Mannatech, Inc. v. K-Pro Marketing
Claim Number: FA0201000104189
The Complainant is Mannatech, Inc., Coppell, TX (“Complainant”) represented by Steven Rains, of Mannatech, Inc. The Respondent is K-Pro Marketing, St. Cloud, MN (“Respondent”) represented by Kipp Hoeft.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mannatechinc.com>, registered with Network Solutions, Inc.
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.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 30, 2002; the Forum received a hard copy of the Complaint on January 31, 2002.
On February 5, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mannatechinc.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 February 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on February 22, 2002.
On March 5, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Mannatech develops and sells proprietary nutritional supplements and topical products through a network marketing system of independent sales persons referred to as distributors or independent associates. Mannatech has been in business since 1993 and has used the trademark MANNATECH as its corporate name since October 25, 1995. It has further established business under the corporate name MANNATECH in Australia, Canada, Japan and the United Kingdom.
Mannatech's goods have been sold in every state of the U.S.A., Australia, Canada, Japan and the United Kingdom with annual sales exceeding $150 million (for fiscal year 2000).
As a result of Mannatech's use of the trademark MANNATECH and the promotion and advertising thereof, Complainant argues that the mark MANNATECH has acquired significant goodwill and reputation among potential purchasers of Mannatech's goods and distributors of those goods and constitutes an important asset of Mannatech's business.
Mannatech applied for registration of the mark MANNATECH on March 9, 1998 . Mannatech argues that under Section 7(c) of the Federal Trademark Act, 15 U.S.C. § 1057(c), Mannatech's constructive use of MANNATECH conveys a nationwide right of priority in the trademark MANNATECH effective from March 9, 1998.
On or about September 21, 2000, K-Pro Marketing registered the domain name <mannatechinc.com> (the "Domain Name"). Respondent registered the Domain Name and started to use the site despite his knowledge of Mannatech's prior use of the trademark MANNATECH as its corporate name and Mannatech's trademark rights in the same.
Since Respondent has registered the domain name, he has not used the site in any meaningful way, and has merely posted a splash page which reads as follows:
members must be 18 years of age
Complainant says this splash page leaves the impression that what is coming is a pornographic site and that somehow Complainant is connected to this pornographic site.
Complainant submits that the domain name <mannatechinc.com> is confusingly similar to its MANNATECH marks, that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and is using the mark in bad faith.
Respondent describes himself as self-employed, and he carries on various businesses. In the fall of 2000, he was approached by a Mannatech sales member. Although he was too busy to really do anything with the opportunity at the time, and he did not have $1000 to sign up to be part of the Mannatech organization, Respondent thought that within six to twelve months he would be able to focus on the products of Mannatech. Because a web site is an easy and inexpensive way to promote a multi-level marketing program, Respondent searched for availability of <mannatechinc.com> and found that it was available. He called a local hosting company, ReadyNetGo, Inc., which he had used in the past, and registered the domain name on September 21, 2000. The domain “sat empty” for a while and then Respondent posted the “coming soon” splash page which still exists today. Otherwise, the site has never been active.
Respondent acknowledges that the domain name is confusingly similar to Mannatech’s trademark and acknowledges that was his intent. Otherwise how could he advertise Mannatech products on the Internet? Respondent argues, however, that he has a legitimate interest in the domain name and that he has not acted in bad faith.
The Panel finds as follows:
1. The domain name in question, <mannatechinc.com> is confusingly similar to Complainant’s MANNATEC trademark.
2. Respondent has no rights or legitimate interest in the domain name; and
3. Respondent has acted in bad faith within the meaning of the UDRP.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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
Respondent has conceded that the domain name <mannatechinc.com> is confusingly similar to Complainant’s MANNATEC trademark. Indeed, Respondent admits the reason for his registration of the domain name was to benefit from the goodwill of Complainant’s mark and promote sale of products of Complainant.
Although Complainant has not provided evidence that it holds a registered mark in MANNATECH, Complainant has acquired sufficient rights at common law and through its pending trademark application to satisfy the trademark requirement of Policy 4(a)(i).
Complainant has satisfied the first element of the policy.
Rights or Legitimate Interests
Complainant asserts that Respondent holds no trademark rights in MANNATECH and does not do any business under that mark. While Respondent says he intended to pursue a business as a sales member of the Complainant, there is no evidence before me that he has taken any steps to become an active sales member of Complainant, nor is there any other evidence to establish that Respondent has acquired any right or legitimate interest in the domain name. The Panel does not view Respondent’s splash page as establishing a right or legitimate interest.
Complainant has satisfied the second element of the policy.
Registration and Use in Bad Faith
With respect to this element, the paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location
On a review of the evidence, the Panel finds the following with respect to the four enumerated circumstances:
1. There is no evidence that the name was acquired primarily for the purpose of sale to Complainant or a competitor.
2. There is no evidence of intent to prevent the owner from reflecting the mark, and in any event there is no pattern.
3. There is no evidence that the primary purpose of the registration was to disrupt the business of the Complainant nor does the Complainant appear to be a "competitor" of the Respondent within the meaning of the policy.
4. There is no site operating at this time.
Given that none of the four enumerated policy criteria with respect to bad faith have been met, that leaves the Panel with the question of whether there is bad faith for some other reason. On our reading of the Policy, each panel is responsible to determine whether there has been bad faith. The four cited examples are situations where, if the evidence exists, the Panel must find bad faith. This does not, however, preclude the Panel finding that other circumstances amount to bad faith in a particular case. The paragraph says, "in particular but without limitation".
The Panel has examined all the evidence and arguments carefully. Complainant argues that Respondent was well aware of Complainant’s rights and interests in the MANNATECH mark when he registered and used the disputed domain name. Respondent admits he knew of Complainant’s mark. Indeed, that knowledge was the reason he chose to register the domain name. Respondent has not made any active use of the domain name. He has merely displayed a “coming soon” slash page at the site. While perhaps not all visitors to the site would get the impression that the advertised site would be a pornographic site, objectively it is reasonable to assume from the nature of the words on the splash page that at least some Internet users would conclude that the eventual site would be pornographic, thus connecting Complainant’s mark with pornographic activities. Lastly, Respondent has made no other use of the site and has made no preparations to use the site for a legitimate business purpose. These circumstances, on a totality of the evidence, amount to bad faith within the meaning of the Policy.
Complainant succeeds on the third element.
The Panel finds in favour of the Complainant in this case, and in accordance with Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <mannatechinc.com> be transferred to the Complainant.
Wallace, Q.C., Panelist
Dated: March 18, 2002
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