Nature's Sunshine Products Inc. v. Nutrilab Corporation
Claim Number: FA0710001087580
Complainant is Nature's Sunshine Products Inc. (“Complainant”), represented by Michael
E. Mangelson of Stoel Rives LLP, 201 South Main Street
Suite 1100, Salt Lake City, UT, 84111.
Respondent is Nutrilab Corporation (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <proargi9.com>, registered with GoDaddy.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 1, 2007; the National Arbitration Forum received a hard copy of the Complaint October 4, 2007.
On October 2, 2007, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <proargi9.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com verified that Respondent is bound by the GoDaddy.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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 postmaster@proargi9.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <proargi9.com>, is confusingly similar to Complainant’s PROARGI-9 mark.
2. Respondent has no rights to or legitimate interests in the <proargi9.com> domain name.
3. Respondent registered and used the <proargi9.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nature’s Sunshine Products, Inc., is a
Respondent registered the <proargi9.com> domain name January 5, 2004. Respondent’s domain name resolves to a website disparaging Complainant’s mark and product line while promoting Respondent’s own competing product.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in the PROARGI-9 mark through registration of the mark with the USPTO. Although Respondent’s registration of the <proargi9.com> domain name predates the USPTO’s acceptance of Complainant’s trademark registration by over eleven months, the Panel finds that Complainant’s rights in the PROARGI-9 mark date back to the time Complainant originally filed the trademark application, which precedes the date the domain name was registered. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
The Panel finds that Complainant’s registration of the PROARGI-9 mark predates Respondent’s domain name registration and Complainant’s registration of the mark establishes rights in the PROARGI-9 mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <proargi9.com> domain name is confusingly similar to Complainant’s PROARGI-9 mark. Respondent’s disputed domain name contains the dominant features of Complainant’s mark, removing the hyphen separating the term “proargi” and the number “9,” and adding the generic top-level domain (“gTLD”) “.com.” Such distinctions do not distinguish Respondent’s <proargi9.com> domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights in the <proargi9.com> domain name. Under the UDRP, Complainant bares the burden of establishing a prima facie case showing that Respondent lacks such rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case that Respondent has no such rights or interests, the burden shifts to Respondent to show rights to or legitimate interests in the disputed domain name. Under certain circumstances, the mere assertion of a lack of rights and legitimate interests is sufficient to shift the burden from Complainant to Respondent. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); 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 finds that Complainant established a prima facie case here.
Complainant contends that Respondent is using the <proargi9.com> domain name to disparage Complainant and its products. Although Respondent has the right to voice its displeasure with the Complainant’s business practices or products, Respondent does not have the right to use a domain name that is identical to or confusingly similar to an established mark. As a result, the Panel finds that Respondent failed to use the <proargi9.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that Respondent did not make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected).
Furthermore, Respondent did not show that it is commonly known by the <proargi9.com> domain name and the Panel finds that Respondent failed to establish rights or legitimate interests in the <proargi9.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also 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").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith
when registering and using Complainant’s protected mark in a domain name.
Complainant alleges that Respondent is using the <proargi9.com> domain name to operate a complaint
site. The Panel finds that Respondent’s
operation of a complaint site using a domain name featuring a confusingly
similar derivation of Complainant’s established mark supports findings of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that
the respondent registered the domain names <kwasizabantu.com>,
<kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the
respondent published negative comments regarding the complainant’s organization
on the confusingly similar website); see
also Robo Enters., Inc. v.
Tobiason, FA 95857 (Nat. Arb. Forum Dec.
24, 2000) (“Respondent choose the domain name to cause persons seeking
information on ROBO ENTERPRISES to be drawn to Respondent’s website for the
purpose of exposing the user to negative and critical views of Complainant.
Choosing and operating the domain name for such a purpose in this case is bad
faith.”).
Finally, Respondent’s operation of a complaint site using a domain name containing a confusingly similar derivation of Complainant’s proargi9.com> domain name suggests that Respondent knew of Complainant’s rights in the mark the products sold under the mark. Registration of a confusingly similar domain name with knowledge of another’s rights in a mark further show bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual knowledge of a commonly known mark at the time of registration).
The Panel finds that Complainant 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 <proargi9.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2007.
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