Salud Natural Entrepreneurs, Inc. v. Golden Omega LLC
Claim Number: FA0711001106474
Complainant is Salud Natural Entrepreneurs, Inc. (“Complainant”), represented by Martin
E. Jerisat,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nopalina.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@nopalina.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <nopalina.com> domain name is identical to Complainant’s NOPALINA mark.
2. Respondent does not have any rights or legitimate interests in the <nopalina.com> domain name.
3. Respondent registered and used the <nopalina.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the registered owner of the NOPALINA mark
with the State of
Respondent’s <nopalina.com> domain name was registered on May 25, 2005 and resolves to a links driven page, where many of the links, if clicked upon, redirect Internet users to various third-party websites, many of which offer products in direct competition with those offered under Complainant’s NOPALINA mark. Additionally, the disputed domain name displays information criticizing the products offered under Complainant’s mark.
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.
Complainant need not have registered its marks with a
governmental authority prior to the registration of the disputed domain name in
order to establish rights in that mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
Since 2002, Complainant has used the NOPALINA mark continuously in connection with the promotion and sale of herbal and dietary supplements. Complainant estimates that it spends an average of $2 million dollars a year advertising and promoting its products through the NOPALINA mark. Currently, Complainant conducts much of its business through the <nopalinausa.com> domain name. Additionally, Complainant has registered the NOPALINA mark with the State of Illinois (Reg. No. 98,167 issued October 5, 2007) and has two pending federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Serial No. 77/196,216 filed June 2, 2007 and Serial No. 77/274,772 filed Sept.. 7, 2007). The Panel finds that Complainant has sufficiently established common law rights in the NOPALINA mark through continuous use and evidence of secondary-meaning pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <nopalina.com> domain name
contains Complainant’s mark in its entirety followed by the generic top-level
domain (“gTLD”) “.com.” It is
well-established that the inclusion of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that the <nopalina.com> domain
name is identical to Complainant’s NOPALINA mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co.
v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See VeriSign Inc. v. VeneSign
No response has been submitted in reply to this Complaint. Consequently, the Panel presumes that
Respondent has no rights or legitimate interests in the disputed domain name
but will nonetheless examine the record in consideration of the factors listed
under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it show that Respondent is or ever was commonly known by the <nopalina.com>
domain name. Absent any evidence to the
contrary, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent’s <nopalina.com> domain name resolves
to a website featuring a series of hyperlinks that redirect Internet users to
various third-parties, many of which offer herbal and dietary supplements that
are in direct competition with those offered under Complainant’s mark. As a result, the Panel finds this to be
neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); 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).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The <nopalina.com> domain name resolves to a
website displaying links to third-parties, many of which are in competition
with Complainant. The Panel finds this
attempt to disrupt Complainant’s business to evidence Respondent’s bad faith
registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Respondent is assumed to be commercially benefiting from the
use of such links, through click-through fees.
Also, since the <nopalina.com> domain name contains
Complainant’s mark in its entirety, it is likely that it creates confusion for
Internet users seeking Complainant’s products.
Therefore, the Panel finds that Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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.’”); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site).
Finally, the disputed domain name resolves to a website
featuring information that criticizes Complainant and its products offered
under the NOPALINA mark. The Panel finds
that such criticism is not on its own evidence of bad faith, but that such use
with a disputed domain name that is identical to the subject mark, along with
using the domain name for commercial benefit, does evidence bad faith. Consequently, the Panel finds this criticism
to be further evidence that Respondent registered and is using the <nopalina.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(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.).
The Panel concludes 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 <nopalina.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 1, 2008
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