DECISION

LA Weight Loss Centers, Inc. v. Dakatain

Claim Number:  FA0403000243477

PARTIES

Complainant is LA Weight Loss Centers, Inc. (“Complainant”), represented by Robert F. Zielinski, of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097.  Respondent is Dakatain (“Respondent”), P.O. Box 1634, Daktar 73005, Senegal.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <la-weight-loss.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 1, 2004; the Forum received a hard copy of the Complaint on March 3, 2004.

On March 2, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <la-weight-loss.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com 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 March 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 25, 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@la-weight-loss.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 April 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 <la-weight-loss.com> domain name is confusingly similar to Complainant’s LA WEIGHT LOSS CENTERS mark.

2. Respondent does not have any rights or legitimate interests in the <la-weight-loss.com> domain name.

3. Respondent registered and used the <la-weight-loss.com> domain name in bad faith.

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

FINDINGS

Complainant registered the LA WEIGHT LOSS CENTERS mark with the United States Patent and Trademark Office (“USPTO”) on August 17, 1999 (Reg. No. 2,271,058).  Complainant has continuously used the LA WEIGHT LOSS CENTERS mark in commerce since June 1, 1997, in connection with nutritional supplements, vitamins and minerals, and prerecorded audiotapes on the subject of exercise and weight reduction.

Complainant also owns the domain name registration for <laweightloss.com>, which was registered on June 29, 1998.

Respondent registered the <la-weight-loss.com> domain name on May 13, 2002.  Respondent uses the domain name to host a website that sells drugs and supplements relating to health and weight loss.

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

It is established, pursuant to Policy ¶ 4(a)(i), that the registration of a mark with a government agency is sufficient to demonstrate rights in a mark.  Here, Complainant has established rights in the LA WEIGHT LOSS CENTERS mark as a result of its registration of the mark with the USPTO on August 17, 1999, and continuous use in commerce since 1997. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The addition of hyphens in domain names has been found to be irrelevant under the Policy.  One rationale for this holding is that hyphens merely represent the space between words, which is incapable of being reproduced in URLs. In this case, the disputed domain name <la-weight-loss.com> has hyphens inserted between the dominant words of Complainant’s LA WEIGHT LOSS CENTER mark. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”).

Furthermore, registering domain names that merely delete words from registered marks have been found to satisfy Policy ¶ 4(a)(i).  In this case, the disputed domain name has incorporated Complainant’s registered mark almost in its entirety, but has merely deleted the word “centers” from Complainant’s mark.  Such a change does not alleviate the confusing similarity between the disputed domain name <la-weight-loss.com> and Complainant’s LA WEIGHT LOSS CENTERS mark. See WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, “hammondsuddards.net,” is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s “Wellness International Network”).

Therefore, Complainant has established that the disputed domain name is confusingly similar to its LA WEIGHT LOSS CENTERS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel construes Respondent’s failure to respond to the Complaint as an implicit admission that it lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Pursuant to Policy ¶ 4(c)(i), using a domain name confusingly similar to a complainant’s mark in order to sell goods and services that compete with the complainant’s products or services is not a bona fide offering of goods or services. In this case, Respondent is using the disputed domain name, which is confusingly similar to Complainant’s LA WEIGHT LOSS CENTERS mark, to host a website that sells health-related products that compete with Complainant’s goods and services.  Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). Likewise, Policy ¶ 4(c)(iii) evidences rights or legitimate interests in respect of the domain name if Respondent is making a legitimate noncommercial or fair use of the domain name.  Respondent is not using the domain name in a noncommercial fashion because it is selling products for the purpose of earning revenue.  Moreover, Respondent is not making a fair use of the domain name because it has usurped the dominant portion of Complainant’s registered mark and offered competing goods under the mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Policy ¶ 4(c)(ii) evidences rights or legitimate interests in respect of the domain name if the Respondent has been commonly known by the domain name.  There is nothing in the record that indicates Respondent has been commonly known by the <la-weight-loss.com> domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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").

Registration and Use in Bad Faith

Under Policy ¶ 4(b)(iv), evidence of bad faith registration and use of a domain name exists when a respondent registers a domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark. Here, the LA WEIGHT LOSS CENTERS mark is prominently known throughout the United States. Respondent does not live in the U.S., but registered a domain name that incorporates a well-known U.S. trademark. The fact that Respondent registered the confusingly similar domain name and then proceeded to use the name to sell products that compete with Complainant evidences that Respondent intentionally attempted to attract Complainant’s customers to its website.  Respondent attracted these Internet users through the confusion it created between the registered domain name and Complainant’s registered mark, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website).

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 <la-weight-loss.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 16, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/455.html