WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thirty & Co. v. Jake Marcum, Marcum Creative, LLC

Case No. D2016-1212

1. The Parties

Complainant is Thirty & Co. of Salt Lake City, Utah, United States of America (“United States”) represented by Trestle Law, APC, United States.

Respondent is Jake Marcum, Marcum Creative, LLC of Tulsa, Oklahoma, United States.

2. The Domain Name and Registrar

The disputed domain name <whole30.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2016. On June 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for response was July 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 21, 2016.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 2, 2016. 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 the entity owned by the founders of the Whole30 dietary and nutritional program. Complainant provides nutritional information, guidance, services and products through its website, located at “www.whole30.com”.

Complainant owns a United States Trademark Registration for WHOLE30, Registration No. 4,217,767, registered on October 2, 2012 for “Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition.” Complainant first used the WHOLE30 mark in commerce on October 21, 2010.

The disputed domain name was registered on May 3, 2014 and expires on May 3, 2017.

5. Parties’ Contentions

A. Complainant

Complainant states that the WHOLE30 mark has developed significant goodwill and strong trademark rights, as the public has come to associate the WHOLE30 mark with Complainant’s dietary and nutritional products and services. Complainant asserts that the disputed domain name is identical and confusingly similar to its WHOLE30 mark because it incorporates all elements of the mark with only the addition of the generic Top-Level Domain “.org.”

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not have permission from Complainant to use its WHOLE30 mark, is not using the disputed domain name in connection with a bona fide offering of goods and services, is not known by the disputed domain name, and is not making a legitimate noncommercial fair use of the disputed domain name.

Regarding bad faith, Complainant asserts that Respondent clearly knew of Complainant’s WHOLE30 mark because Respondent references Complainant’s WHOLE30 mark, the goods and services offered under the mark, and Complainant’s founders numerous times throughout the webpage hosted at the disputed domain name. Complainant further asserts that Respondent is using the disputed domain name in bad faith because Respondent is presumably paid for the advertising on its webpage, such that the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s website. Complainant also states that it attempted to contact Respondent several times regarding the disputed domain name, but never received a response.

B. Respondent

Respondent did not respond to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the WHOLE30 mark in view of its United States Trademark Registration. Furthermore, the disputed domain name is identical to the WHOLE30 mark because it incorporates the entirety of the trademark. The addition of the generic Top-Level Domain “.org” does not differentiate the disputed domain name from Complainant’s mark.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the WHOLE30 mark, is not affiliated with Complainant and is not known by the disputed domain name. And because Respondent presumably profits from advertising displayed on the webpage hosted by the disputed domain name, its use cannot be considered a noncommercial fair use. Respondent not only uses Complainant’s registered mark throughout the site; it also carefully and deliberately imitates the look and feel of Complainant’s site. Respondent’s disclaimer¹ , which is virtually hidden, does not immunize this transparent effort at deception. This is not bona fide use. “It is well-settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy”. Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879.

The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant’s WHOLE30 mark was in use for nearly four years and registered as a United States trademark for nearly two years before Respondent registered the disputed domain name. Additionally, it is clear that Respondent was aware of Complainant’s rights in the WHOLE30 mark based on Respondent’s explicit references on the webpage to Complainant’s founder as well as the WHOLE30 services. The Panel therefore finds that Respondent registered the disputed domain name in bad faith.

Further, Respondent’s use of Complainant’s WHOLE30 mark in the disputed domain name is likely to attract Internet users based on confusion with Complainant’s mark and the goodwill that Complainant has developed under its WHOLE30 mark. Respondent appears to be commercially benefiting from this confusion due to paid advertising hosted on the website. This is bad faith under the Policy, paragraph 4(b)(iv). Chanel Inc. v. Estco Technology, WIPO Case No. D2000-0413. Rather than curtail consumer confusion, the nearly undetectable disclaimer at the bottom of Respondent’s webpage merely confirms Respondent’s knowledge and bad faith disregard of Complainant’s rights. The finding of bad faith is reinforced by Respondent’s failure to respond to any of Complainant’s attempted contacts or the filing of this Complaint. See Symplicity Corporation v. Bob Gately, WIPO Case No. D2000-0425.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <whole30.org> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: August 16, 2016

¹ Respondent’s website bears the following disclaimer in noticeably smaller print size than other text displayed on the website: “This site is not endorsed by or affiliated with Whole9 Life, LLC. Trademarks are the property of their respective owners. Whole30 content and materials Copyright Whole9 Life, LLC. All rights reserved.” The Panel finds that the existence of the disclaimer in this case cannot by itself cure bad faith, especially when bad faith has been established by other factors (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.5).