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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Barry D. Sears Ph.D. v. Alyssa Lindner

Case No. D2006-0493

 

1. The Parties

The Complainant is Barry D. Sears Ph.D, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Alyssa Lindner, United States of America, represented by Dozier Internet Law, P.C., United States of America.

 

2. The Domain Names and Registrar

The disputed domain names are as follows:

<zoneculinaire.com>
<zonedietboston.com>
<zonedietchicago.com>
<zonedietdc.com>
<zonedietdenver.com>
<zonedietlasvegas.com>
<zonedietmanhattan.com>
<zonedietmiami.com>
<zonedietphiladelphia.com>
<zonedietsanfrancisco.com>
<zonedietwestchester.com>
<zonehamptons.com>
<zonelongisland.com>
<zonemanhattan.com>
<zonewestchester.com>

All of the disputed domain names are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 19, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April 19, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2006. The Response was filed with the Center May 31, 2006. On June 15, 2006, the Complainant filed a request seeking leave to file a Reply to the Response.

The Center appointed William R. Towns, Ross Carson and Alan L. Limbury as panelists in this matter on July 3, 2006. The Panel finds that it was properly constituted. Each member of 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, a scientist and author, is the creator of the “Zone Diet”. The diet first came to prominence in 1995 after the Complainant’s publication of his book The Zone – a New York Times best seller. The Complainant describes the Zone Diet not as a “diet” but as “a way of life to control hormonal balance with the food you eat.” The key to the success of the diet, according to the Complainant, is a balancing of carbohydrates, protein and “good” fats using a 40/30/30 ratio.¹

Since the initial publication of the The Zone in 1995, the Complainant has published a number of books relating to the Zone Diet, providing further information in the fields of diet, health and nutrition.² Several of these subsequent publications have appeared on the New York Times bestseller list, and more than 5,000,000 copies of the Complainant’s books have been sold in the United States. In addition, the Complainant conducts seminars in the fields of diet, health and nutrition, as well as marketing health and nutrition products and services and providing health and diet information over the Internet, and through live appearances, conferences, radio shows and network television.

The Complainant obtained federal registration through the United States Patent and Trademark Office (USPTO) for his mark ZONE on February 25, 2003, in relation to publications, namely books in the field of diet and nutrition. The Complainant has since obtained federal registration for a number of composite marks incorporating the term “Zone”, although only two of these – ZONE SKIN CARE, relating to skin care products, and OMEGAZONE, relating to nutritional food bars – were obtained prior to March 1, 2005. ZONE CUISINE, a mark relating to the preparation and packaging of meals and catering services, was first registered by the Complainant on July 12, 2005. The Complainant has not obtained federal registration for “Zone Diet” as a trademark or service mark, but applications to register DR.SEARS ZONEDIET.COM and DR. SEARS ZONEDIET ADVANTAGE were filed on April 29, 2005, and are pending.

The popularity of the Zone Diet has not gone unnoticed on the Internet. Several food-related websites unrelated to the Complainant, using domain names comprised in part of either “zone” or “zone diet” (e.g., “www.zonedietinfo.com”), provide information about the Zone Diet as well as other well known diet plans and weight control programs. Some of these websites provide advertising links to other websites featuring these diet programs, including the Complainant’s. Other food-related websites unrelated to the Complainant, for example, “www.formulazone.com”, offer Zone Diet programs, meals and recipes.

A number of home delivery meal services have emerged on the Internet, utilizing domain names incorporating the terms “zone” or “zone diet”. One of these online services – Dr. Sears ZoneCuisine (“www.zonecuisine.com”) – belongs to the Complainant. The Complainant obtained federal registrations of the mark ZONE CUISINE in July and September 2005, both of which reflect the Complainant’s first use of the ZONE CUISINE mark in relation to prepared foods in September 2003. The record further reflects the Complainant’s operation of the ZONE CUISINE website serving the greater New York Tri State area through at least April 18, 2006. However, the <zonecuisine.com> domain name currently resolves to an inactive website.

Based on corresponding registration dates for the domain names referred to above, the additional “zone” and “zone diet” online meal delivery services – none of which appear to be affiliated with the Complainant – came into existence on various dates between 2001 and 2006. The Respondent operates one of these websites under the trade name Zone Manhattan.³ The Respondent registered the disputed domain names on various dates between January 14 and February 24, 2005, and four of the fifteen disputed domain names, <zoneculinaire.com>, <zonemanhatten.com>, <zonewestchester.com>, and <zonelongisland.com>, direct Internet users to the Respondent’s website. ⁴ As reflected by these domain names, the Respondent’s business is operated in the greater New York City Tri State area.

The Respondent’s home meal delivery website shares a common characteristic with the other online home meal delivery services referred to above, in that they advertise meals prepared using the Zone Diet concept – that is., with a 40/30/30 balance of carbohydrates, protein and fat, consisting of three meals and two snacks daily.

 

5. Parties’ Contentions

A. Complainant

The Complainant describes himself as a scientist and author who achieved considerable fame in connection with a hormonal and insulin control program that the Complainant created about fifteen years ago. According to the Complainant, the program uses food as a drug to help people control and balance their hormonal and insulin levels as a means to improved mental and physical health.

In 1995, the Complainant published his first book about his program – The Zone – which appeared on The New York Times bestseller list in 1996, holding the number one position on the list for about twenty weeks. Since then, the Complainant has authored numerous books premised upon using food as a drug to control and balance hormonal and insulin levels.

According to the Complainant, in 1995 he branded his writing, teaching and consulting on the benefits of an insulin balanced hormonal control diet with the term “Zone”, as an analogy to the heightened state of consciousness achieved by superior athletes during sports participation. The Complainant asserts that he also has adopted the composite marks ZONE DIET, ZONE CRUISE and ZONE CONSULTANTS in connection with education, counseling services, and the provision of information in the fields of diet, health and nutrition.

In addition, the Complainant states that he provides a wide array of health and nutrition products and services that are compliant with his hormonal control/insulin balanced program under the ZONE mark, and under composite marks including ZONE CUISINE, ZONE CAFЙ, ZONE SKIN CARE, ZONERX, ZONE LABS, ZONENET, and ZONE SHAKES. According to the Complainant, The ZONE CUISINE mark has been used since 2003 for prepared foods and meal delivery services in the New York City area, in connection with a corresponding website located at “www.zonecuisine.com”.

The Complainant contends that he is well known as the source of these ZONE branded products and services. Further, as a result of extensive advertising, development of a strong customer base and an active presence on the Internet, the Complainant maintains that his ZONE, ZONE DIET and other ZONE composite marks have become famous.

The Complainant states that the Respondent registered the disputed domain names, which incorporate the Complainant’s ZONE and ZONE DIET marks, without the Complainant’s permission. The Complainant notes that the Respondent is using four of these domain names – <zoneculinaire.com>, <zonemanhattan.com>, <zonewestchester.com>, and <zonelongisland.com> to direct Internet users to a website the Complainant alleges promotes meal delivery services following protocols taught by the Complainant and marketed by the Complainant under the ZONE brand.

The Complainant argues that such use of these domain names does not constitute a bona fide offering of goods or services pursuant to the Policy. The Complainant further maintains that the Respondent registered and is using the disputed domain names in bad faith primarily for the purpose of intentionally attracting for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Respondent owns Zone Culinaire, LLC, which currently does business in the greater New York City area as Zone Manhattan. According to the Respondent, Zone Culinaire is in the business of providing healthy prepared meals via delivery in different geographic areas with the goal of establishing a nationwide presence. The Respondent maintains a website, to which the disputed domain names <zonemanhattan.com>, <zoneculinaire.com>, <zonewestchester.com>, and <zonelongisland.com> direct Internet users, to market the delivery service and provide customers with information regarding the products and services offered. The Respondent claims that the additional 11 domain names were registered in expectation of taking the business nationwide.

The Respondent contends that the disputed domain names are not confusingly similar to any mark in which the Complainant has established rights for the following reasons. First, the Respondent, while acknowledging that the Complainant has registered ZONE as a mark, argues that the Complainant does not have trademark rights in either “zone” or “zone diet” as it applies to food delivery services. The Respondent asserts that the term “zone” is a common, generic word used to describe a defined delivery area in the food sale and delivery industry, but states that the word “zone” was selected for use to reflect both the state of optimum health and performance as well as geographic location.

The Respondent further asserts that there are numerous food-related business that include the term “zone” in their name, including a number of Internet-based companies unrelated to the Complainant that provide home meal delivery services, and states: “We would not have selected or continued to use “zone” if it were not for the extensive use by others.” The Respondent argues that any trademark rights the Complainant might have in “zone” and “zone diet” have been lost or severely limited by the Complainant’s failure to police the marks in the face of widespread use of these terms by third parties.

The Respondent claims rights or legitimate interests in the disputed domain names, based on their use in connection with the Respondent’s business. According to the Respondent, the domain names had been used in connection with that business for more than a year before any notice of the dispute, and well before the Complainant acquired the ZONE CUISINE trademark relating to prepared food. The Respondent asserts that the Complainant no longer operates the Zone Cuisine meal delivery service, that the Respondent and the Complainant are not competitors, and that the Respondent’s website does not display any products sold by the Complainant or utilize any of the Complainant’s registered marks.

 

6. Procedural Issues

The Complainant seeks leave of the Panel to file a supplemental submission to correct what the Complainant characterizes as factual inaccuracies in the Response regarding the Complainant’s policing efforts in connection with his ZONE and ZONE DIET marks. The Complainant argues that leave should be granted because he could not have anticipated the Respondent’s argument that the Complainant’s rights in the marks have been lost or severely limited by the failure to take legal action concerning third party use of the marks. The Complainant seeks leave to offer evidence of opposition or cancellation actions filed concerning a number of trademark applications and registrations, as well as cease and desist letters issued in connection with over 40 domain names.

No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of supplemental submissions by either party to the administrative proceeding without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. In this instance, the Panel concludes that leave should be granted, and accordingly, the Complainant’s Reply will be included in the record of this proceeding. The Panel notes, however, that the policing and enforcement actions referred to in the Complainant’s Reply all appear to have been initiated in 2006, and that the Complainant does not point to any such action taken prior to the Respondent’s registration of the disputed domain names.

 

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain names are confusingly similar to Complainant’s ZONE mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond question has established rights in its ZONE mark through registration and use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The Panel finds that the disputed domain names and the Complainant’s mark, when directly compared are confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. The disputed domain names incorporate the Complainant’s mark in its entirety, and the addition of geographic indicators does not dispel such confusion.

The Complainant also asserts that is has established trademark rights in ZONE DIET in relation to education, counseling and information in the fields of diet, health and nutrition. The record does not reflect that the Complainant has obtained a trademark registration for ZONE DIET, but it is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). The extensive or continuous use of a designation in advertising may establish its significance as an identifier of the user’s goods or services, particularly where the designation is not merely descriptive of the goods or services. See Restatement (Third) of Unfair Competition § 18 (1995).

The Complainant states in his declaration, submitted under penalty of perjury, that he has used ZONE, ZONE DIET and ZONE CRUISE as marks since at least 1998. Beyond this conclusory statement, the Complainant has provided little by way of evidence of the nature and extent of his claimed use of ZONE DIET as a mark. Publicly available records maintained by the United States Patent and Trademark Office (USPTO) indicate that the Complainant filed two intent-to-use trademark applications for DR SEARS ZONE DIET in January 2002, both of which were later abandoned. In neither application did the Complainant claim to have made any prior use in commerce of ZONE DIET.

Based on the information contained in the record before it, the Panel cannot reliably ascertain whether the Complainant has established common law trademark rights in ZONE DIET. However, since the Panel has determined that the disputed domain names are confusingly similar to the Complainant’s ZONE mark, the Complainant has met his burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The record reflects that the Respondent registered and is using multiple domain names incorporating the Complainant’s mark without the Complainant’s authorization or consent. Four of the domain names direct Internet users to the Respondent’s home meal delivery website, where the Respondent offers meals prepared utilizing the Zone Diet criteria. The Complainant further has presented evidence that the Respondent’s online delivery service is in direct competition with the Complainant’s Zone Cuisine delivery service.

The Panel concludes that the Complainant had made a prima facie showing under paragraph 4(a)(ii), requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

The Respondent claims rights or legitimate interests in the disputed domain names based on use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, prior to any notice of the dispute. It is clear that, prior to receiving any notice of this dispute, the Respondent registered and began using four of the disputed domain names in connection with the Respondent’s online meal delivery service. The dispositive question presented here is whether the disputed domain names are being used in connection with a bona fide offering of goods or services. In order for an offering under paragraph 4(c)(i) to be considered bona fide, the domain name use must be in good faith under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840.

The Panel finds that the Respondent has established rights or legitimate interests in the disputed domain names through their use in connection with a bona fide offering of goods or services. While the Complainant may assert exclusive rights in its marks in relation to the categories of goods or services for which the marks have been registered or used⁵, the Complainant has presented no convincing evidence that members of the public have come to understand the terms “Zone” and “Zone Diet” as uniquely identifying prepared or packaged food made, sponsored or endorsed by the Complainant. Statements on the Complainant’s website identifying it as “the Official Zone Diet Website” and “the only online Zone Diet program endorsed by [the Complainant]” do not suggest such a public perception.

Given the foregoing, the Panel finds that the Complainant has not met its burden under paragraph 4(a)(ii) to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel is not of the view that the Respondent’s registration and use of the disputed domain names under the circumstances of this case constitutes cybersquatting. See Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Complainant argues that the Respondent is intentionally using the disputed domain names to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website of the products and services offered on the website. However, as set forth above, the Respondent has established legitimate interests in the domain names in connection with its online business, and the overall circumstances of this case are not indicative of bad faith registration. The Complainant has failed to carry his burden under paragraph 4(a)(iii) of the Policy.

 

8. Decision

For all the foregoing reasons, the Complaint is denied.

William R. Towns Presiding Panelist
Ross Carson Panelist	Alan L. Limbury Panelist

Dated: July 15, 2006

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¹ This balancing can also be accomplished, according to the Complainant, using the “hand-eye method”, in which one-third of a serving plate is filled with lean protein about the size of the palm of a hand, with the other two-thirds consisting of carbohydrates and a dash of “good” fat. The Complainant’s Zone Diet plan generally consists of foods so prepared, with three meals and two snacks served daily.

² The Complainant’s other publications include Mastering the Zone, Zone Food Blocks, The Anti-Aging Zone, A Week in the Zone, The Soy Zone, TheTop One Hundred Zone Foods, The OmegaRx Zone, and The Anti-Inflammatory Zone.

³ Zone Manhattan is an assumed name for Zone Culinaire LLC, a company owned by the Respondent’s husband, Steve Lidner. According to Mr. & Mrs. Lidner’s sworn statement, the disputed domain names were registered for use in connection with the Respondent’s company.

⁴ The remaining eleven domain names currently resolve to websites provided by the domain name registrar. These websites feature “sponsored links” and “popular searches”, and include links to the Complainant’s website and arguably to websites where competing products or services are offered. The record in this case is silent as to whether the Respondent had any involvement in the creation of these websites or the selection of the links. Nor does the record reflect whether the Respondent has realized any income from the operation of these sites.

⁵ The Complainant has not registered ZONE or ZONE DIET for use with prepared or packaged foods.