Generic Top Level Domain Name (gTLD) Decisions

DECISION

Shaklee Corporation v. Moeltgen Media

Claim Number:  FA0301000142319

PARTIES

Complainant is Shaklee Corporation, Pleasanton, CA, USA (“Complainant”) represented by Lisa Caldwell, of Klarquist Sparkman, LLP. Respondent is Moeltgen Media, Breisach, DE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 17, 2003; the Forum received a hard copy of the Complaint on January 21, 2003.

On January 20, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <wwwshaklee.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, 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 January 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 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@wwwshaklee.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 February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 <wwwshaklee.com> domain name is confusingly similar to Complainant’s SHAKLEE mark.

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

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

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

FINDINGS

Complainant, Shaklee Corporation, holds numerous United States registered trademarks for the SHAKLEE mark (e.g. U.S. Reg. No. 1,010,096, registered on the Principal Register of the United States Patent and Trademark Office on May 6, 1975). Complainant also holds trademark registrations in at least 45 other countries (e.g. German Trademark Reg. No. 995,605, registered on January 4, 1980).

Complainant has operated under the SHAKLEE mark since as early as 1956 as a globally known, multi-level marketing business. Pursuant to that business, Complainant registered the <shaklee.com> domain name, using its website to promote and sell its products.

Respondent, Moeltgen Media, registered the <wwwshaklee.com> domain name on June 17, 2001, and is not licensed or authorized to use Complainant’s SHAKLEE mark for any purpose. Respondent posts no content at its website. When Complainant contacted Respondent about the infringing domain name, Respondent replied with an offer to sell its domain name registration for $5,000.

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

Complainant has established rights in the SHAKLEE mark through proof of registration on the Principal Register of the U.S. Patent and Trademark Office, as well as through registration of the mark with the proper governmental authorities worldwide.

Respondent’s <wwwshaklee.com> domain name is confusingly similar to Complainant’s SHAKLEE mark. The addition of the “www” prefix to Complainant’s registered mark does not create a domain name that is distinct from the mark for purposes of Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Accordingly, the Panel finds that the <wwwshaklee.com> domain name is confusingly similar to Complainant’s SHAKLEE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant carries the burden of showing that Respondent has no rights and legitimate interests in the disputed <wwwshaklee.com> domain name. Complainant can meet its burden with a showing that Policy ¶¶ 4(c)(i)-(iii) are each inapplicable to Respondent. At that point the burden shifts to Respondent, and Respondent’s failure to respond in this proceeding will result with a finding for Complainant on this issue. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

Complainant’s uncontested allegations aver that Respondent does not use the disputed domain name. Registering but not actively using a domain name is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor does it qualify as a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Furthermore, given the infringing nature of Respondent’s domain name, it is doubtful that Respondent could ever use the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent lists its name as “Moeltgen Media” in its WHOIS contact information. Respondent also admits in e-mail correspondence with Complainant that the domain name simply appears as “part of our domain portefolio.” From these facts, the Panel infers that Respondent is not “commonly known by” the name WWWSHAKLEE or <wwwshaklee.com> domain name, thus making Policy ¶ 4(c)(ii) inapplicable to Respondent. 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 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).

The Panel chooses to view Respondent’s lack of response in this dispute as evidence that it has no rights or legitimate interests in the disputed domain name. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwshaklee.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In determining whether a domain name was registered and used in bad faith, the Panel will look to the totality of the circumstances surrounding the dispute, along with the provisions of Policy ¶ 4(b), in reaching its decision. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s <wwwshaklee.com> domain name is an example of “typosquatting.” Such infringing activity demonstrates an awareness of Complainant’s mark prior to registration and an intent to capitalize on the goodwill of Complainant’s mark. This evidences bad faith registration of the disputed domain name. 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 AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding the domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).

Furthermore, Respondent’s failure to use the disputed domain name for any legitimate purpose qualifies as bad faith use of the domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant).

Additionally, Policy ¶ 4(b)(i) specifically notes that registration of a domain name with the intent to sell the registration in excess of out-of-pocket expenses evidences bad faith use and registration of a domain name. In e-mail correspondence with Complainant, Respondent offered to sell its domain name registration for $5,000, an amount that is higher than Respondent’s out-of-pocket costs for its inactive domain name. The Panel infers from the nature of the infringing domain name, which entirely incorporates Complainant’s mark, that Respondent registered the <wwwshaklee.com> domain name primarily for the purpose of selling its registration to Complainant, evidence of bad faith use and registration of the domain name. See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (stating that "[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where Respondent offered to sell the domain name to Complainant for $10,000 when Respondent was contacted by Complainant).

The Panel thus finds that Respondent registered and used the <wwwshaklee.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

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

 Honorable Paul A. Dorf (Ret.) Panelist

Dated:   February 28, 2003

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