DECISION

Andrew Weil M.D. c/o Polaris Health LLC v. Domain Administrator

Claim Number:  FA0310000206341

PARTIES

Complainant is Andrew Weil M.D. c/o Polaris Health LLC (“Complainant”), represented by Susan M. Daly, Esq. of Greenberg Traurig, LLP, 2375 E. Camelback Road, Phoenix, AZ 90404.  Respondent is Domain Administrator  (“Respondent”), 19744 Beach Boulevard #428, Huntington Beach, CA 92648.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <andrewweil.com>, registered with Bulkregister.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 29, 2003; the Forum received a hard copy of the Complaint on October 30, 2003.

On October 30, 2003, Bulkregister confirmed by e-mail to the Forum that the domain name <andrewweil.com> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@andrewweil.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <andrewweil.com> domain name is identical to Complainant’s ANDREW WEIL mark.

2. Respondent does not have any rights or legitimate interests in the <andrewweil.com> domain name.

3. Respondent registered and used the <andrewweil.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has been publishing books about its approach to healthy living, alternative medicine, mind-body interactions and medical botany since at least as early as December 1985.  Complainant has authored and co-authored over a dozen books about living a healthy lifestyle.  Complainant’s books can be found at the top book sellers such as Barnes & Noble, Borders and Amazon.com.  Currently, Complainant has more than 4 million copies of his work in print in English and Spanish.  Complainant has also made numerous appearances on such talk shows as Oprah and Larry King Live to discuss and promote his work. 

Complainant also founded Polaris Health, LLC which operates a website, at the <drweil.com> domain name, which is a leading resource and authority for information, products and services for individuals seeking a healthier lifestyle.  Complainant also holds other domain name registrations that incorporate its DRWEIL mark including <drweilvitaminadvisor.com> and <askdrweil.com>.

On October 21, 2003, Complainant filed applications to federally register ANDREW WEIL (Serial No. 78,316,769) and ASK DR. WEIL (Serial No. 78,316,770) as marks with the United States Patent and Trademark Office (“USPTO”). 

On December 13, 2000, Respondent registered the <andrewweil.com> domain name.  The domain name links Internet users to a website selling Complainant’s books.  When the Internet user clicks on the “buy” button at Respondent’s website, the user is linked to a third party vendor site selling various products such as toys, apparel and DVDs, as well as Complainant’s books.

Respondent has no connection with Complainant.  Respondent used the ANDREW WEIL mark in its domain name without any notice to, or permission or authorization from Complainant.  In fact, at the bottom of its website, Respondent includes the statement, “We are resellers of Dr. Weil books and publications only.  We not [sic] in direct contact with Dr. Weil.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Identical and/or Confusingly Similar

The fact that Complainant does not hold a registered trademark with the USPTO for the ANDREW WEIL mark does not preclude a finding that Complainant has established rights in the mark under the Policy.  Rather, prior Panels have found that pending trademark applications are sufficient to establish Complainant’s rights in its mark.  In this proceeding, Complainant provides evidence that it has a pending trademark application for the ANDREW WEIL mark.  Furthermore, Respondent has not rebutted Complainant’s assertion that it has rights in the ANDREW WEIL mark.  In addition, Complainant has established secondary meaning in its mark through its long and continuous use of its mark in commerce since at least as early as December 1985 in connection with its business.  Thus, the Panel finds that Complainant has established common law rights in its mark under Policy ¶4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“a person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also  Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name).

Respondent uses Complainant’s entire ANDREW WEIL mark in the <andrewweil.com> domain name and merely adds the top-level domain “.com”.  Respondent’s addition of the top-level domain “.com” is not sufficient to distinguish the domain name from Complainant’s mark as every domain name is required to include a top-level domain at registration.  Thus, the Panel finds that Respondent’s domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding Respondent’s domain name, <karlalbrecht.com>, identical to Complainant’s common law mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent failed to challenge the allegations set forth in Complainant’s Complaint, as Respondent did not submit a Response to the Panel.  As such, there are no circumstances before the Panel suggesting that Respondent has rights or legitimate interests in the <andrewweil.com> domain name.  Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

There is no evidence before the Panel suggesting that Respondent is now known or has ever been known by the <andrewweil.com> domain name.  Respondent has no relations with Complainant.  In addition, Complainant has not authorized Respondent to use its ANDREW WEIL mark for any purpose.  Furthermore, Respondent would be hard-pressed to show that it is commonly known by the domain name, as the domain name consists entirely of Complainant’s mark, which is also Complainant’s personal name.  Thus, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Respondent is operating a website at the <andrewweil.com> domain name which initially appears to sell Complainant’s books.  However, once an Internet user clicks on the “buy” button, the person is diverted to various third party vendor sites luring the viewer to purchase not only Complainant’s products, but also products other than those written by or endorsed by Complainant.  Thus, Respondent is not using the domain name in connection with a bona fide offering of goods or services nor is Respondent making a legitimate noncommercial or fair use of the domain name when Respondent lures unsuspecting Internet users looking for Complainant’s own website to Respondent’s website.  Thus, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of Complainant’s mark to sell Complainant’s perfume, as well as other brands of perfume, is not bona fide use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using Complainant’s mark in its domain name to attract Internet users to its website where it purports to sell Complainant’s books.  However, Respondent’s website is not a direct seller of Complainant’s books and is not affiliated in any way with Complainant.  In fact, Respondent’s site links unsuspecting Internet viewers to another site that encourages them to not only purchase Complainant’s work but to purchase other products that are not in any way affiliated with or endorsed by Complainant.  Thus, Respondent is using the <andrewweil.com> domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and products at its website.  Accordingly, the Panel finds that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

Respondent’s attempt to include a disclaimer at its website is insufficient to dispel its likelihood of confusion with Complainant’s mark.  Since the disclaimer is not included in the domain name, the domain name attracts an Internet user’s initial interest and misdirects the user before she has had the opportunity to view the disclaimer, if it will be viewed at all.  Furthermore, the Internet user will see the disclaimer only after she has viewed Complainant’s books, which Respondent is purporting to sell at its website, in addition to other items for sale that are unrelated to Complainant.  Thus, the Panel finds bad faith based on initial interest confusion, despite the fact that Respondent provided a disclaimer at its website.  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of Complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <andrewweil.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  December 8, 2003

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