Nutramax Laboratories Inc. v. NutriMax
Claim Number: FA0806001198853
Complainant is Nutramax Laboratories Inc. (“Complainant”), represented by Michael
D. Oliver, of Bowie & Jensen LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nutrimaxusa.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 6, 2008.
On June 4, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <nutrimaxusa.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 1, 2008
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@nutrimaxusa.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <nutrimaxusa.com> domain name is confusingly similar to Complainant’s NUTRAMAX LABORATORIES mark.
2. Respondent does not have any rights or legitimate interests in the <nutrimaxusa.com> domain name.
3. Respondent registered and used the <nutrimaxusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has numerous registrations of the NUTRAMAX LABORATORIES mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,231,260 issued March 16, 1999) for dietary food supplements. Complainant obtained a judgment in the District Court for the District of Maryland against Respondent for trademark infringement on July 17, 2007. The court enjoined Respondent from “advertising, promoting or offering to sell or license any dietary food supplement product in any manner that contains the word ‘NutriMax.’” The court additionally ordered Respondent to “modify all Internet web pages and other electronically-stored information containing the word ‘NutriMax’ to not include the word ‘NutriMax’ or any other word or mark that is confusingly similar in arrangement or sound to the word ‘Nutramax.’”
The <nutrimaxusa.com> domain name was registered on March 25, 2003 and currently resolves to a commercial website displaying the word “NutriMax” and offering a variety of dietary supplements and other related products for sale, all of which are in direct competition with those offered under the NUTRAMAX LABORATORIES 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.
The Panel finds that Complainant has sufficiently
established rights in the NUTRAMAX LABORATORIES mark through registration with
the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive.").
Respondent’s <nutrimaxusa.com> domain name
replaces the first letter “a” in “NUTRAMAX” with the letter “i.” It then omits the word “LABORATORIES” with the
geographic term “
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
Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13,
2001) (finding that even when the respondent does file a response, the
complainant must allege facts, which if true, would establish that the
respondent does not have any rights or legitimate interests in the disputed
domain name). The Panel finds that Complaint has met
this threshold and that the burden is accordingly shifted to Respondent to
demonstrate that is has rights or a legitimate interest in the disputed domain
name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”).
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the <nutrimaxusa.com>
domain name, but will nonetheless examine the record in light of the elements
listed under Policy ¶ 4(c). See Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or
legitimate interests in the domain name because the respondent never submitted
a response or provided the panel with evidence to suggest otherwise); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
The administrative contact listed in the WHOIS information
for the disputed domain name lists “NutriMax
The <nutrimaxusa.com> domain name resolves to a
commercial website offering for sale dietary supplements that are in direct
competition with those offered under Complainant’s mark. The Panel finds this use to constitute
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 Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see also Glaxo
Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain
name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent
used the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <nutrimaxusa.com> domain name is
confusingly similar to Complainant’s mark and offers products in direct
competition with those under the NUTRAMAX LABORATORIES mark. The Panel finds this to establish that
Respondent registered and is using the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii).
See DatingDirect.com Ltd. v. Aston,
FA 593977 (Nat. Arb. Forum Dec. 28, 2005)
(“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business).
Additionally, since the web page that resolves from the disputed domain name purports to offer for sale various dietary supplements in direct competition with Complainant, the Panel presumes that Respondent is commercially benefiting from its operation of the disputed domain name. Consequently, the Panel finds this to be additional evidence that Respondent registered and is using the <nutrimaxusa.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s mark).
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 <nutrimaxusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 21, 2008
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