N.V.E., Inc. v.
Claim Number: FA0708001064467
Complainant is N.V.E., Inc. (“Complainant”), represented by Anthony
J. Davis, of Nicoll, Davis & Spinella, LLP, 95
Route 17 South, Paramus, NJ 07652.
Respondent is Belize Domain WHOIS Service (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stacker2.net>, registered with Domain Contender, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2007.
On August 16, 2007, Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <stacker2.net> domain name is registered with Domain Contender, LLC and that Respondent is the current registrant of the name. Domain Contender, LLC has verified that Respondent is bound by the Domain Contender, LLC 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 August 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 2007 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <stacker2.net> domain name is identical to Complainant’s STACKER 2 mark.
2. Respondent does not have any rights or legitimate interests in the <stacker2.net> domain name.
3. Respondent registered and used the <stacker2.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, N.V.E., Inc., is a well-known manufacturer, distributor, and retailer of nutritional and dietary supplements. Since 1996, Complainant has manufactured and marketed a popular nutritional supplement, known as “Stacker 2,” under the STACKER 2 mark. Complainant has used this mark extensively to promote its product through television, radio, print, and the Internet, and the STACKER 2 mark has become widely recognized by consumers and the nutritional supplement industry. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the STACKER 2 mark (Reg. No. 2,190,936 issued September 22, 1998). Complainant currently markets its products from a website located at the <stacker2.com> domain name.
Respondent registered the <stacker2.net> domain name on June 4, 2004. Respondent’s disputed domain name resolves to a website featuring links to various third-party websites, some of which offer products that directly compete with Complainant’s STACKER 2 nutritional supplement.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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’s timely registration of
the STACKER 2 mark with the USPTO and its subsequent extensive use of the mark
sufficiently establish its rights in the mark pursuant to Policy ¶
4(a)(i). See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
domain name only differs from Complainant’s STACKER 2 mark in that it omits
the space between “STACKER” and “2,” and
it adds the generic top-level domain (“gTLD”) “.net.” Under the UDRP, the omission of a space in an
established mark does not render a corresponding disputed domain name distinct
from the mark. Also, as a top-level
domain is a required element of all domain names, Respondent’s inclusion of the
gTLD “.net” in the disputed domain name at issue here is irrelevant. Accordingly, the Panel finds that the <stacker2.net> domain name is
identical to Complainant’s STACKER 2 mark under Policy ¶ 4(a)(i). See Little Six, Inc. v. Domain For
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the <stacker2.net> domain name. Once Complainant has made a prima facie case in support of this assertion, the burden shifts to Respondent to show that it does possess rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case under the Policy. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel presumes that Respondent lacks rights and legitimate interests in the <stacker2.net> domain name due to its failure to respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). However, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The disputed domain name resolves to a website featuring links to third-party commercial websites, some of which offer nutritional products in direct competition with Complainant, and the Panel infers that Respondent accrues click-through fees from these links. The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also asserts that Respondent is not commonly known by the <stacker2.net> domain name, which is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. A review of Respondent’s WHOIS information reveals that the registrant of the <stacker2.net> domain name is “Belize Domain WHOIS Service.” Based on this and the lack of other contrary evidence in the Complaint, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant further asserts that Respondent acted in bad faith by registering and using a disputed domain name that is identical to Complainant’s STACKER 2 mark. As the <stacker2.net> domain name resolves to a website featuring links in competition with Complainant, the Panel finds that this constitutes a disruption of Complainant’s business. Under Policy ¶ 4(b)(iii), such use is evidence that Respondent registered and is using the disputed domain name in bad faith. See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel assumes that Respondent benefits commercially from the competing links displayed on the website that resolves from the <stacker2.net> domain name. Such use amounts to an intentional attempt to attract consumers, who are presumably seeking Complainant’s products, to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s STACKER 2 mark. The Panel finds that this also indicates registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”) see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stacker2.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 3, 2007
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