DECISION

Andrew Weil c/o Polaris Health LLC v. Roy Duke

Claim Number: FA0310000206311

PARTIES

Complainant is Andrew Weil c/o Polaris Health LLC (“Complainant”) represented by Susan M. Daly of Greenberg Traurig, LLP, 2375 E. Camelback Road, Phoenix, AZ 90404. Respondent is Roy Duke, 17 North Chatsworth Ave., #4D, Larchmont, NY 10538 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <drandrewweil.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 28, 2003; the Forum received a hard copy of the Complaint on October 30, 2003.

On October 29, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <drandrewweil.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 November 3, 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@drandrewweil.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 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <drandrewweil.com> domain name is identical to Complainant’s DR. ANDREW WEIL mark.

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

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

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

FINDINGS

Complainant is a best-selling author that has been publishing books on his 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 operates websites at <drweil.com>, <drweilvitaminadvisor.com> and <askdrweil.com>, which offer information, products and services for individuals seeking a healthier lifestyle. Complainant has pending trademark applications with the United States Patent and Trademark Office (“USPTO”) for the ASK DR. WEIL mark (Ser. No. 78,316,770 filed on October 21, 2003) and the ANDREW WEIL mark (Ser. No. 78,316,769 filed on October 21, 2003).

Respondent registered the <drandrewweil.com> domain name on April 28, 2002. Respondent is using the disputed domain name to redirect Internet traffic to the website at the <americanpharmacy.com> domain name, which offers prescription drugs for sale.

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

Despite the fact that Complainant has no trademark registration, Complainant has established that it has common law trademark rights in the ANDREW WEIL mark through its long-standing use in relation to books about healthful living. See Barnes v. Old Barn Studios Limited, D2001‑0121 (WIPO Mar. 26, 2001) (all that is required for a famous or very well-known person to establish a common law trademark is likelihood of success in an action for passing off in the event of use in trade without authority); see also Sade v. Quantum Computer Serv., Inc., D2000-0794 (WIPO Sept. 26, 2000) (“Although the Complainant has not registered the word ‘SADE’ either as a trademark or as a service mark in any jurisdiction, the Complainant has adapted the word ‘SADE’ as her stage-name and as a trademark and service mark and this Administrative Panel . . . is further satisfied that the Complainant has established that she has common law rights in the said mark”).

Complainant contends that Respondent’s <drandrewweil.com> domain name is confusingly similar to Complainant’s ANDREW WEIL mark because the disputed domain name appropriates the entire mark and merely adds the letters “dr,” the abbreviation for doctor, and omits the period from the beginning of the mark. The Panel finds that Respondent’s addition of the letters “dr” and the omission of the period from Complainant’s mark does not serve to distinguish sufficiently the domain name from the mark under Policy ¶ 4(a)(i), especially since Complainant is in fact a doctor. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and the domain name is therefore confusingly similar); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward and challenge the allegations in the Complaint. Thus, the Panel accepts all of Complainant’s reasonable allegations and inferences to be true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to respond to the Complaint, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See 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); 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).

Respondent is using the <drandrewweil.com> domain name to redirect Internet traffic to the website at the <americanpharmacy.com> domain name, which offers prescription drugs for sale. Respondent’s unauthorized commercial use of the disputed domain name does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); see also G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).

Furthermore, Respondent has offered no proof and there is no evidence in the record that suggests Respondent is commonly known by DR ANDREW WEIL or <drandrewweil.com>. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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").

The Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s unauthorized commercial use of a domain name confusingly similar to Complainant’s common law mark to offer prescription drugs for sale demonstrates that the <drandrewweil.com> domain name was registered and used in bad faith because Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ANDREW WEIL mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Moreover, the Panel presumes Respondent had actual or constructive knowledge of Complainant’s rights in the ANDREW WEIL mark when the disputed domain name was registered because the domain name incorporates the entire mark and merely adds the letters “dr” to and omits the period from the mark. Respondent’s registration and use of the <drandrewweil.com> domain name despite actual or constructive knowledge of Complainant’s rights evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <drandrewweil.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  December 8, 2003

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