9th May 2007

National Arbitration Forum

DECISION

Weil Lifestyle, LLC v. Vertical Axis, Inc c/o Domain Adminstrator

Claim Number: FA0702000926455

PARTIES

Complainant is Weil Lifestyle, LLC (“Complainant”), represented by Scott D. Brown, of Skadden, Arps, Slate, Meagher & Flom LLP, One Beacon Street, Boston, MA 02108.Respondent is Vertical Axis, Inc c/o Domain Adminstrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vitaminadvisor.com>, registered with Nameview, Inc.

PANEL

The undersigned certify that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. Carolyn M. Johnson (Ret.), Diane Cabell, Esq., James A. Carmody, Esq., (Chair), Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 28, 2007.

On March 8, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <vitaminadvisor.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name.Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 March 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 4, 2007 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@vitaminadvisor.com by e-mail.

On March 26, 2007 Respondent requested additional time to respond to the Complaint.Complainant opposed Respondent’s request.The National Arbitration Forum reviewed the information submitted by both parties and granted Respondent’s request, extending the time for Respondent to submit a Response to April 16, 2007.

A timely Response was received and determined to be complete on April 16, 2007.

Each of the parties timely filed Additional Submissions, which were considered by the Panel.

On April 25, 2007, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Carolyn M. Johnson (Ret.), Diane Cabell, Esq., as Panelists, James A. Carmody, Esq., Chair.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <vitaminadvisor.com>, the domain name at issue, is confusingly similar to Complainant’s VITAMIN ADVISOR mark.

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

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

B. Respondent

1.Complainant has no rights in the domain name at issue because Respondent registered the domain name prior to use of VITAMIN ADVISOR by Complainant as a trademark.

 

2.Complainant’s mark is descriptive of the goods and services involved and Respondent has rights and legitimate interests in using the domain name at issue.

3.Respondent did not register and has not used the domain name at issue in bad faith.

4.Complainant is guilty of reverse domain name hijacking.

C. Additional Submissions

Complainant argues that its Complaint satisfies all elements of the Policy and demonstrates that the domain name at issue should be transferred.Complainant attaches to its Additional Submission undated web pages which it alleges date from April 1, 2001 and which contains a text link to “VITAMIN ADVISOR” and which link apparently resolved to another page (from 1999 web.archive.org records) headed up as “VITAMIN ADVISER” [sic]. Complainant argues that Respondent is not legitimately using the domain name at issue by using the associated site for pay-per-click ads.Respondent, Complainant says, registered the domain name at issue in bad faith because Complainant commenced using VITAMIN ADVISOR as a common law trademark seven months earlier.

Respondent argues that VITAMIN ADVISOR is descriptive and that there has been no showing that it has acquired any secondary meaning sufficient to uniquely identify Complainant’s goods and services prior to registration of the <vitaminadvisor.com> domain name.The use of VITAMIN ADVISOR as a text link to another web page does not create common law trademark rights.Complainant applied to register VITAMIN ADVISOR with the USPTO approximately one and one half years after Respondent registered the domain name at issue.There is no proof whatsoever that Respondent was or should have been aware of Complainant’s claimed use of VITAMIN ADVISOR as a common law trademark when the domain name at issue was registered.

FINDINGS

Complainant Weil Lifestyle, LLC and its predecessors in interest have been dedicated to developing, practicing, and teaching others about the principles of integrative medicine.One component of Complainant’s products and services is Complainant’s Vitamin Advisor service, an on-line program that provides users with a list of beneficial nutritional supplements based on their personal health profile, scientific research, and the recommendations of Dr. Weil.Complainant has been offering its Vitamin Advisor service since 2001, and the Vitamin Advisor has generated gross revenues of more than $42 million since that time. Complainant claims common law trademark rights in the VITAMIN ADVISOR mark based on Complainant’s continuous use of that mark in commerce, and Complainant has invested considerable resources developing and promoting that mark. Complainant also currently holds a federally registered service mark for the VITAMIN ADVISOR (and design) mark (Registration Number 2,855,726).The registration states FIRST USE IN COMMERCE: 20011106 and that NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “VITAMIN” OR “ADVISOR” APART FROM THE MARK AS SHOWN.”

Respondent registered the <vitaminadvisor.com> domain name on October 2, 2001 and has apparently used the associated website for pay-per-click ads and similar purposes since then.There is no evidence in the materials before the Panel which suggests that Complainant’s VITAMIN ADVISOR mark had achieved a secondary meaning which exclusively or nearly exclusively served to identify the origin of Complainant’s goods and services at or prior to the time of registration of the domain name at issue.The webpages annexed by Complainant to its Additional Submission do not show that VITAMIN ADVISOR (or “VITAMIN ADVISER”) served as or was used as a common law trademark.There is also no evidence that the Respondent was even aware of Complainant’s common law trademark claim at the time of registration of the <vitaminadvisor.com> domain name.

Accordingly, it is clear that Complainant has failed to satisfy its burden as to the first and third elements of the Policy and it is not necessary for the Panel to explore element two.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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’s registration of the VITAMIN ADVISOR mark with the USPTO applies only to a design plus word mark and not to a word mark alone.Complainant’s USPTO registration explicitly limits Complainant’s use of the terms VITAMIN and ADVISOR to the context of the stylized drawing based on the disclaimer included in the registration. In High-Class DistributionsS.r.lv. Onpne Entertainment Services., D2000-0100 (WIPO May 4, 2000), the panel found that the complainant failed to meet the requirements of Policy ¶ 4(a)(i) because the disclaimer in the complainant’s registration was evidence that the words of the mark out of the context of the stylized form of the mark “would generally be regarded as incapable of distinguishing by reason of descriptiveness.”Similarly, in Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000), the panel held that “although the complainant has rights in the stylized form of the trademark LOVELY GIRL in relation to women’s apparel and women’s care products, those rights cannot prevail over the use of the words ‘lovely girls’ as an accurate description of lovely girls.”In Porto Chico Stores the panel based its decision on its finding that while the complainant had rights to the registered, stylized version of LOVELY GIRL, “ownership of such a mark as a means of identifying the source of particular goods and services does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with their primary meaning in the English language.” Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000).

Respondent registered the <vitaminadvisor.com> domain name on October 2, 2001, a month before Complainant’s alleged first use in commerce of its mark.In B&V Associates, Inc. v. Internet Waterway, Inc., FA 147531 (Nat. Arb. Forum Apr. 15, 2003), the panel held that the purpose of the Policy was to protect existing trademarks from potentially infringing confusingly similar or identical domain names, and thus the complainant’s registration and rights should predate the respondent’s registration of a domain name in order for the complainant to have rights in a mark as contemplated by Policy ¶ 4(a)(i). Complainant’s rights in the VITAMIN ADVISOR mark were not yet established when Respondent registered the <vitaminadvisor.com> domain name.See Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent’s domain name registration predated the complainant’s rights in its mark by nearly two years); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration…of the domain name”).

The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel finds it unnecessary to determine whether Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the disputed domain name on October 2, 2001, one moth before Complainant’s stated first use in commerce of the VITAMIN ADVISOR mark.The Policy has a conjunctive bad faith registration and use requirement. At least two recent panels have found that if bad faith registration cannot be proven, the panel need not inquire into bad faith use.See The Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (“Both bad faith registration and bad faith use have to be proved or inferred.”); see also Think Serv., Inc. v. Carlos, D2005-1033 (WIPO Nov. 18, 2005) (finding that in order to prove bad faith under Policy ¶ 4(b), the respondent must have at least had the complainant’s mark in mind when registering the disputed domain name and not just ‘someone’s mark’).There is absolutely no evidence before the Panel that Complainant had rights as a common law trademark or otherwise in VITAMIN ADVISOR prior to registration of the domain name at issue and there is no evidence that Respondent actually or constructively was aware of Complainant’s claim of such rights.Accordingly, it appears that the registration of the <vitaminadvisor.com> domain name was not done in bad faith.

The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

The Panel elects to make no finding with respect to reverse domain name hijacking.

DECISION

Complainant has not established all three elements required under the ICANN Policy; accordingly, the Panel concludes that relief shall be DENIED.

 

James A. Carmody, Esq., (Chair),

Hon. Carolyn M. Johnson (Ret.),

Diane Cabell, Esq.,

Dated: May 9, 2007

National Arbitration Forum