Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Chris Banks
Claim Number: FA2105001944033
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Maureen Beacom Gorman of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Chris Banks (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutirtion.com>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2021; the Forum received payment on May 5, 2021.
On May 6, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <universalnutirtion.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@universalnutirtion.com. Also on May 10, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the Parties a Notification of Respondent Default.
On June 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the UNIVERSAL and UNIVERSAL NUTRITION marks established by its ownership of the trademark and service mark registrations set out below. In addition, Complainant submits that it has established rights and goodwill in the marks through extensive use in its sports nutrition business with sales that constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market sales volume has exceeded at least USD 20 million each year since at least 2003.
Complainant alleges that the disputed domain name <universalnutirtion.com> is confusingly similar to its UNIVERSAL and UNIVERSAL NUTRITION marks because it only differs from the UNIVERSAL NUTRITION mark by way of inversion of the first “i” and “r” in “nutrition.” This minor alteration is without significance under Policy ¶ 4(a)(i).
Complainant adds that use of the generic top-level domain “.com” is also without significance under Policy ¶ 4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name and asserting that Respondent cannot point to any evidence that it is legally chartered or commonly known as “Universal Nutirtion.”
According to the Registrar for the disputed domain name Respondent’s name is “Chris Banks” and consequently, Respondent is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 470335 (Forum Aug. 3, 2006) (finding that respondent was not commonly known by the <cigaraficionada.com> domain under Policy ¶ 4(c)(ii) based on WHOIS information and other evidence in the record).
Complainant adds that Respondent cannot demonstrate that he is engaged in a legitimate noncommercial or fair use of the disputed domain name.
It is further contended that Respondent failed to discharge his duty to select, register, and use a domain name that does not infringe the rights of a third party.
Respondent’s actions indicate he was aware of Complainant’s rights in the UNIVERSAL and UNIVERSAL NUTRITION marks prior to registering the disputed domain name. Policy ¶ 2(b) requires a registrant to warrant, “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.”
Additionally Complainant refers to copy email correspondence which is exhibited in an annex to the Complainant that shows that the disputed domain name has been used to establish an email account from which Respondent has sent an unauthorized and fraudulent email purporting to come from an employee of Complainant to a customer of Complainant requesting a change in the payment procedures for Complainant’s account.
Complainant alleges that such use of the disputed domain name for fraudulent and illegal activity demonstrates a lack of legitimate interest. See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (“Respondent’s registration and use of the Domain Name for fraudulent and illegal activities, namely, false impersonation and theft, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use…”).
Complainant argues that Respondent’s attempt to pass himself off as Complainant also demonstrates his awareness of Complainant’s trademark rights.
Complainant also alleges that the disputed domain name was registered in bad faith arguing that Respondent knew of Complainant’s prior use of the UNIVERSAL and UNIVERSAL nutrition marks when the disputed domain name <universalnutrition.com> was registered. Complainant submits that where a respondent has actual knowledge of another party’s mark when registering a disputed domain name, that is confusingly similar, the registration is made in bad faith. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (finding bad faith registration where respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
Here, Respondent registered the disputed domain name that is nearly identical to Complainant’s registered marks, despite having no affiliation with Complainant or being known by that name.
Complainant further contends that the disputed domain name is being used in bad faith arguing that by engaging in phishing, Respondent has intentionally attempted to disrupt, and is currently disrupting, Complainant’s business. As set forth in detail above, Respondent used the disputed domain name and the associated email address to pass himself off as Complainant in an effort to collect payments from Complainant’s customers. Under similar circumstances, panels have found bad faith registration. See Smiths Group plc v. Snooks concluded that the respondent’s attempts to impersonate the complainant’s employee constituted evidence of bad faith registration.
Complainant also argues that Respondent is engaged in typosquatting, which is the practice of taking advantage of Internet users’ misspellings or typographical errors. Panels have consistently held that typosquatting is evidence that a respondent lacks rights and legitimate interests in a domain name. See The Toronto-Dominion Bank v. Zhelizko Vodenichrov, FA 363823 (Forum Dec. 20, 2004) (finding bad faith under Policy ¶ 4(b)(iii) where the respondent engaged in typosquatting by inverting the letters “s” and “u” in the word “trust” contained in the disputed domain < tdcanadatrsut.com>).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of sports nutrition health products and related services in which it uses the UNIVERSAL and UNIVERSAL NUTRITION marks and is the owner of an international portfolio of trademark registrations including the following:
· Australian registered service mark UNIVERSAL NUTRITION (device), registration number 1289896, registered on November 19, 2009 for services in class 35;
· Australian registered trademark UNIVERSAL (device) registered on September 1, 2014 for goods in class 5;
· United States registered trademark UNIVERSAL NUTRITION, registration number 3,020,559, registered on the Principal Register on November 29, 2005 for goods in international class 5;
· United States registered trademark UNIVERSAL NUTRITION, registration number 3,020,560, registered on the Principal Register on November 29, 2005 for goods in international class 29;
· United States registered service mark UNIVERSAL NUTRITION, registration number 3,020,562, registered on the Principal Register on November 29, 2005 for services in international class 29;
· United States registered service mark UNIVERSAL NUTRITION, registration number 3,020,563 registered on the Principal Register on November 29, 2005 for services in international class 35;
· United States registered service mark UNIVERSAL NUTRITION, registration number 5,053,015, registered on the Principal Register on October 4, 2016 for services in international class 40;
· United States registered trademark UNIVERSAL (device). registration number 3,568,919, registered on the Principal Register on February 3, 2009 for goods in international class 5;
· United States registered trademark UNIVERSAL (device). registration number 3,5555,885, registered on the Principal Register on January 6, 2009 for goods in international class 5;
· United States registered trademark UNIVERSAL (device). registration number 4,617,301, registered on the Principal Register on October 7, 2014 for goods in international class 25.
Complainant has an established Internet presence and is the owner of the domain name <universalnutrition.com> registered on July 22, 1998 which resolves to Complainant’s website.
The disputed domain name was registered on May 04, 2021 and is being used to establish an email account from which unsolicited and unauthorized emails have been sent to a customer of Complainant, purporting to come from an employee of Complainant and requesting a change in the method of payment of moneys due to Complainant
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
The Registrar has confirmed that Respondent is the registrant of the disputed domain name. Respondent has availed of a privacy service to conceal his name on the published WhoIs and the identity of the registrant was disclosed by the Registrar to the Forum in the course of this proceeding.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested and convincing evidence that it has rights in the UNIVERSAL and UNIVERSAL NUTRITION marks established by its ownership of the trademark and service mark registrations described above and the goodwill that it has accrued in the marks through their extensive use by Complainant in its sports nutrition business with sales that constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant asserts that sales volume exceeded USD 20 million each year since at least 2003.
The disputed domain name <universalnutirtion.com> is composed of Complainant’s UNIVERSAL trademark in its entirety in combination with the element “nutirtion” and the generic Top Level Domain (“gTLD”) extension <.com>.
The combination of Complainant’s UNIVERSAL mark and the nonsense word “nutirtion” in the disputed domain name is visually almost identical to Complainant’s UNIVERSAL NUTRITION mark because the reversal of letters “i” and “r” “nutirtion” produces the word “nutrition”.
The word “universal” is the only distinctive element in the disputed domain name.
The element “nutirtion” being a nonsense term has no distinguishing character per se, but in combination with the word “universal”, it becomes confusingly similar in appearance to Complainant’s UNIVERSAL NUTRITION mark.
For the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored because in the circumstances of this Complaint, on the balance of probabilities, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to both the UNIVERSAL and UNIVERSAL NUTRITION marks in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because:
· Respondent is not commonly known by the disputed domain name Respondent cannot point to any evidence that it is legally chartered or commonly known as “Universal Nutirtion”;
· the Registrar has disclosed that Respondent is the registrant of the disputed domain name and the Respondent identifies himself as “Chris Banks”, consequently, Respondent is not commonly known by the disputed domain name;
· Complainant challenges Respondent to demonstrate that he is engaged in a legitimate noncommercial or fair use of the disputed domain name;
· as the disputed domain name infringes Complainant’s trademark rights in the UNIVERSAL and UNIVERSAL NUTRITION marks, Respondent has failed to discharge his duty to select, register, and use a domain name that does not infringe the rights of a third party as Policy ¶ 2(b) requires the registrant to warrant, “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”;
· the copy email correspondence which is exhibited in an annex to the Complaint illustrates that Respondent is using the disputed domain name to pass himself off as Complainant by impersonating an employee of Complainant asking a customer to change payment arrangements in an endeavor to perpetrate a fraud;
· such use of the disputed domain name for fraudulent and illegal activity demonstrates a lack of legitimate interest.
It is well established that, once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has satisfied this Panel that on the balance of probabilities the disputed domain name was registered in bad faith.
The combination of the element “universal” and the nonsense element “nutirtion” is visually very similar to Complainant’s UNIVERSAL NUTRITION mark. It is most improbable that the registrant of the disputed domain name was unaware of Complainant’ its rights, reputation and goodwill in the UNIVERSAL NUTRITI0N mark and food supplement business, when the disputed domain name was chosen and registered.
On the balance of probabilities, the registrant chose and registered the disputed domain name specifically to make reference to Complainant’s mark in an act of typosquatting. The registrant of the disputed domain name merely reversed the respective positions of the letters “”i” and “r” in “nutrition” in Respondent’s UNIVERSAL NUTRITION mark to form the disputed domain name. It is most improbable that this was done for any reason other than to take predatory advantage of Complainant’s mark reputation in an act of typosquatting.
This finding is further supported by the fact that Complainant has registered both the UNIVERSAL and UNIVERSAL NUTRITION marks in Australia in which Respondent purports to be established.
Additionally, Complainant has shown in uncontested evidence that the disputed domain name is being used in bad faith. Complainant has adduced in evidence email correspondence sent by Respondent, who is using the disputed domain name in bad faith in his email address, to a customer of Complainant, while purporting to be an employee of Complainant, requesting that the customer change the method of payment of Complainant’s account. The evidence shows that on the balance of probabilities Respondent is impersonating Complainant in a phishing attempt to fraudulently divert funds intended for Complainant.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutirtion.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 4, 2021
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