Nutramax Laboratories, Inc. v. GRUPO SA Ltd Co / Grupo S.A. Ltd. Co.
Claim Number: FA2202001985605
Complainant is Nutramax Laboratories, Inc. (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is GRUPO SA Ltd Co / Grupo S.A. Ltd. Co. (“Respondent”), represented by Gary N. Schepps of Schepps Law Offices, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <consequin.com>, registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2022; the Forum received payment on February 23, 2022.
On February 23, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <consequin.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 February 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2022 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@consequin.com. Also on February 25, 2022, 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.
A timely Response was received and determined to be complete on March 17, 2022.
An Additional Submission by Complainant was received and determined to be complete on March 23, 2022.
On March 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a U.S. company and via its affiliates develops, markets, and distributes high-quality nutritional supplements, including supplements for animals. For almost 30 years, COSEQUIN-branded supplements have been marketed and distributed including via its website at <cosequin.com>.
Complainant’s affiliates also conduct laboratory research and clinical studies into its nutritional supplements and many of these studies have been published and/or presented in medical, veterinary and other health-related journals and publications. Complainant’s supplements are widely regarded as the gold standard in the supplements industry and are highly recommended by veterinarians in promoting animal health.
Complainant owns U.S. trademark registration No. 1791253 for COSEQUIN (registered on September 7, 1993) and approximately 19 multiple international applications and registrations for the mark, including the following:
- Canadian Trademark Registration No. TMA513587, registered on July 29, 1999;
- Mexican Trademark Registration No. 2192547, registered on January 8, 2021;
- Mexican Trademark Registration No. 1160775, registered on May 27, 2010; and
- German Trademark Registration No. 39762041, registered on March 17, 1998.
As a result of nearly 30 years of marketing and advertising, the COSEQUIN trade mark has become well known.
The disputed domain name was registered on January 17, 2006, without Complainant’s knowledge or permission and postdates Complainant’s trademark registration.
The disputed domain name resolves to a parking page which provides pay-per-click (“PPC”) links for joint treatments, including for dogs. When the links are selected, the user is diverted to another website featuring advertisements for competing joint products for pets.
The disputed domain name is confusingly similar to Complainant’s COSEQUIN trade mark which is well known and in which it has registered rights. The misspelling of Complainant’s trade mark COSEQUIN by the addition of the letter “n” constitutes typosquatting under the Policy. Complainant’s CONSEQUIN mark is a coined word with no dictionary meaning, which makes the minor misspelling in this case evidence of a clear intention on Respondent’s part to convey a connection to Complainant and its COSEQUIN-branded products.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name or any name containing Complainant’s COSEQUIN mark. Respondent is not affiliated with or otherwise endorsed by Complainant. Complainant has not authorized or licensed Respondent to use any of its trade marks. Respondent’s use of the disputed domain name for financial gain from the PPC links indicate that Respondent lacks rights or legitimate interests in the disputed domain name. Such unauthorized use of Complainant’s mark does not constitute use with a bona fide offering of goods or services under the Policy.
The disputed domain name was registered and is being used in bad faith. Respondent used a privacy service in registering the disputed domain name to avoid detection. Respondent’s use of the disputed domain name to direct Internet users to competing third-party products strongly suggests that Respondent seeks to attract Internet users to its website by intentionally creating confusion as to whether the resolving webpage is offered by or affiliated with Complainant. Such conduct is also disruptive to Complainant’s business and is further evidence of bad faith registration and use of the disputed domain name.
B. Respondent
CONSEQUIN and COSEQUIN have different sounds. Under the rules of English grammar and pronunciation, a vowel followed by a single consonant and then the letter E, becomes a long, hard pronunciation, and the E is then silent or very soft, such as Complainant’s CONSEQUIN which has a hard, long O in its pronunciation, followed by a silent or soft E. By contrast, when a vowel is followed by two consonants and then an E, the first vowel is short, and the E is hard or strong. The disputed domain name is, on the basis of the aural differences, not confusingly similar to CONSEQUIN.
The letter N is not located on the keyboard next to the letter O or S. Accordingly, it is not possible to accidentally press N by mistake when pressing O or S. Therefore, there is no risk of typosquatting for COSEQUIN. Typosquatting occurs when a name contains “a typographical error that Internet users attempting to access Complainant’s [] domain name [] commonly make”. There are seven keys surrounding the letter “O” on the keyboard, and eight keys surrounding “S”, and “N” is not one of those keys. Complainant has failed to show that the disputed domain name is purportedly a common misspelling of its trade mark.
More than a decade and a half ago, investment was made by Respondent in the registration of the disputed domain name for its unique combination of “con” and “sequin”. The meaning of CONSEQUIN is literally “with sequin”.
The disputed domain name’s default homepage was provided by the domain name Registrar which includes Google ads generated by Google and links to animal hip injuries. It is not shown that Respondent had any knowledge of the links generated by Google or that the ads existed more than 15 years ago when the disputed domain name was registered. It is also not shown that Respondent was familiar with Complainant or its mark and that even if there had been actual notice of Complainant’s U.S. trademark registration. No intention has been shown.
The disputed domain name was subject to legal proceedings in about 2010 and a U.S. Federal District Court, after examination by multiple expert counsel, authorized the renewal of the disputed domain name. Complainant did not raise any issue in those proceedings. It has now waited for more than a decade and a half after the registration of the disputed domain name to bring a UDRP complaint. This substantially prejudices Respondent as the materials upon which the disputed domain name was originally registered, which could establish clear, concrete proof of good faith registration, as well as materials from the 2010 U.S. Federal suit (in which a federal court approved the renewal of the disputed domain name) are no longer available after a decade.
C. Additional Submissions
Complainant submitted Additional Submissions in response to Respondent’s Response.
In relation to Respondent’s argument about the addition of the letter “N”, Complainant referred to the earlier UDRP case of Expedia, Inc. v. Yong Li, FA429084 (Forum April 7, 2005) where the respondent registered the domain name <expendia.com>. The panel in that case found that although the letter “N” is not contained on the keyboard near the other letters in EXPEDIA, <expendia.com> was confusingly similar to EXPEDIA and stated that “[a] long line of Panel Decisions hold that under the Policy, the addition of only one letter to a complainant’s registered mark is inadequate to distinguish the disputed domain name from the mark.” Therefore, the disputed domain name is still confusingly similar to COSEQUIN.
Although Respondent argues that CONSEQUIN is intended to convey “with sequin”, Respondent did not submit any evidence showing legitimate use of CONSEQUIN in connection with any products or any legitimate rights of the use of this term in the disputed domain name. Respondent has not offered any evidence showing that it sells any type of sequin products or is otherwise known by the CONSEQUIN name. There is no active use of the disputed domain name in connection with any product, instead, it is being used to sell pet joint supplements that compete with Complainant’s products.
Respondent argues that it conducted a search but did not attach any search results. Respondent also argues that the disputed domain name was registered for legitimate investment purposes but did not submit evidence supporting the same. Instead, Respondent provided an inactive link to the USPTO search database and Complainant is unable to discern the nature of the search results. Therefore, Respondent has failed to provide any evidence demonstrating legitimate rights to or use of the disputed domain name or that the disputed domain name has been used with any bona fide offering of goods or services.
Respondent also fails in its argument that the PPC ad page is a default homepage provided by the domain name Registrar and that there is no showing that Respondent had knowledge of the content of its own website. It is irrelevant whether Respondent posted the PPC website because as owner of the disputed domain name, Respondent is responsible for the content that appears on its website.
Respondent vaguely references a prior U.S. Federal Court action concerning the dispute domain name without any reference to the parties, the location or nature of the dispute. Complainant is unaware of this reference and conducted a search on The Public Access to Court Electronic Records (PACER) to investigate this claim and no results were found for Respondent. Complainant submits that this argument should be disregarded since Respondent has not presented any evidence of this action or how it pertains to this matter.
(a) The disputed domain name is confusingly similar to the trade mark COSEQUIN in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
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.
Complainant has established it has rights in the trademark COSEQUIN.
The Panel is of the view that there is confusing similarity between Complainant’s COSEQUIN mark and the disputed domain name as the latter wholly incorporates Complainant’s COSEQUIN mark, albeit with a minor mis-spelling. The additional letter “N” in the disputed domain name does not remove confusing similarity between the disputed domain name and the Complainant’s registered trademark. Many panels have held that minor mis-spellings of complainants’ marks constitute typosquatting and support a finding of confusing similarity. (See e.g. Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) where the <wllsfago.com> domain name was held to be confusingly similar to the WELLS FARGO mark.) Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the well-established principle in relation to mis-spellings of complainants’ trade marks as follows:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. … panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.
The Panel does not agree with Respondent’s argument that typosquatting is confined to cases where the relevant letters are adjacent keyboard letters. (See other examples of what could constitute typosquatting in section 1.9 of the WIPO Overview 3.0.)
Policy ¶ 4(a)(i) has therefore been established.
Complainant has demonstrated a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Complainant has showed that Respondent is not commonly known by the disputed domain name; Complainant has not authorized or licensed Respondent to use the COSEQUIN mark in any way. Having established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. (See Section 2.1 of the WIPO Overview 3.0; Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 12, 2014).)
Having reviewed the evidence submitted by Complainant and arguments submitted by Respondent, the Panel finds that Respondent has failed to show that it has rights or legitimate interests in the disputed domain name. Respondent is neither known by the disputed domain name nor is it authorized or licensed by Complainant to use the disputed domain name. Respondent failed to furnish any additional information or any supporting evidence to support arguments that it has rights or legitimate interests. No supporting documents were produced in relation to the alleged “legitimate investment purposes” nor other bona fide or legitimate use. The use of the disputed domain name which is confusingly similar to Complainant’s mark for use on a parked page with PPC links to competing goods of Complainant does not amount to a legitimate noncommercial or fair use under the Policy. See CheapCarribean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015).
The Panel does not accept Respondent’s argument that there is no evidence that it had knowledge of the presence of parked content at the resolving webpage related to the disputed domain name. Panels have found that respondents are ultimately responsible for the content of their resolving webpages. Parked pages comprising PPC links “[do] not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” (section 2.9 of the WIPO Overview 3.0). The trade mark in this instance is an invented word and distinctive as a trade mark. Respondent’s explanation for how the disputed domain name was derived (i.e. it means “with sequin”) is not credible. Respondent has not produced any evidence showing that it sells any type of sequin products or other evidence which makes the explanation believable. Respondent is not using the disputed domain name “to host PPC links genuinely related to the [alleged] dictionary meaning of the word” “consequin”; rather it appears to trade off Complainant’s COSEQUIN mark. (See section 2.9 of the WIPO Overview 3.0.)
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that the disputed domain name was registered and is being used in bad faith. Panels have found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith. Respondent claims it had investment purposes in mind when it registered the disputed domain name but this assertion is vague and unsupported. Respondent’s lack or own rights to or legitimate interests in the disputed domain name and the redirection of the resolving webpage to competitors’ products are all circumstances which support a finding that Respondent registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The Panel is persuaded that the circumstances of this case suggest that Respondent targeted Complainant and its COSEQUIN mark. (See sections 3.1.4 and 3.2.1 of the WIPO Overview 3.0.)
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <consequin.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: March 30, 2022
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