Wellness
International Network, LTD. v. Oakwood Medical Solutions
Claim Number: FA0106000097667
PARTIES
Complainant is Wellness International Network, Ltd., Plano, TX, USA (“Complainant”) represented by Dana M. Campbell, of Owens, Clary & Aiken, L.L.P. Respondent is Oakwood Medical Solutions, Stanton Island, NY, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain names at issue are <biolean.net> and <biolean.org> registered with Melbourne IT, Ltd.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 13, 2001; the Forum received a hard copy of the Complaint on June 18, 2001.
On June 14, 2001, Melbourne IT, Ltd. confirmed by e-mail to the Forum that the domain names <biolean.net> and <biolean.org> are registered with Melbourne IT, Ltd. and that Respondent is the current registrant of the name. Melbourne IT, Ltd. has verified that Respondent is bound by the Melbourne IT, Ltd. 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 June 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 2001 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@biolean.net and postmaster@biolean.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns registered trademarks on BIOLEAN and BIOLEAN FREE. Complainant’s marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of Complainant’s best-selling line of weight control products, which includes BioLean, BioLean Free, BioLean Accelerator, and BioLean Lipotrim. Since 1996, Complainant has actively advertised and promoted its BIOLEAN and BIOLEAN FREE marks through its website <winltd.com>. Complainant’s marks are used extensively at the <winltd.com> website. Complainant has invested substantial sums of money in developing and marketing its goods, services and marks.
The <biolean.net> and <biolean.org> domain names are identical and/or confusingly similar to Complainant’s federally registered BIOLEAN and BIOLEAN FREE trademarks.
Respondent has no rights or legitimate interests in the <biolean.net> and <biolean.org> domain names.
Respondent registered and used the <biolean.net> and <biolean.org> domain names in bad faith.
B. Respondent
No response was received from Respondent.
FINDINGS
Complainant registered the BIOLEAN mark on September 7, 1993, and the BIOLEAN FREE mark was registered on Oct. 28, 1997.
Respondent is an
independent distributor of Complainant, who is engaged in the sale of
nutritional products manufactured for and/or supplied by Complainant bearing
Complainant’s marks. Respondent
registered the domain names <biolean.net>
and <biolean.org> only after it became an independent distributor
of Complainant by executing a Distributor Application and Agreement, which
incorporated by reference the Rules and Regulations promulgated by
Complainant. While the Rules and
Regulations promulgated by Complainant expressly prohibit such use of
Complainant’s marks or any derivation thereof, and Respondent has agreed to
discontinue such use. However,
Respondent has yet to comply with Complainant’s demand that Respondent
discontinue the unauthorized use.
Respondent registered the disputed domain names on May 17, 2000, years after Complainant registered its BIOLEAN and BIOLEAN FREE marks.
DISCUSSION
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the 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.
Identical and/or
Confusingly Similar
Respondent’s domain names are identical to Complainant’s registered BIOLEAN mark. See ViewSonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names <viewsonic.net> and <viewsonic.org> are identical to the Complainant’s VIEWSONIC mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has not been authorized or licensed to use Complainant’s marks, and Respondent has not come forward to establish that it is otherwise commonly known by the disputed domain names. Therefore, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Respondent is intending to use the <biolean.net> and <biolean.org> domain names to sell the Complainant's product. This is not a bona fide offering of goods, a legitimate noncommercial or fair use of the domain name as provided by Policy ¶¶ 4(c)(i) and (iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <biolean.net> and <biolean.org> domain names, and that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent registered the <biolean.net> and <biolean.org> domain names to offer Complainant's product online. Respondent’s registration and use of the disputed domain names will likely cause confusion and deceive consumers into mistakenly believing that Respondent’s websites and associated products and services are offered, authorized, or sponsored by Complainant or are otherwise connected, associated, or affiliated with Complainant. See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
Respondent had agreed to discontinue the use of Complainant’s mark, but its failure to do so is further evidence of bad faith. See generally CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (stating that “[t]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <biolean.net> and <biolean.org> domain names be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: July 16, 2001
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