The Complainant is WW International, Inc., United States of America (“United States”), represented by SILKA AB, Sweden.
The Respondent is Domain Admin / Whois Privacy Corp., Bahamas.
The disputed domain names <weightwatcehrs.com>, <weightwatcherinternational.com>, <weightwatcherrs.com>, <weightwatcjers.com>, <weighwatchers.com>, <weigjtwatchers.com>, <weihghtwatchers.com>, <weitghtwatchers.com> and <wwwweight-watchers.com> are registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 18, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on February 22, 201. 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.
The Complainant is a provider of weight management services. It is the owner of the trademark WEIGHT WATCHERS, which has been used for over half a century and is well-known in many countries.
The Complainant owns numerous trademark registrations worldwide over WEIGHT WATCHERS, including the following which are claimed as a basis for this Complaint:
- United States trademark WEIGHT WATCHERS No. 856202 registered on September 3, 1968;
- United States trademark WEIGHT WATCHERS No. 903957 registered on December 8, 1970;
- European Union trademark WEIGHT WATCHERS No. 141572 registered on January 14, 1999.
The Complainant also promotes and offers its services online, through a website hosted under the domain name <weightwatchers.com>, which was registered on July 8, 1997.
The disputed domain names were registered through a privacy shield service. The underlying identity of the Respondent is unknown. The table below indicates the date of registration of each of the disputed domain names, and their current use (screenshots dated December 13, 2020):
|
<weightwatcehrs.com> |
November 17, 2015 |
Used for pay-per-click (“PPC”) links, displaying links such as “lose Weight Loss Diet” and “Dieting Meal Plans for Weight Loss” |
|
<weightwatcherinternational.com> |
September 12, 2003 |
Used for PPC links, displaying numerous links in Spanish in all sorts of fields (games, contacts, leisure, etc.). It is also indicated, in Spanish, that the domain name is for sale |
|
<weightwatcherrs.com> |
August 17, 2016 |
Triggers a malicious software |
|
<weightwatcjers.com> |
June 15, 2015 |
Used for PPC links, displaying links in Spanish mostly in relation with diet management |
|
<weighwatchers.com> |
February 18, 2000 |
Triggers a malicious software |
|
<weigjtwatchers.com> |
July 16, 2016 |
Redirects users to another website promoting investments in crypto currency, in Spanish. Presumably a fraudulent scheme |
|
<weihghtwatchers.com> |
July 27, 2003 |
Used for PPC links, displaying links in Spanish and in English. It is also indicated, in Spanish, that the domain name is for sale |
|
<weitghtwatchers.com> |
July 27, 2003 |
Used for PPC links, displaying links in Spanish and in English. Some of these links refer to “Weight Watchers” or “Weightwatchers” |
|
<wwwweight-watchers.com> |
September 10, 2003 |
Used for PPC links, displaying links in Spanish exclusively in relation with diet management. It is also indicated, in Spanish, that the domain name is for sale |
The arguments of the Complainant can be summarized as follows:
On the test of confusing similarity, it holds that “the comparison between Complainant’s trademark and the disputed domain names leads to the conclusion that they are intentional misspellings of Complainant’s trademark WEIGHT WATCHERS (and even in one case, Complainant’s former company name), which is clearly recognizable in all of them”.
On the potential rights or legitimate interests of the Respondent in the disputed domain names, the Complainant indicates that the Respondent is apparently not known by any of the names which were registered. It has not authorized the Respondent to use its trademark WEIGHT WATCHERS, directly or misspelled. Google searches annexed to the Complaint reveal that any search over “weight watchers”, or over the disputed domain names, solely provides results connected to the Complainant. The Complainant also underlines that the disputed domain names have not been used in connection with a bona fide offering of goods or services.
On the registration and use of the disputed domain names in bad faith, the Complainant highlights, first, that the Respondent was necessarily aware of the existence of its trademarks WEIGHT WATCHERS, in view of their seniority and reputation. This is confirmed by the adoption of obvious misspellings. Second, the Complainant argues that “the use of the disputed domain names reveals how this case is a textbook illustration of the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy”, namely to attract users for commercial gain by creating a likelihood of confusion with its trademark. Based on this initial confusion, users are faced either with PPC links, or with malicious software, or are redirected towards a third party website. Finally, the Complainant claims that the multiple registration of domain names under the same pattern, targeting the Complainant’s trademark, also constitutes bad faith pursuant to paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
As a preliminary remark, the Panel wishes to clarify that delay in bringing a Complaint is not an issue under the Policy, as such. No latches or other equivalent principle apply, except if the Respondent is in a position to show detrimental reliance on the delay. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17. In this proceeding no such claim was made, as the Respondent chose not to respond to the Complaint. Therefore, even if some of the disputed domain names have been registered for a significant period of time, including 21 years ago for the oldest one, this will have no impact on the assessment of the merits of this case.
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain names are confusingly similar to a trademark or a service mark in which it has rights.
The test of confusing similarity is satisfied for all nine disputed domain names:
For a vast majority of these domain names, the confusing similarity results from obvious misspellings of the trademark WEIGHT WATCHERS of the Complainant. In each of them a single letter is modified, added, reversed or deleted. These are: <weightwatcehrs.com> (reversal of the letters “e” and “h”), <weightwatcherrs.com> (double letter “r”), <weightwatcjers.com> (substitution of the letter “h” by the letter “j”, noting that both are one next to the other on keyboards), <weighwatchers.com> (deletion of the letter “t”), <weigjtwatchers.com> (substitution of the letter “h” by the letter “j”), <weihghtwatchers.com> (addition of the letter “h”), and <weitghtwatchers.com> (addition of the letter “t”).
The disputed domain name <weightwatcherinternational.com> is also confusingly similar with the trademark WEIGHT WATCHERS of the Complainant, for it reproduces it entirely and in first position. What is more, the former company name of the Complainant, until recently, was “Weight Watchers International”.
Finally, the disputed domain name <wwwweight-watchers.com> is also confusingly similar with the trademark WEIGHT WATCHERS: in this case the trademark is also reproduced entirely, and it is preceded with the triple “www”, which is universally perceived as the initials of “world wide web” and allows users to have access to webpages.
Therefore, the Panel finds that the first element of the Policy is satisfied.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain names, and has not been authorized by the Complainant to register and use the disputed domain names. Besides, the use of the disputed domain names in connection with PPC-links, malicious software, or to redirect users towards a third party website which promotes a fraudulent financial scheme, does not qualify as fair use.
Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel agrees with the Complainant that the circumstances described at paragraph 4(b)(ii) and (iv) of the Policy apply here, therefore confirming that the disputed domain names were registered and are being used in bad faith.
On the one side, the Respondent has engaged in a pattern of registering domain names which consist:
- For a vast majority, in misspellings of the well-known trademark WEIGHT WATCHERS and,
- For a minority, in other forms of imitation: either through the use of the initials “www” for the domain name <wwwweight-watchers.com>, being reminded that these initials will go unnoticed visually by Internet users; or through the addition of the generic word “international” for the domain name <weightwatcherinternational.com>, which in addition corresponds to the former company name of the Complainant.
It is worth noting that, for a very large part of Internet users, in particular the non-English speakers, the misspellings of the trademark WEIGHT WATCHERS will go unnoticed. Obviously, typosquatting activities imply prior knowledge of the Complainant’s trademark, and rule out any possible fair use of the disputed domain names.
On the other side, the Respondent has created a likelihood of confusion with the Complainant’s trademark, with the result of attracting users and potentially obtain commercial gains through PPC links, through malicious software and through redirection to other websites. The fact that some or all of the PPC links or redirections are formatted automatically does not prevent a finding of use in bad faith. What matters is the effect, that of potential illegitimate commercial gain.
Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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 names, <weightwatcehrs.com>, <weightwatcherinternational.com>, <weightwatcherrs.com>, <weightwatcjers.com>, <weighwatchers.com>, <weigjtwatchers.com>, <weihghtwatchers.com>, <weitghtwatchers.com>, <wwwweight-watchers.com> be transferred to the Complainant.
Benjamin Fontaine
Sole Panelist
Date: March 4, 2021