DECISION

 

Nature's First, Inc. v. Natures First Ltd

Claim Number: FA0111000102463

 

PARTIES

Complainant is Nature's First, Inc., Fort Lauderdale, FL (“Complainant”) represented by Michael I. Santucci.  Respondent is Natures First Ltd, London, UK (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <naturesfirst.com>, registered with Network Solutions.

 

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. Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 16, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.

 

On November 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <naturesfirst.com> is registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 November 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 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@naturesfirst.com 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 December 26, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <naturesfirst.com> is identical to a mark in which Complainant holds rights.

 

Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Respondent registered and has used the disputed domain name in bad faith.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

Complainant holds two trademarks in NATURE’S FIRST, registered on the Principal Register of the United States Patent and Trademark Office on October 25, 1994 and October 27, 1998 as Registration Nos. 1,859,844 and 2,199,852 respectively.  Complainant and its predecessor have used the mark continuously in commerce since November 1993.  In addition to rights gained through registration, Complainant asserts that it has also gained rights through common law trademark ownership.

 

Respondent registered the disputed domain name on March 16, 2000 and has made no demonstrable use of it as of the time the Complaint was filed.

 

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

Complainant has sufficiently demonstrated its rights in the NATURE’S FIRST mark through registration with the U.S. Patent and Trademark Office.

 

The disputed domain name is identical to Complainant’s NATURE’S FIRST mark.  The omission of the apostrophe and space are insignificant to the “identical” determination as these characters are impermissible in domain names.  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

 

Similarly, the addition of “.com” does not affect the mark for the purpose of determining whether it is identical to the disputed domain name.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the NATURE’S FIRST mark. Because Respondent has failed to submit a Response in this proceeding, the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

There is no evidence that Respondent has used the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).  Although the disputed domain name was registered in the name of “Natures First Ltd,” there is similarly no evidence that respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company). 

 

Finally, Respondent’s non-use of the domain name cannot be deemed a legitimate noncommercial or fair use of the name within the meaning of Policy ¶ 4(c)(iii). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use the disputed domain names in any way).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

In determining whether the Respondent registered and used the disputed domain name in bad faith, the Panel will look to the totality of the circumstances and may consider evidence not specifically enumerated in paragraph 4(b) of the Policy.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

The Respondent has passively held the disputed domain name for at least 18 months without demonstrating any possible intent to use the name except to prevent others from registering it.  This is evidence of registration and use in bad faith.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Finally, Complainant asserts that Respondent was aware or should have been aware of Complainant’s mark.  Because Respondent has not disputed this claim, the Panel may accept it as true.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).  Respondent’s registration of a domain name containing Complainant’s entire mark therefore constituted bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <naturesfirst.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: December 27, 2001