Nutramax Laboratories, Inc. v. Andres Delgado Gonzalez / cosequincolombia
Claim Number: FA2204001992747
Complainant is Nutramax Laboratories, Inc. (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Andres Delgado Gonzalez / cosequincolombia (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cosequincolombia.com>, registered with GoDaddy.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2022; the Forum received payment on April 18, 2022.
On April 19, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cosequincolombia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 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@cosequincolombia.com. Also on April 26, 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 April 26, 2022.
On April 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <cosequincolombia.com> domain name is confusingly similar to Complainant’s COSEQUIN mark.
2. Respondent does not have any rights or legitimate interests in the <cosequincolombia.com> domain name.
3. Respondent registered and uses the <cosequincolombia.com> domain name in bad faith.
B. Respondent consents to the transfer of the <cosequincolombia.com> domain name to Complainant.
Complainant, Nutramax Laboratories, Inc., manufactures, distributes and sells nutritional supplements, including for animals. Complainant holds a registration for the COSEQUIN mark with multiple trademark agencies, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,791,253, registered on September 7, 1993).
Respondent registered the <cosequincolombia.com> domain name on January 19, 2022, and uses it to offer Complainant’s goods and other competing goods.
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.
The Panel finds that Complainant has rights in the COSEQUIN mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 1,791,253, registered on September 7, 1993). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <cosequincolombia.com> domain name uses the COSEQUIN mark, and adds the geographic name “Colombia” and the “.com” gTLD. The mere addition of a geographic location and a gTLD is not sufficient to differentiate a disputed domain name from the mark it incorporates. See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel therefore finds that Respondent’s <cosequincolombia.com> domain name is confusingly similar to Complainant’s COSEQUIN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights and legitimate interests in the <cosequincolombia.com> domain name because Respondent is not commonly known by the domain name and is not authorized to use the COSEQUIN mark. The WHOIS information shows Respondent is known as “Andres Delgado Gonzalez / cosequincolombia.” Given the unrebutted assertion that Respondent is not authorized to use “cosequin” in any way, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Complainant also argues that Respondent does not use the <cosequincolombia.com> domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use, as the resolving website offers Complainant’s goods, as well as third-party competing products. Using a disputed domain name to offer a complainant’s products without authorization is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Complainant provides screenshots of the website at <cosequincolombia.com> featuring Complainant’s products for sale. The Panel finds that this is not a bona fide offering of goods and services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <cosequincolombia.com> domain name in bad faith because the resolving website disrupts Complainant’s business, offering Complainant’s products without proper authorization to do so. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant contends that Respondent attempts to attract users for commercial gain by passing off as Complainant, using a confusingly similar domain name and offering Complainant’s products. Prior panels have routinely found that attracting users for a financial gain by passing off as a complainant evinces bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel therefore finds further bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COSEQUIN mark because of Respondent’s efforts to pass off as Complainant. The Panel agrees and finds that Respondent had knowledge of Complainant’s rights in the COSEQUIN mark, and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cosequincolombia.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 28, 2022
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