DECISION

Life Extension Foundation, Inc. and Life Extension Foundation Buyers' Club, Inc. v. Vitacost.com

Claim Number: FA0406000288377

PARTIES

Complainant is Life Extension Foundation, Inc. and Life Extension Foundation Buyers' Club, Inc. (“Complainant”), represented by Nancy Lord Johnson, of Life Extension Foundation, Inc., 1100 W. Commercial Blvd., Fort Lauderdale, FL 33309.  Respondent is Vitacost.com (“Respondent”), represented by Stewart L. Gitler, of Hoffman Wasson & Gitler, P.C., 2461 S. Clark St., Suite 552, Arlington, VA 22202.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lef.com>, registered with Network Solutions, Inc.

PANEL

The undersigned Daniel B. Banks, Jr., Honorable Ralph Yachnin and David Sorkin,  Panelists, certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 18, 2004; the Forum received a hard copy of the Complaint on June 21, 2004.

On June 22, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <lef.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 June 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 13, 2004 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@lef.com by e-mail.

A request by Respondent to extend the response period was granted, extending the response time to July 28, 2004.  A timely Response was received and determined to be complete on July 23, 2004.

An Additional Submission was timely filed by Complainant on July 28, 2004 and was considered by the Panel.

On August 5, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Ralph Yachnin, David Sorkin and Daniel B. Banks, Jr., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant: 

Complainant Life Extension Foundation, Inc., (“LEF”) holds two pending marks on LIFE EXTENSION FOUNDATION, Serial No. 76486974 and LEF, Serial No. 76486275, both filed January 31, 2003.  “LEF” has long standing common law rights in these names since its inception in 1980 and registered the domain name <lef.org> on October 10, 2002.  Complainant Life Extension Foundation Buyers Club, Inc., (“LEFBC”) has an exclusive license to use the LEF name and offers its products on the <lef.org> web site. 

All of LEF’s marks are for the sales of dietary supplements and magazines, brochures and leaflets related to health and nutrition.  The domain <lef.org> is featured prominently in a monthly journal published by its subsidiary, LE Publications, Inc., and is known nationally and internationally in the nutritional supplement industry by the acronym, LEF.

Respondent attempted registry of LEF, Serial No. 76,391,287, filed on April 3, 2002, and LEF has filed an opposition to its registration.  Although Respondent’s President, Wayne Gorsek claimed that it was registered for a product “Longevity Enhancement Formulations,” that product is no longer being sold by Respondent.

Respondent’s domain name <lef.com> is confusingly similar to Complainant’s <lef.org> domain name and to Complainant LEF’s acronym and pending trademark, LEF.  Complainants have used the acronym “LEF” in their publication as part of their shared web address, <lef.org>.  Complaint “LEF” is very well known and highly respected in the nutraceuticals industry and the alternative medicine movement in general. 

Respondent has no legitimate interests in respect to the domain name.  Its use is not connected with a bona fide offering of goods or services and it offers no product or service using the letters “lef” either as a word or an acronym.  Respondent shows no evidence that it ever used the name “Longevity Enhancement Formulations” and concedes that it is no longer using that name. 

The domain name “lef.com” should be considered as having been registered in bad faith.  Respondent’s President, Wayne Gorsek, admitted that he had made a settlement offer to sell the domain to Life Extension for $250,000.  Gorsek is well aware of the Life Extension Foundation’s name and acronym because he had regularly sold Life Extension products and stated at his deposition that he terminated this because “Life Extension, without notice raised the price to us substantially to basically what the consumer can buy them at, so we have no margin.”  He also admitted that none of his products use the lef mark.  Respondent’s use of the domain name “lef.com” should be considered as having been in bad faith because it has used and continues to use the domain name for the sole purpose of re-directing traffic to its own website which, competes with Complainant in the sale of vitamins and minerals.  Respondent also uses the domains <vitamina4life.com> and <healthshop.com> in the same way. 

            B. Respondent:

While “LEF” is essentially identical to the domain name at issue, it is not used as a trademark or service mark in which Complainant has any rights superior to those of the Respondent.  Complainant admits in their Complaint that the matter of conflicting claims and rights to LEF is the subject of an ongoing opposition proceeding before the U.S. Patent and Trademark Office.  This panel should not interpose its own judgment when the alleged rights of the Complainants and Respondent are before the USPTO in a much more elaborate proceeding which involves discovery.  It should be noted that Respondent’s application to register LEF was filed on April 3, 2002 while Complainants two pending applications to register LEF were filed on January 31, 2003. 

Complainant and Respondent are direct competitors in the dog eat dog health food and supplement market.  Many health historians trace the modern industry back to 1982 and a popular and exhaustive tome by Durk Pearson and Sandy Shaw entitled “Life Extension.”  This highly descriptive phrase has been attached to all kinds of products and publications.  Respondent uses the letters LEF as an acronym for LONGEVITY EHHANCEMENT FORMULAS, a trademark applied for on April 3, 2002.  More than three years prior to the initiation of this proceeding, the domain name at issue was registered by an individual other than and in no way related to Respondent who purchased it in an arm’s length transaction.  Complainant registered <lef.org> less than two years ago.  Complainants offer no evidence of common law use of LEF as a trademark or service mark.  They show no establishment of a secondary meaning of LEF in the mind of the public sufficient to identify Complainant as the source of specific goods or services under the mark LEF. 

C. Additional Submissions

Complainant’s additional submission is a restatement of facts regarding Respondent’s non-use of the disputed domain name other than to direct traffic to Respondent’s web site “vitacost.com”.  Complainant also asserts that Respondent’s president admitted in his deposition that he was well aware of Complainant’s existence and that he has know of Life Extension Foundation for many years and visits its web site every month or two.  Complainant contests Respondent’s alleged use of the acronym LEF in connection with the sale of a product stating that it is patently false and should be disregarded.  The product was not listed on Respondent’s web site, there were no LEF products listed on its web site, and no Longevity Enhancement Formula products were listed on its web site at the time this Complaint was filed.  Respondent’s President, Goresek, admitted that there was only one sale of the LEF marked product on March 22, 2002 and that the customer had been an employee of Respondent at one time. 

Complainant alleges that the fact that Respondent filed the trademark application first is not fatal to the Complaint as common law rights are sufficient to obtain transfer of a domain. 

FINDINGS

This panel declines to impose its judgment as to whether or not Respondent has established legitimate rights in the disputed domain name in order to prevail under the Uniform Dispute Resolution Process.  There is currently before the Trademark Trial & Appeal Board, a more elaborate trademark dispute proceeding, wherein discovery has been had, and regarding many of the same issues raised in the subject matter.    proceeding. 

DISCUSSION

In October, 1999, a Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy was issued.  In that report, a uniform dispute-resolution policy was adopted for the .com, .net, and .org TLDs and directed the President to have implementation documents prepared.  In preparing those documents, the Staff Report directed that three fundamental observations be kept in mind.  One of those observations was as follows:

“4.c. The Recommended Policy Is Minimalist in its Resort to Mandatory Resolution. In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes. Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.”

The panel is further guided by Paragraph 18(a) of the Rules which provides:  “In the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.

With the policy observation in mind and considering Rule 18(a), the panel finds that there is a legitimate trademark dispute in process before the Trademark Trial & Appeal Board.  Therefore, this Complaint should be dismissed without prejudice and the requested relief denied.

DECISION

Having found that this matter is currently pending before the Trademark Trial & Appeal Board, the Complaint is dismissed Without Prejudice and the requested relief is Denied. 

Hon. Daniel B. Banks, Jr., Panel Chair,

Dated: September 2, 2004

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