WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutri/System IPHC, Inc. v. Domain Name Proxy Service, Inc.

Case No. D2013-2127

1. The Parties

Complainant is Nutri/System IPHC, Inc. of Fort Washington, Pennsylvania, United States of America (“U.S.”), represented by Manatt, Phelps & Phillips, LLP, U.S.

Respondent is Domain Name Proxy Service, Inc. of Metairie, Louisiana, U.S.

2. The Domain Name and Registrar

The disputed domain name <nutradietsystem.com> is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2013. On December 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 18, 2013.

The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 9, 2014.

The Center appointed Michael A. Albert as the sole panelist in this matter on January 16, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is Nutri/System IPHC, Inc., a Delaware corporation with a principal place of business in Pennsylvania. For more than four decades, Complainant has provided diet and weight loss goods and services to millions of U.S. customers.

Complainant is owner of the service mark registrations for: NUTRI/SYSTEM, a character mark, U.S. Reg. No. 1251922, filed September 7, 1982 and registered on September 20, 1983; NUTRISYSTEM, a character mark, U.S. Reg. No. 4327113, filed May 4, 2012 and registered on April 30, 2013; NUTRISYSTEM, a character mark, U.S. Reg. No. 4327114, filed May 4, 2012 and registered on April 30, 2013; and NUTRISYSTEM, a character mark, U.S. Reg. No. 4327116, filed May 4, 2012 and registered on April 30, 2013.

Complainant is also owner of the service mark registrations for: nutri/system, a design mark, U.S. Reg. No. 1429657, filed June 30, 1986 and registered on February 17, 1987; nutri/system, a design mark, U.S. Reg. No. 2732144, filed May 16, 2002 and registered on July 1, 2003; and NUTRISYSTEM, a design mark, U.S. Reg. No. 4327117, filed May 4, 2012 and registered on April 30, 2013.

Complainant is also owner of the trademark registration for: NUTRI/SYSTEM, a character mark, U.S. Reg. No. 1731373, filed November 4, 1991 and registered on November 10, 1992; NUTRI/SYSTEM, a character mark, U.S. Reg. No. 1767562, filed February 23, 1990 and registered on April 27, 1993; NUTRI/SYSTEM, a character mark, U.S. Reg. No. 1776989, filed February 22, 1990 and registered on June 15, 1993; NUTRI/SYSTEM, a character mark, U.S. Reg. No. 1956649, filed February 22, 1990 and registered on February 13, 1996; NUTRISYSTEM, a character mark, U.S. Reg. No. 3251743, filed August 10, 2006 and registered on June 12, 2007; NUTRISYSTEM, a character mark, U.S. Reg. No. 3433126, filed April 10, 2006 and registered on May 20, 2008; NUTRISYSTEM, a character mark, U.S. Reg. No. 3467401, filed November 28, 2007 and registered on July 15, 2008; NUTRISYSTEM, a character mark, U.S. Reg. No. 3519390, filed November 28, 2007 and registered on October 21, 2008; NUTRISYSTEM, a character mark, U.S. Reg. No. 3519391, filed November 28, 2007 and registered on October 21, 2008; and NUTRISYSTEM, a character mark, U.S. Reg. No. 4330709, filed May 4, 2012 and registered on May 7, 2013.

Complainant is also owner of the trademark registration for: NUTRI/SYSTEM, a design mark, U.S. Reg. No. 1297847, filed September 29, 1982 and registered on September 25, 1984; and nutri/system, a design mark, U.S. Reg. No. 1625052, filed September 21, 1987 and registered on November 27, 1990.

Respondent registered the disputed domain <nutradietsystem.com> on August 8, 2013.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant alleges:

(i) The disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.

(a) Complainant claims ownership of the trademark and service mark registrations for NUTRISYSTEM. Complainant also claims incontestable status for its NUTRISYSTEM mark.

(b) Complainant alleges its mark is famous. In support of this contention, Complainant includes three articles discussing Complainant and its diet and weight loss business.

(c) Complainant alleges the disputed domain name is confusingly similar to Complainant’s mark. Complainant argues the disputed domain name contains all of Complainant’s mark, with one letter “i” switched out for an “a", and the generic or descriptive word “diet” appended. Complainant contends such differences fail to prevent confusing similarity between the mark and the disputed domain name, as the overall impression between the mark and the disputed domain name are that they are the same.

(d) Complainant alleges many consumers switch out the “i” in its name for an “a” by accident. Complainant backs up this contention with screenshots of a Google search for the queries “nutrasystem” and “nutradiet” which it argues show common consumer attempts to reach or reference Complainant, whom they mistakenly call “Nutrasystem.”

(ii) Respondent has no rights or legitimate interests in the disputed domain name.

(a) Complainant argues Respondent is using the disputed domain name to sell similar goods and services to those offered by Complainant, foreclosing the possibility that Respondent is using the disputed domain name to make bona fide offerings. In support of this allegation, Complainant submits a screenshot of the products offered at the website to which the disputed domain name resolves.

(b) Complainant alleges Respondent is not known as “NUTRADIETSYSTEM” or “NUTRASYSTEM.” Complainant supports this contention with Google searches for “nutrasystem” and “nutradiet” which Complainant claims returned no results linking to Respondent’s website.

(c) Complainant alleges Respondent made no use of the disputed domain name until late 2013, several decades after Complainant first registered the NUTRISYSTEM mark. Complainant claims seniority in the mark, and argues Respondent is precluded from registering the disputed domain name as a result.

(d) Complainant alleges Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Complainant supports this contention with the evidence of Respondent’s commercial use of the disputed domain name exhibited in Complainant’s Annexes.

(iii) The disputed domain name was registered and is being used in bad faith.

(a) Complainant alleges Respondent had actual or constructive notice of Complainant’s rights in the NUTRISYSTEM mark by virtue of Complainant’s trademark registrations, which predate Respondent’s domain name registration. Complainant further alleges the fame of its mark creates a strong likelihood Respondent could not but know about the mark.

(b) Complainant alleges Respondent chose the disputed domain name to create consumer confusion for commercial gain. Complainant argues Respondent’s decision to include Complainant’s mark in the disputed domain name, and Respondent’s use of the disputed domain name to sell products similar to the goods and services offered by Complainant, evidence bad faith use and registration.

(c) Complainant alleges issuing a cease and desist letter to Respondent two months prior to commencing the present action. Complainant includes a copy of this letter in its Annexes. Complainant contends Respondent failed to respond to the letter or to adhere the demands contained therein, further demonstrating Respondent’s bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Standard of Review

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.” Policy Paragraph 4(a) requires that a complainant 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) the 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.

Respondent defaulted in its response. Such default does not automatically result in victory for Complainant, who must still carry the above burdens using affirmative evidence. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (a “[r]espondent’s default does not automatically result in judgment for the [c]omplainant and does not constitute an admission of any pleaded matter”). Respondent’s default does mean those of Complainant’s “asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant.” Konstantin Graf Lambsdorff v. Eighty Business Names, WIPO Case No. D2012-2039.

B. Identical or Confusingly Similar

Ample case law establishes that registering a mark with a trademark authority is one way to demonstrate rights in the mark under Policy paragraph 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, NAF Claim No. 0873143. Complainant is owner four character service mark registrations, three design service mark registrations, ten character trademark registrations, and two design trademark registrations for its NUTRISYSTEM mark. These registrations evidence Complainant’s use of the mark in commerce since the 1980s. Complainant’s use and registration predate Respondent’s August 8, 2013 registration of the disputed domain name.

Complainant also demonstrates the fame of its NUTRISYSTEM mark through submissions of a U.S. News Health and Wellness article on Complainant’s “Nutrisystem Diet,” a press release published in the Wall Street Journal regarding Complainant’s selection to present at a consumer conference, and a New York Times article discussing Complainant’s (and two other diet and weight loss companies’) marketing and public service strategies.

Based on this extensive evidence before it, the Panel finds Complainant exhibits rights in the NUTRISYSTEM mark.

The Policy paragraph 4(a)(i) inquiry now turns to whether Respondent’s domain name is identical or confusingly similar to Complainant’s mark. The disputed domain name <nutradietsystem.com> incorporates three elements - (1) the words “nutra” and “system”, (2) the word “diet”, and (3) the generic top-level domain (“gTLD”) “.com.”

The disputed domain name is not identical to Complainant’s mark because it incorporates the additional word “diet.”

The disputed domain name may still be confusingly similar to Complainant’s mark because if its incorporation of the words “nutra” and “system.”

The test for confusing similarity begins by comparing the domain name to the mark “[i]n terms of sight and sound.” Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. This test does not question whether the goods or services offered under the mark are similar or different from those offered at the site to which the disputed domain resolves. See id. (“The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark”).

Where a mark is included in its entirety, the domain name is confusingly similar to the mark. See America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918 (finding confusing similarity between the domain name <aolnews.com> and the mark AOL despite the additional word “news”). The case sub judice presents some complication to this rule’s application because Respondent inserted a word between the two halves of Complainant’s mark. As such, there may be an argument that the resulting separation of Complainant’s one-word mark prevents a finding that the mark is included in its “entirety.”

Where a mark is not included in its entirety, confusing similarity may still be found where the portion of the mark present in the domain name constitutes the “definitive word[s]” of the mark. Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203; see also Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (finding confusing similarity between <zermatt.com> and the marks ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT because “‘Zermatt’ is the dominant, distinctive element of both trademark registrations”); EthnicGrocer.com, Inc. v. Latingrocer.com, NAF Claim No. 0094384 (citing Marriott Int’l, Inc. v. Café au lait, NAF Claim No. 0093670) (“the association between the dominant terms of the Complainant’s mark is vital in maintaining a business in today’s e-commerce society”). In making this determination, the Panel must assess “whether an Internet user would confuse [the portion of the mark included in the domain name] with . . . any of the Complainants' trademarks.” Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203.

While Complainant’s mark generally may be said to consist of one word (NUTRISYSTEM), the Panel finds “NUTRI” and “SYSTEM” may also constitute separate elements of the mark, as evidenced by the slash-mark (“/”) separating the two terms in many of Complainant’s service and trademark registrations. The separated terms are thus separate and distinct words in some of Complainant’s registrations. By injecting the word “diet” right before the “s” in SYSTEM, at the same place as the “/” in many of Complainant’s registrations, Respondent ensured the resulting domain name included the definitive elements of Complainant’s mark. In terms of sight and sound, the disputed domain name still gives an overall impression that it includes all of Complainant’s mark. See Nandos International Limited v. M. Fareed Farukhi, WIPO Case No. D2000-0225 (finding the overall impression between the domain name <nandoschicken.com> and the “NANDOS” and “NANDOSCHICKENLAND” marks led to confusing similarity).

Exchanging the “i” in NUTRI for an “a” in the disputed domain name does not in this Panel’s view limit confusing similarity. See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0317 (finding the domain names <collegeveiw.com>, <colegeview.com> and <collageview.com> all confusingly similar to the COLLEGEVIEW mark, despite minor spelling differences, because “The misplacement of one vowel in a word and replacement of vowels (a instead of e) [is a] very common typing mistak[e] [and] a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights”); Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161 (finding confusing similarity between the domain name <hoildayinn.com> and the mark HOLIDAY INN because “It is well established that domain names that are misspellings of trade and service marks may be confusingly similar” to the marks); Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (finding confusing similarity between the domain names <del4me.com> and <dell4e.com> and the DELL and DELL4ME marks and noting “domain names which differ from famous marks only by one letter may constitute typo-squatting or typo-piracy) (internal citations and quotations omitted). For purposes of this analysis, the Panel consequently interprets the disputed domain name as including the definitive word “nutri,” despite Respondent’s substitution of the “i” for an “a.”

Adding a generic or descriptive word to a mark in a domain name also fails to detract from confusing similarity. See Fitness Anywhere, Inc. v. Simon Onil, NAF Claim No. 1372345 (finding confusing similarity between the domain name <trxsuspensionsale.com> and the complainant’s TRX and SUSPENSION TRAINING marks, even though the domain name added the generic word “sale” and removed the word “training”); Philip Morris USA Inc. v. Jesse Beck, WIPO Case No. D2013-1087 (finding confusing similarity between the domain name <teamMarlboro.com> and the complainant’s MARLBORO mark, even though the domain name added the “generic descriptive” word “team”); Tommy Bahama Group, Inc. v. Private Whois tommybahamaoutlet.com, WIPO Case No. D2012-0197 (finding confusing similarity between the domain name <tommybahamaoutlet.com> and the complainant’s TOMMY BAHAMA mark, even though the domain name added the descriptive word “outlet”). The word “diet” in the disputed domain name is merely descriptive, if not generic, and as such its addition cannot overcome confusing similarity between the mark and the rest of the domain name.

The addition of the gTLD “.com” does not detract from the similarity between the mark and the domain name. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 (finding the domain name <all-about-tamiflu> confusingly similar to the “Tamiflu” mark, despite the addition of a gTLD and descriptive words).

For the foregoing reasons, the Panel finds the disputed domain name is confusingly similar to the mark in which Complainant has rights.

C. Rights or Legitimate Interests

Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii). The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 0741828. Complainant’s burden on this element is not high, “[b]ecause it is difficult to produce evidence to support a negative statement.” Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Respondent’s failure to file a response may create a presumption that Respondent lacks rights or legitimate interests. See adidas AG and adidas America, Inc. v. Taranga Services Pty Ltd c/o Domain Admin, NAF Claim No. 1329851; Am. Express Co. v. Fang Suhendro, NAF Claim No. 129120.

Under Policy paragraph 4(c), respondent may demonstrate rights or legitimate interests in a domain name by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain names in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

When a respondent links a confusingly similar domain name to a site offering goods and services which compete with a complainant’s business, the respondent is generally not making bona fide offerings through the domain name. See Global Rental Co., Inc. v. Truck Sales, NAF Claim No. 1498509 (finding a domain advertising the same types of trucks as the complainant was not being used to make bona fide offerings); Computerized Sec. Sys., Inc. v. Hu, NAF Claim No. 0157321 (finding a domain name selling electronic locks similar to those offered by the complainant was not being used to make bona fide offerings).

Complainant contends it uses its mark to offer diet and weight loss goods and services. Complainant’s mark registrations support this contention. Complainant’s Google searches for the queries “nutrasystem” and “nutradiet” reveal that most results focus on Complainant’s diet and weight loss business.

Complainant asserts Respondent is using the disputed domain name to host a site advertising diet and weight loss goods and services. Complainant provides a screenshot of the site to which the domain name resolves, at which appear advertisements for “NutraDiet System” pill bottles, accompanied descriptions of how the “NutraDiet System” will facilitate diet and weight loss and pictures associated with diet and weight loss. However, Complainant asserts Respondent has never done business under the name “nutradiet” or “nutradietsystem.” The WhoIs registration lookup shows the disputed domain name is registered to Respondent. Nothing in Respondent’s registration suggests affiliation with any entity bearing the name “nutradietsystem.” The disputed domain name links to a site which, while advertising “NutraDiet System” supplements, names K.F. Elite, LLC as the page’s host. The Nevada Secretary of State information on K.F. Elite fails to connect the entity to “NutraDiet” in any way. The Panel therefore finds that Respondent lacks rights or interests in the disputed domain name under Policy paragraph 4(c)(i) and (ii) as the unchallenged evidence establishes that while Respondent is competing with Complainant, Respondent is not in fact using the site to make bona fide offerings and is not commonly known by the disputed domain name.

The record also shows Respondent is not making legitimate noncommercial use of the disputed domain name under Policy paragraph 4(c)(iii). The disputed domain name resolves to a site advertising goods and services, foreclosing the possibility the use is noncommercial. Many panels have also held that using domain names in ways that compete with a complainant is neither bona fide use, nor fair use. See Getty Images (US), Inc. and its subsidiary Istockphoto LP v. Above.com Domain Privacy, NAF Claim No. 1489476; H-D Michigan Inc. v. Buell, NAF Claim No. 1106640; Expedia, Inc. v. Compaid, NAF Claim No. 0520654. Respondent is using the disputed domain to advertise diet and weight loss goods and services that compete with Complainant’s business; such activity fails to qualify as legitimate fair use under Policy paragraph 4(c)(iii).

For the foregoing reasons, the Panel finds Respondent does not have legitimate rights or interests in the disputed domain name.

D. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in Policy paragraph 4(b): (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

Regarding the requirements of Policy paragraph 4(b)(i), there is no evidence that Respondent made commercial offerings of the disputed domain name to Complainant or to any third parties. As such, the Panel holds the evidence insufficient to find bad faith use or registration under this category.

Regarding the requirements of Policy paragraph 4(b)(ii), Complainant does not offer evidence that Respondent engaged in a pattern of domain name registrations. As such, the Panel holds the evidence insufficient to find bad faith use or registration under this category.

Regarding the requirements of Policy paragraph 4(b)(iii), a domain name incorporating a mark which is famous and “obviously connected” to a complainant demonstrates opportunistic bad faith use and registration by a respondent. Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221; see also Iconix Brand Group, Inc. v. Staple Design c/o Jeff Ng, NAF Claim No. 1446843 (finding opportunistic bad faith registration and use of the domain <starterblacklabel.com> because it incorporated the STARTER mark, which was “obviously” connected to the complainant). Complainant has strong rights in the NUTRISYSTEM mark by virtue of its federal trademark registrations, its long use of the mark in commerce, and its large customer base. Its connection to the mark is therefore obvious. Respondent’s registration and use of a domain name incorporating the NUTRISYSTEM mark’s definitive elements consequently proves opportunistic bad faith under Policy paragraph 4(b)(iii).

Respondent’s use of the disputed domain name to advertise goods and services that compete with those of Complainant shows bad faith registration and use under Policy paragraph 4(b)(iii), as well. See Disney Enters., Inc. v. Noel, NAF Claim No. 0198805 (finding it proper to infer registration and use of a site for the bad faith purpose of harming a complainant’s business where the domain linked to a site of one of the complainant’s competitors); Youbet.com Inc. v. Grand Slam Company, WIPO Case No. D2002-0711 (finding “the Respondent’s purpose in registering a closely similar domain name incorporating a misspelling of the Complainant’s domain name (i.e. omitting the period) was to disrupt the business of the Complainant in terms of sub-paragraph (iii) above,” where the domain offered similar online betting services as those offered by the complainant).

Accordingly, the Panel finds Complainant demonstrates Respondent registered and used the domain in bad faith under Policy paragraph 4(b)(iii).

Respondent’s use of a domain name incorporating Complainant’s mark to resolve to a site offering goods and services similar to those of Complainant also show bad faith registration and use under Policy paragraph 4(b)(iv). See Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168 (finding a domain name incorporating the complainant’s mark, but which redirected to the URL of a competitor, evidenced bad faith under 4(b)(iv)); State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, NAF Claim No. 0095407 (“[d]iverting Internet users, for commercial gain, to another web site by creating a likelihood of confusion with the [c]omplainant’s mark is evidence of registration and use in bad faith”); Luck's Music Library v. Stellar Artist Mgmt., NAF Claim No. 0095650 (finding bad faith where the respondent used a domain incorporating the complainant’s mark to advertise music services similar to those offered by the complainant).

Although Respondent’s exact affiliation with K.F. Elite – the current operator of the site to which the domain name resolves – is unclear, the latter’s use counts as the former’s when inquiring into bad faith. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 (holding that bad faith under Policy paragraph 4(b)(iv) “does not need to be derived by the [r]espondent himself. The [r]espondent cannot infringe the [c]omplainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct”). Since Respondent remains in control of the site, K.F. Elite’s bad faith goal of drawing Complainant’s customers to its site counts as Respondent’s goal.

For the foregoing reasons, the Panel finds Respondent registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <nutradietsystem.com> be transferred to the Complainant.

Michael A. Albert
Sole Panelist
Date: January 30, 2014