WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barry D. Sears Ph.D v. Zalman Duchman
Case No. D2006-0818
1.
The Parties
The Complainant is Barry D. Sears Ph.D., Danvers, Massachusetts, United States of
America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Zalman Duchman, Surfside, Florida, United States of America.
2.
The Domain Names and Registrar
There are four disputed domain names:
<homezonediet.com>
<kosherzonediet.com>
<deliverthezonediet.com>
<mykosherzonediet.com>
All are registered with GoDaddy.com, Inc.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on June 28, 2006. On June 28, 2006, the Center transmitted by email to the
Registrar a request for registrar verification in connection with the Domain Names. On
June 29, 2006, the Registrar transmitted by email to the Center its verification response
confirming that the Respondent is listed as the registrant for each of the Domain Names
and providing the contact details for the administrative, billing, and technical contact
(which are identical for each of the Domain Names). The Center verified that the
Complaint satisfied the formal requirements of the Uniform Domain Name Dispute
Resolution Policy (the “Policy”), 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”).
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In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on July 3, 2006. In
accordance with the Rules, paragraph 5(a), the due date for Response was
July 23, 2006. The Respondent did not submit any response. Accordingly, the Center
notified the Respondent’s default on July 24, 2006.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on
August 2, 2006. 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
The Complainant is an individual residing in the State of Massachusetts, United States
of America. The Complainant’s Declaration explains that he is a scientist and author
who developed a nutritional program designed “to help people control and balance their
hormonal and insulin levels to achieve maximum mental productivity and as a means to
improved health.” He adopted the term “zone” to analogize the health benefits of his
nutritional program to the mental and physical state (colloquially dubbed “the zone”)
achieved by superior athletes at the peak of their performance in sports training and
events.
The Complainant, according to his Declaration, began writing, teaching, and consulting
about his “zone diet,” using the ZONE mark to brand the program, in 1995. He
published a book on the subject, THE ZONE, in 1996. The book attracted a considerable
following and rose to first place on the New York Times bestseller list, remaining on
that list for twenty weeks in 1996.
The Complainant has produced eight other books on the subject, all using the term
“zone” in the title: Mastering the Zone, Zone Food Blocks, The Anti-Aging Zone, A
Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The OmegaRx
Zone, and The Anti-Inflammatory Zone. Several of these books have also appeared on
the New York Times bestseller list. The Complainant reports that more than five million
hard-cover copies of his ZONE books have been sold in the United States, while they
have also been translated into twenty-two languages and sold in at least forty other
countries. The Complainant has appeared on nationally broadcast television and radio
programs to discuss his books, and he has presented his diet program at numerous
conferences and seminars in the United States.
Building on the success of his publications, the Complainant advertises and distributes
a variety of ZONE-branded health and nutrition products, such as nutritional
supplements and recipes. Since 1998, he has also offered ZONE-branded training and
consulting services including meal planning, diet and nutrition counseling, and related
information services for individuals or physicians. The Complainant publishes an emagazine, The Omega Zone, and his websites (notably “www.zonediet.com,”
“www.zonenetonline.com,” “www.zonecafe.com,” “www.zonelabsinc.com,” and
“www.drsears.com”) advertise and provide information about his various ZONE
products and services. The Complainant also offers, or licenses others to offer,
prepared foods, catering, and restaurant services employing his diet program.
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The Complainant declares that he owns approximately 70 trademarks and service
marks comprising or including the word “zone” to designate a variety of health and
nutrition products and services. These include the following standard-character marks
registered on the Principal Register of the United States Patent and Trademark Office
(USPTO), as confirmed on the USPTO database:
Mark
Reg. No.
Registered
ZONE
2,689,749
ZONE SKIN CARE
2,623,974
OMEGAZONE
2,863,212
ZONERX
2,929,836
ZONE CUISINE
2,997,305
ZONE CUISINE
2,968,210
DR. SEARS ZONE
APPROVED
ZONENET
ZONE SHAKE
ZONE CAFÉ
3,060,942
Feb. 25,
2003
Sep. 24,
2002
July 14,
2004
Mar. 1,
2005
Sep. 20,
2005
July 12,
2005
Feb. 21,
2006
Feb. 7, 2006
Jan. 3, 2006
May 9,
2006
3,058,099
3,038,265
3,090,926
First Use in
Commerce
May 1995
June 2000
Mar. 1, 2002
Apr. 23, 2002
Sep. 2003
Sep. 2003
Nov. 16, 2005
Mar. 2004
June 1, 2004
Jan. 28, 2005
The Domain Names were all registered by the Respondent in November 2005. From
the WHOIS database entries, it appears that the Respondent is an individual residing in
the State of Florida, United States of America.
The Domain Name <homezonediet.com> currently resolves to a website at
“www.zoneathome.com” offering home delivery of “Zone Diet Fresh Food” in the
South Florida area.
The Domain Name <kosherzonediet.com> currently resolves to the “Kosher” page of
the “www.zoneathome.com” website, offering daily delivery of “Glatt Kosher Zone
meals and snacks” in Los Angeles and South Florida.
The Domain Name <deliverthezonediet.com> currently resolves to a parking website
hosted by GoDaddy.com and featuring links to the Complainant’s
“www.zonediet.com” website as well as other diet and weight loss websites.
The Domain Name <mykosherzonediet.com> similarly resolves to a GoDaddy.com
parking website, although the links featured on this page include a different set of diet,
weight loss, and health websites.
The <www.zoneathome.com>website, to which two of the Domain Names resolve,
includes information and tips clearly derived from the Complainant’s publications and
similar to those found on the Complainant’s websites (as the Complaint painstakingly
documents). There is no direct attribution of the Complainant’s works on the
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“www.zoneathome.com” website, nor is there a disclaimer of affiliation with the
Complainant. No individual or company name is given to identify the operator of the
website or the services it advertises. An email contact address is displayed on the
website, as well as telephone numbers and a postal address in Miami Beach, Florida.
The Complaint states “on information and belief” that a company named Zone at
Home, Inc. provides the goods and services advertised on the “www.zoneathome.com”
website, and that the Respondent is “related” to that company. The Panel finds support
for these contentions in the following facts available online from official sources:
* the WHOIS database shows the Respondent as the registrant of the
“www.zoneathome.com” website;
* the “Corporations Online” database operated by the Florida Department of
State, Division of Corporations, lists a Florida corporation with the name Zone at
Home, Inc. at the same postal address shown for the Respondent in his listings as
the registrant and contact for the Domain Names;
* the same source shows that the corporation was registered in Florida in
November 2005, approximately a week after the Domain Names were registered.
No further information concerning the Respondent or the Respondent’s business and
his interests in the Domain Names is available on this record, and the Respondent has
not replied to email and courier communications from the Complainant and the Center.
5.
Parties’ Contentions
A.
Complainant
The Complainant argues that the Domain Names are confusingly similar to his ZONE,
ZONE DIET, and various ZONE composite marks, as registered or as found in pending
applications for trademark registration.
The Complainant states that he has not authorized the Respondent to use any of these
marks and that there is no evidence of the Respondent having rights or legitimate
interests in the marks.
The Complainant contends that pointing the Domain Names either to the Respondent’s
competing website or to parking pages advertising other competing websites is
evidence of a bad-faith intent to divert Internet users for commercial gain by creating a
likelihood of confusion with the Complainant’s marks. He infers the Respondent’s
actual knowledge of the marks because of their fame and because of the apparent
references to the Complainant’s ZONE diet program on the Respondent’s website and
on the parking websites to which the other two Domain Names resolve. The
Complainant also argues that the Respondent had constructive notice of the marks,
including ZONE, that were registered prior to registration of the Domain Names.
The Complainant concludes that the Respondent knew or should have known of the
Complainant’s marks at the time the Domain Names were registered and acted in bad
faith by registering the Domain Names and putting them to the uses described above.
B.
Respondent
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The Respondent did not reply to the Complainant’s contentions.
6.
Discussion and Findings
Under Paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents
submitted and in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a
Domain Name, the Complainant must demonstrate each of the following:
“(i) the Domain Name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights; and
(ii)
the Respondent has no rights or legitimate interests in the Domain Name;
and
(iii) the Domain Name has been registered and is being used in bad faith.”
As in other cases where a respondent fails to reply to a UDRP complaint, the Panel
must still satisfy itself that the Complainant has met his overall burden of proof under
paragraph 4 of the Policy. Thus, the uncontested facts, supported by plausible evidence
(such as documents or sworn statements), must provide a sufficient prima facie basis
for finding confusing similarity with the Complainant’s mark(s) and then for inferring
that, more probably than not, the Respondent has no right or legitimate interest in the
Domain Names and has registered and used them in bad faith. See, e.g., Croatia
Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A.
Identical or Confusingly Similar
The Complaint refers to the Complainant’s ZONE, ZONE DIET, and ZONE composite
marks as bases for this UDRP proceeding.
The Complainant indisputably holds a US registered ZONE standard character mark, as
well as several registered composite marks that incorporate the word “zone.” While
there is evidence of pending applications for design marks incorporating the words
“ZONE Diet,” there is no evidence in the record or in the USPTO database of a live,
registered ZONE DIET mark. The Complaint does not provide sufficient evidence to
support a claim of common-law rights in an unregistered ZONE DIET mark.
Moreover, none of the registered composite marks are strikingly similar to the Domain
Names, except for the ZONE portion of the marks. Therefore, the Panel will examine
the Domain Names for confusing similarity only to the registered ZONE mark itself.
“Zone” is a common English word, generally denoting a space, area, or region. The
Complainant’s ZONE mark uses the word suggestively, however, invoking the sports
colloquialism referring to a physical and mental state of optimal performance. The
word “zone” appears in many marks and domain names, generally in combination with
other descriptive words (e.g., “www.topozone.com” and “www.gamezone.com”) that
are more congruent with its dictionary meaning. Very few of these uses could be
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considered confusingly similar to the Complainant’s ZONE mark, because the
accompanying descriptive words typically have nothing to do with optimizing health,
diet, and nutrition.
Here, however, the Domain Names all include the ZONE mark in its entirety and add
the word “diet.” Diet is precisely what the Complainant’s famous ZONE-branded
goods and services concern. The other words included in the Domain Names do not
diminish the likelihood that an Internet user would consider that a website labeled with
“zone” and “diet” is associated in some way with the author of the famous “ZONE
diet.” To the contrary, the additional words “home,” “kosher,” “my kosher,” and
“deliver” all plausibly relate to either home delivery of meals compatible with the
Complainant’s ZONE diet program or to a Kosher implementation of that diet program.
Thus, the words added to the mark ZONE in the Domain Names enhance rather than
diminish the likelihood of confusion. See, e.g., Arthur Guinness Son & Co. (Dublin)
Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020 (finding <guinessbeer.com>
confusingly similar to the GUINESS mark because the mark is associated with beer and
other alcoholic beverages).
Thus, the Panel finds that the Complainant has satisfied the first element of the UDRP
Complaint.
B.
Rights or Legitimate Interests
The Complainant states that he has not authorized the Respondent to use the ZONE
mark, and this is uncontested.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in
which a respondent could demonstrate rights or legitimate interests in a contested
domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services;
or
(ii) you (as an individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired no trademark or
service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.”
From the available record and a review of the websites to which the Domain Names
resolve, there is no apparent noncommercial use of the Domain Names. Two of them
point to the competing commercial website registered by the Respondent, and two point
to parking pages that appear to be customized to include commercial links to diet and
nutrition websites, including at least some that appear to be in competition with the
Complainant.
There is no evidence that the Respondent is commonly known by any of the Domain
Names, and a search of the USPTO database does not reveal that any of the Domain
Names is a US registered trademark.
Of greater potential interest is the justification described in Policy, paragraph 4(c)(i) –
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evidence that the Respondent was using, or demonstrably preparing to use, the Domain
Names or names corresponding to the Domain Names in connection with a bona fide
offering of goods or services before notice of this dispute in July 2006. The Complaint
argues that the Respondent’s use of the Domain Names to point to competing providers
of diet products and services cannot be deemed a bona fide offering of goods or
services by the Respondent. See, e.g., The Chip Merchant, Inc. v. Blue Star
Electronics, d/b/a Memory World, WIPO Case No. D2000-0474.
That argument is clearly persuasive with respect to the two Domain Names that resolve
to parking pages advertising a variety of products and services (some of them
competing with the Complainant’s), with which the Respondent does not appear to be
connected in any way. The Respondent has no evident rights or legitimate interests in
so using these Domain Names, unconnected with any bona fide offering of goods or
services by the Respondent himself.
The other two Domain Names point to “www.zoneathome.com.” This is a website
registered by the Respondent and used for what is apparently a legitimate business,
offering home delivery of meals advertised as compatible with a “Zone diet.” The
domain name for that website corresponds to the registered name of a Florida company
with which the Respondent is apparently connected, Zone at Home, Inc. The
Complainant could conceivably challenge the corporate name and various “ZONE”
references on the Respondent’s website on trademark grounds, but there is no evidence
in the record of such a challenge. In any event, the resolution of such a dispute is not
within the scope of this UDRP proceeding. Thus, the Panel must conclude for UDRP
purposes that the Respondent is engaged in a bona fide offering of goods and services,
taking orders for prepared meals via telephone and the “www.zoneathome.com”
website. Indeed, the Panel notes that there are other apparently competing websites
offering home delivery of “Zone” meals in Southern Florida, Los Angeles, and other
urban regions of the United States, such as “www.zonedietathome.com” and
“www.zonechefs.com.” The latter websites are apparently operated by ZoneChefs,
L.L.C., a New York company that has applied to the USPTO to register ZONE DIET
AT HOME as a US trademark (Serial No. 78707904, filed September 7, 2005).
But in contrast to domain names corresponding to the business names or marks of other
competitors offering similar goods or services, it is significant that none of the Domain
Names in this proceeding corresponds to the Respondent’s company name, the name
that appears on the Respondent’s website, or to any known trademark, service, mark, or
trade name held by the Respondent. Thus, the Respondent’s choice of the Domain
Names is not obviously covered by the Policy, paragraph 4(c)(i). Conceivably, the
Respondent could demonstrate how the Domain Names were intended to be used in
connection with a legitimate “Zone at Home” business. But the Respondent has not
come forward with such an explanation to rebut the Complainant’s argument that the
most likely reason for registering multiple “zone diet” domain names was to confuse
and divert Internet users seeking a website associated with the Complainant and his
famous ZONE mark and diet program.
Consequently, the Panel finds that the Complainant has established the second element
of the UDRP Complaint.
C.
Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets forth a non-exhaustive list of circumstances indicating
bad faith. The Complaint relies on one of these -- Policy, paragraph 4(b)(iv):
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“(iv) by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location,
by creating a likelihood of confusion with the complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.”
Such an intention can very plausibly be inferred in this case from several undisputed
facts:
* The Complainant has used the ZONE mark for fifteen years, achieving a degree
of fame as the mark has appeared in his best-selling books, on his websites, and
in connection with his ZONE-branded diet products and services;
* The Complainant’s ZONE-branded diet program, products, and services have
also been the subject of substantial media and advertising exposure, particularly
in the United States where both the Complainant and the Respondent are located;
* The ZONE mark was registered in the United States in February 2003, nearly
three years before the Domain Names were registered;
* The Respondent offers “Zone diet” meals in competition with products and
services offered or licensed by the Complainant;
* The Respondent has pointed two of the Domain Names to his own competing
website at “www.zoneathome.com”;
* The Respondent’s website includes “Zone diet” content that echoes, in detail,
the Complainant’s terminology and approach as found in his published works and
on his websites.
It is highly probable, therefore, that the Respondent was aware of the Complainant’s
celebrated, fifteen-year-old diet program, products, and mark when the Domain Names
were registered in November 2005. See, e.g., eBay Inc. v. SGR Enterprises and Joyce
Ayers., WIPO Case No. D2001-0259 (actual or constructive notice of the
Complainant’s rights in a mark supports an inference of bad faith). As described above
in connection with the first element of the UDRP Complaint, the Domain Names are
confusingly similar to the Complainant’s ZONE mark, and the addition of “diet” and
other relevant descriptive words heightens the likelihood of confusion. It is more likely
than not that this confusion was intended, and that the Respondent, a direct competitor,
sought commercial gain by taking advantage of the ZONE mark to divert Internet users
from the Complainant’s websites to his own. The Respondent has not come forward in
this proceeding with an alternative explanation for his registration and use of the
Domain Names.
The Panel concludes, therefore, that the Complainant has satisfied the third element of
the UDRP Complaint.
7.
Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15
of the Rules, the Panel orders that the Domain Names, <homezonediet.com>,
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<kosherzonediet.com>, <deliverthezonediet.com>, and <mykosherzonediet.com>, be
transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: August 16, 2006
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