’s website. Complainant has the exclusive right to use its trademark to identify its services and/or products, and to distinguish them from identical or substantially similar services and/or products offered by third parties. Respondent in the disputed domain name is using a substantially identical term to Complainant’s trademark to identify third-party products and/or services for commercial gain. The Panel concludes that this is not fair descriptive use of Complainant’s trademark term.
7 Domain name holders were required to agree to the Policy to maintain registration of their domain names when the Policy came into effect. Panelists have generally considered the Policy to apply to registrations preceding its effective date. Many early administrative panel decisions under the Policy involved registration of domain names taking place prior to October 24, 1999, the date on which the Policy was approved by ICANN (see, e.g., Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 and Sport Chalet, Inc. v. Ski Chalet, Inc., WIPO Case No. D2000-1834, each applying Policy to registration of a domain name preceding effective date of Policy).
8 There are in the present proceeding some limited facts by which the Panel might assess whether the initial registration of the disputed domain name in 1997 was undertaken in bad faith within the meaning of the Policy. Complainant held rights in a trademark at the time. The only apparent use made by the initial registrant was in connection with a webpage referring to feeding the hungry, but lacking any meaningful content. Because that registration preceded the now-ubiquitous practice of pay-per-click linking, it is unlikely that such registration and initial use was for commercial gain to divert Internet users from Complainant to the website identified by the disputed domain name. The initial registrant might have had in mind to sell or transfer the disputed domain name, but the disputed domain name was apparently held for a substantial number of years (i.e., until 2010) before it was sold and transferred (though whether there may have been an intervening sale or transfer is not clearly established). This makes potential evidence of initial registration for purposes of sale to Complainant or a competitor tenuous. In short, if the issue resolved to whether the initial registration of the disputed domain name in 1997 was undertaken in bad faith, the Panel would be hard-pressed to decide that it was.
9 The question of the contract and/or property characteristics of domain names is addressed differently by courts in the United States. Compare Kremen v. Cohen, 337 F. 3d 1024 (9th Cir. 2003),and Network Solutions v. Umbro, 529 SE 2d 80 (Supreme Ct. Virginia 2000).
10 See, applicable to the parties in this proceeding, Network Solutions Service Agreement Version 9.14, Schedule A, para. 3, and Incorporated Schedule F, Registrant Name Change Agreement, para. 3 (“By applying for this Registrant Name Change, you agree to be bound by and to perform in accordance with the terms and conditions of the Agreement, which includes Network Solutions' current Domain Name Dispute Policy.”)
11 See Twitter, Inc. v. Geigo, Inc, supra.
12 Compare Kremen v. Cohen, id., with Schmidheiny v. Weber, 319 F.3d 581 (3d Cir.2003). In the Schmidheiny case, the Third Circuit stated:
The words “initial” and “creation” appear nowhere in § 1129, and Congress did not add an exception for “non-creation registrations” in § 1129(1)(B). … The District Court's rationale that “if Congress chose to treat re-registrations as registrations, it could have used words appropriate to impart that definition,” is not a sufficient reason for courts to infer the word “initial.” Instead, we conclude that the language of the statute does not limit the word “registration” to the narrow concept of “creation registration.” See Sweger v. Chesney, 294 F.3d 506, 516 (3d Cir.2002) (holding that if the language of a statute is plain, we need look no further to ascertain the intent of Congress).
…. We hold that the word “registration” includes a new contract at a different registrar and to a different registrant. In this case, with respect to Famology.com that occurs after the effective date of the Anti-cybersquatting Act.
To conclude otherwise would permit the domain names of living persons to be sold and purchased without the living persons' consent, ad infinitum, so long as the name was first registered before the effective date of the Act. We do not believe that this is the correct construction of the Anti-cybersquatting Act. We are therefore satisfied that Famology.com, Inc. engaged in a “registration” that is covered by the Anti-cybersquatting Act…. 319 F.3d at 582-83.
The Panel in the present proceeding further notes that although Respondent in this proceeding is situated within the Ninth Circuit, Complainant is situated within the Sixth Circuit.
13 The Panel notes, however, that subject to meeting jurisdictional requirements, a domain name registrant may seek an injunction from a US court to prevent a registrar from transferring that name pursuant to a panel decision, and that the US court will thereupon apply the ACPA, and potentially the Lanham Act more broadly (compare, e.g., Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) and Storey v. Cello, 347 F.3d 370 (2d Cir. 2003)). Thus, while a panelist may choose to apply the Policy consistently with norms that have evolved within the WIPO UDRP administrative system, the panelist is also cognizant that enforceability of his or her decision may depend on interpretation of the ACPA (see Barcelona.com, id.)