Houston Nutraceuticals, Inc.
v.
Claim Number: FA0807001213445
PARTIES
Complainant is Houston Nutraceuticals, Inc. (“Complainant”), represented by Meredith K. Lowry, of Keisling Pieper & Scott PLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houstonenzymes.com>, registered with
Compana,
LLC.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 1, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 7, 2008.
On July 2, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <houstonenzymes.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
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 July 14, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 4, 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@houstonenzymes.com by e-mail.
A timely Response was received and determined to be complete on August 4, 2008.
Complainant submitted a timely Additional Submission on August 8, 2008,
which was determined to be complete pursuant to Supplemental Rule 7.
Respondent submitted a timely Additional Submission on August 12, 2008,
which was determined to be complete pursuant to Supplemental Rule 7.
On August 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
Complainant is a dietary supplement supplier specializing in enzyme formulations marketed under the trademarks HOUSTON NUTRACEUTICALS, HNI ENZYMES, and HOUSTON ENZYMES. Complainant purchased the domain name <houstonni.com> in November of 2000 and began selling its enzyme formulations through the Internet in or around early 2001. Complainant owns the marks HOUSTON NUTRACEUTICALS and HNI ENZYMES. Complainant has continuously used HOUSTON NUTRACEUTICALS in conjunction with dietary supplements since the inception of the company in 2001 and continuously used HNI ENZYMES in conjunction with dietary supplements since 2003.
Complainant has applied to register the mark HOUSTON ENZYMES with the United States Patent and Trademark Office and is awaiting allowance of that registration. Complainant has invested a substantial amount of money, time, and resources promoting its trademarks, and the public has come to recognize Complainant’s marks and their indicia of origin, indicating that Complainant is the provider of the goods.
Complainant contends that its
sales, advertising, and overall commercial use establishes sufficient common
law rights in the HOUSTON NUTRACEUTICALS, HNI ENZYMES and HOUSTON ENZYMES marks.
Complainant contends that the
domain name <houstonenzymes.com>
is confusingly similar to Complainant’s common law trademarks HOUSTON
NUTRACEUTICALS and HNI ENZYMES.
Respondent’s domain name registration <houstonenyzmes.com> combines Complainant’s mark HOUSTON
NUTRACEUTICALS, in combination with the generic word “enzymes.” The distinctive and most defining element of
Complainant’s trademark HOUSTON NUTRACEUTICALS is the first term “
As a result Complainant contends
that Respondent’s domain name is confusingly similar to the trademarks owned by
Complainant.
Further Respondent’s website <houstonenzymes.com> is used to redirect Internet users to a website featuring links to a wide variety of third-party services and products unrelated to Complainant. Respondent’s use of a domain name that is identical to Complainant’s mark to divert Internet users to a website that links to third-party websites, and for which Respondent presumably receives click-through fees, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i); nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Moreover, Respondent is not commonly known by the <houstonenzymes.com> domain name. Thus, Respondent has no established rights or legitimate interests in the <houstonenzymes.com> domain name pursuant to Policy ¶ 4(c)(ii). As a result Complainant contends that Respondent does not have rights or legitimate interests in the domain name at issue.
Finally Complainant contends that Respondent has a pattern of illegitimate cybersquatting and typosquatting. Respondent has admitted in other UDRP proceedings that it has been a party to a number of decisions resulting in transfer, which has been recognized as a track record establishing bad faith.
The website which resolves from Respondent’s disputed domain name displays links to third-parties’ websites which offer goods and services that compete with Complainant’s business. Respondent’s use of the disputed domain name constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent is using the confusingly similar <houstonenzymes.com> domain name to link to third-party websites which offer competing goods and services. Respondent presumably profits from this use through its contract with the “Hitfarm” target advertising business. This is an attempt by Respondent to profit from the goodwill associated with Complainant’s marks. Respondent’s actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). As a result Complainant requests that the Panel conclude that Respondent has registered and used the domain name at issue in bad faith.
Respondent contends that contrary to the assertions made in the Complaint, the disputed domain name is not identical or confusingly similar to any purported mark Complainant may have. Complainant provides nothing more than lip service to this element of the Policy. At first, Complainant claims that it has common law trademarks for HOUSTON NUTRACEUTICALS, HNI ENZYMES, and HOUSTON ENZYMES and that the disputed domain is confusing similar. Complainant attaches a total of three (3) pages to establish its common law mark. A quick glance at the three pages shows the names HOUSTON NUTRACEUTICALS and HNI ENZYMES but no mention of the purported HOUSTON ENZYMES mark.
More telling than this, however, is that on April 15, 2006, Complainant filed an “intent to use application” with the United States Patent and Trademark Office (“USPTO”). While the applicant was an individual named Devin Houston (the same name as the individual who signed the verification on page 6 of the Complaint), the address is exactly the same as Complainant’s address now. An “intent to use” application is an admission that Complainant was not using the mark in commerce prior to that date and that the mark will be used at some point in the future. 15 U.S.C. §1051(b) (“A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.”). Thus on April 15, 2006 Complainant, by its own application to the USPTO, admitted that it was not using HOUSTON ENZYMES in commerce. Exhibit B shows the timeline which notes that Complainant was granted an extension to file its statement of use and that the application is now abandoned since the statement was never filed.
Thus Complainant has no evidence to show any type of common law mark in “Houston Enzymes” as the above and Exhibit B to the Complaint make clear. Turning to the purported marks HOUSTON NUTRACEUTICALS and HNI ENZYMES, Complainant must provide evidence that it has common law trademark rights in order to prevail under this element of the Policy -- as prior panels have recognized “common law” trademark rights as appropriate for protection under the Policy only if the complainant can establish that it has done business using the name in question in a sufficient manner to cause a secondary meaning identifiable to Complainant’s goods or services.
Respondent further contends:
In Keppel
TatLee Bank Limited v.
A survey carried out by Euromoney in June 2000 showed that
the Complainant was the 5th largest bank in
As stated in Popular Enterprises, LLC v. American Consumers First et al.,
D2003-0742 (WIPO Nov. 30, 2003) “the Sole Panelist considers the pending
application, together with the extent of prior use and amount of investment by
Complainant in the Mark and corresponding website, as sufficient for purposes
of this proceeding to establish enforceable common law service mark
rights.” A Panel faced with a similar
situation cited from a prior decision, Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003), for the
proposition that “prior UDRP precedent did not support a finding of common law
rights in a mark in lieu of any supporting evidence, statements or proof (e.g.,
business sales figures, revenues, advertising expenditures, number of consumers
served, trademark applications or intent-to-use applications).” See Wigwam Mills, Inc. v.
Here, however, Complainant has made no such showing nor has it offered proof to show how it has come by the mark it is claiming. Unlike the evidence of the nature submitted by Complainant in Kessel to establish its common law mark, Complainant in this dispute has the aforementioned Exhibit B. Exhibit C to the Complaint is four (4) e-mails received by Devin Houston and are of no merit. Even if they were evidence, they would show that four people contacted the company, hardly the type of evidence the Keppel and Wigwam panels discussed.”
The second element Complainant must prove is that Respondent has no rights or legitimate interest in the name. According to Respondent Complainant fails here as well and states:
In a recent three Panel decision, the Panel discussed
whether click-through sites are a bona fide offering of goods and services, the
same argument made here in the negative by Complainant. In Super
Supplements, Inc. v. Vertical Axis, Inc., D2008-0244 (WIPO May 13, 2008),
the Panel noted that many “panels have found that the provision of such
click-through services do constitute a bona fide offering of the service unless
the bona fides of the offering is tainted by evidence of bad faith” and went on
to note “In the opinion of the majority of the Panel such services are now a common
business practice and there is no evidence of bad faith in Respondent’s
adoption and use of the disputed domain name in providing such a service.” As will be discussed more fully below, there
is no bad faith registration to be found.
The Super Panel was also critical of a prior decision (The Evening Store.com, Inc. v. Chan, D2004-0305
WIPO June 26, 2004) in noting that the Panel in that case did not take into
account that “the words concerned were in any way descriptive or generic.” As discussed above and will be discussed more
fully below, the disputed domain is a combination of the city (or surname) “
Respondent contracts with Hitfarm which connects its own websites to the domain name to offer a legitimate business of targeted advertising searches that are legal everywhere in the world and are actually undertaken in connection with industry leaders Google and Yahoo. Second, the links in question are provided pursuant to Yahoo or Google’s terms and are triggered by search requests entered by computer users. There is no intent to target Complainant, but to provide advertising for users seeking enzymes, vitamins, and the like as a glimpse of the disputed domain will show. Respondent has no control over what terms advertisers bid on at Google or Yahoo and what terms appear on its website. In any event, even if Complainant’s claims were true – which they are not – panels have recognized that the domain name holder is not responsible for the potentially offending contend where they have contracts with third parties, such as Google or Yahoo, that control that content. Admiral Ins. Servs. v. Dicker, D2005-0241 (WIPO June 4, 2005) (“the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”); Experimental Aircraft Association (EAA) v. EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003) (“brief appearance of aviation links on respondent’s websites was automatically provided by a pay-per-click search engine provider…”). In this case, Hitfarm provides an e-mail link so that third parties can complain about advertising on the websites and Hitfarm has universally removed such allegedly offending posts upon notice. Complainant has never made a complaint about the content of the disputed domain to Hitfarm. This is evidence that Complainant simply wants to hijack Respondent’s domain which has been in operation for over three (3) years prior to any comment by Complainant.
Complainant cites no authority or rationale to justify this parasitic interference in the free exchange of information and opportunity and ICANN panels repeatedly recognize that such limitations are unnecessary. Respondent may fairly use descriptive or generic terms as a commercial domain name, or typos of such terms, regardless of whether they are federally-registered. Indeed, common words and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis.” The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.”
Accordingly, Respondent contends that it has legitimate interests in the domain names and Complainant has failed to meet its burden under Paragraph 4(a)(ii) of ICANN Policy.
Respondent had no knowledge of Complainant at that time. The Complaint notes that bad faith registration can be inferred. The Policy requires proof, not assertions. Absent such knowledge, there can be no bad faith registration – As one panel asked, “If the registrant is unaware of the existence of the trade mark owner, how can he sensibly be regarded as having any bad faith intentions directed at the complainant?”
In a
previous decision in favor of Respondent, the panel noted “However, Complainant
has provided no evidence that it had acquired, through use, common law rights
in its trademarks prior to the registration by Respondent of the
<wildingwallbeds.com> domain name in 2005. This makes it difficult, to
put it mildly, to show that Respondent was then aware of Complainant or of its
marks.” [Wall Beds By
Wilding, LLC v.
The Wilding panel went on to note “This Panel is not prepared to make a finding of bad faith registration based upon Paragraph 4(b)(iv) of the Policy in circumstances in which Complainant’s trademark rights are not shown to have existed at the time of the registration of the domain name.”
Respondent registered the disputed domain name because it believed it contained a descriptive term to which no party had exclusive rights. A search of the USPTO would have revealed no federal registrations for “Houston Nutraceuticals,” “HNI Enzymes,” or “Houston Enzymes.”
Respondent contends that pay-per-click websites are not in and of themselves unlawful or illegitimate” and that Complainant “has provided little evidence that Respondent selected the disputed domain name for a free ride upon Complainant’s mark.”
Further Complainant has made no showing that consumers and Internet users have been or are likely to be confused or to associate Respondent’s services with Complainant’s.” Nor has there been such a showing here other than mere unsubstantiated allegations.
Respondent contends that pay-per-click revenue does “not constitute evidence of bad faith registration or use.”
According to Respondent, Complainant must proffer evidence that demonstrates that Respondent has specifically intended to confuse consumers seeking out Complainant. There is no such proof here.
In this case, Respondent had no actual knowledge of Complainant’s business and panels have recognized that mere registration without actual knowledge does not impute a finding of bad faith.
Complainant argues that Respondent has been involved
in a number of UDRP decisions in the past.
While it is true that there have been a number of decisions resulting in
transfers, a substantial number of those were where Respondent consented to the
transfer and did not argue the point. A
great majority of the panels in those consent decisions did not do any
traditional analysis thus there were no findings of any kind, much less bad
faith so to categorize them as “against the Respondent” is misleading. In addition, Respondent has prevailed in
seven decisions and prevailed on one domain in a four-domain decision and on
one domain in a two-domain decision.
These are curiously absent from the Complaint. Nor did Complainant note that Respondent has
prevailed in a jury trial after a previous WIPO Panel ordered transfer (Southern Co. v. Tex. Int’l Prop. Assocs.,
D2007-0773 (WIPO Aug. 24, 2007) and has reached a settlement on a number of
lawsuits brought challenging UDRP decisions such as Fifth Third Bancorp v. Tex. Int’l Prop. Assocs., D2007-0537 (WIPO June 29, 2007). Merely comparing the number of complaints
without considering the broader context is misleading. Such a facile comparison
here would be similar to saying that because Mercedes Benz was named in more
Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words, such as <coolwritings.com>, <topairguns.com>, <southeasternstates.com>, <indianloves.com>, <dailychampion.com>, <mastermasonstore.com>, <actionwar.com>, <actualplayer.com>, <alabamafever.com>, <arenafighter.com>, <asian4ever.com>, <statedictionary.com>, <adivastar.com>, <atruckdriver.com>, <gangbrother.com>, <girlreporter.com>, <gulfwarrior.com>, <militarytheater.com>, <mississippideer.com>, <monsterterror.com>, <mypolicescanner.com>, <sanantoniofunplaces.com>, <scaryhappenings.com>, <schoolsindallas.com>, <schoolstudyguides.com>, <scrapbookslayouts.com>, <seagulftour.com>, and <juicymiami.com> in English, <aeropuertosdelmundo.com>, <espanol2.com> <elmejorculo.com>, and <puertoricorecetas.com> in Spanish, typos of such generic terms as <bankratae.com>, <seatbeltsaftey.com>, <violns.com>, <skateboadingtips.com>, <topdownlod.com>, <sanfransicoclubs.com>, and <georgeousredhead.com> as well as proper names such as <georgeiscool.com>, <adriansucks.com>, <nataliesucks.com>, and <joe4real.com>. Registering such terms to which no other party can claim exclusive use is a legitimate business and done in good faith. The disputed domain in this proceeding is no different from the domains listed above and was registered for the same kind of non-infringing generic and/or descriptive use. Respondent did not register the disputed domain name to sell to Complainant or any other party nor has there been any such allegation by Complainant.
In its Additional Submission dated August 8, 2008 Complainant contends that it may establish common law rights in a mark to receive protection under the UDRP through evidence of secondary meaning. Respondent argues that Complainant has not shown sufficient evidence of secondary meaning. However, previous panels have demonstrated that common law rights are determined on an individual basis under the circumstances of each case and that there is no formal threshold on the amount of evidence that is required to establish such rights. The fact that the secondary meaning may only exist in a small area does not limit Complainant's rights in a common law trademark. Common law trademark mark rights have been found when a party proves that there is enough goodwill and reputation in a name and sufficient association of the name with the party itself. Usage of a mark in trade can give rise to a common law trademark even where the volume of trade is very small and geographically limited.
The consensus analysis to determine whether secondary meaning has been obtained is to examine such factors as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition pertaining to the service mark in question. The amount and manner of advertising along with the length and manner of use are integral factors in evaluating whether a mark has achieved secondary meaning. While sales volume is also useful, the lack of specific sales data is not fatal to a claim of secondary meaning, nor is the lack of survey evidence.
Complainant’s sales, advertising, and overall commercial use establishes sufficient common law rights in the HOUSTON NUTRACEUTICALS, HNI ENZYMES and HOUSTON ENZYMES marks. In support of this, Complainant has supplied, as Exhibit A hereto, an affidavit of an officer of Complainant, Devin B. Houston, addressing the monetary expenditures made towards advertising by Complainant since the inception of the company in 2001. As a result, customers have come to recognize the marks HOUSTON NUTRACEUTICALS, HNI ENZYMES and HOUSTON ENZYMES with Complainant. Evidence of customer association of a mark is a hallmark characteristic of secondary meaning. As evidence of customer association, Complainant previously provided four examples of e-mails in which customers used the term HOUSTON ENZYMES to apply to Complainant’s products. In further support, Complainant hereby supplies Exhibit B, affidavits from customers contacting the company to inquire about HOUSTON ENZYMES.
Respondent’s efforts to characterize Complainant’s HOUSTON ENZYMES mark as generic words and/or common surnames are unpersuasive. Respondent’s argument is in contravention of the general trademark principle of anti-dissection, which frowns upon attempts to dispute trademark protection by selectively breaking a mark into fragments as opposed to evaluating it as a whole. Further, Respondent fails to explain why it felt the need to combine the allegedly generic, descriptive fragments in the manner that it did in order to come up with the disputed domain names.
Respondent attempts to diminish the use by Complainant of the mark HOUSTON ENZYMES by providing documentation from the United States Patent and Trademark Office (“USPTO”) showing that Complainant’s officer previously filed an intent-to-use application for the mark HOUSTON ENZYMES and then abandoned the application. Filing of an intent-to-use application is not evidence of non-use, nor is the failure to file documentation with the USPTO. Indeed, the Trademark Manual of Examining Procedure makes repeated reference to instances in which intent-to-use applications are filed though the mark is in use.
Therefore, Complainant requests that the Panel conclude that Respondent’s domain name is confusingly similar to the trademarks owned by Complainant.
Complainant contends that Respondent is using the disputed domain name to generate click-through fees for its own commercial benefit by displaying a website that hosts hyperlinks for various third-party websites, some of which are in direct competition with Complainant. This use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate or noncommercial fair use under Policy ¶ 4(c)(iii).
Respondent denies prior knowledge of Complainant's marks, but it offers no alternative explanation as to why it chose to register a quite similar domain name. The terms included in the domain name are not common associated words. Respondent has not mentioned any other firm or product or place named “Houston Vitamins,” for example. Nor has it demonstrated that this combination of terms creates a generic term representing, for example, a class or type of goods, services, processes, or activities. Respondent had opportunities to explain its choice of domain name, and it has not done so.
Although Respondent has argued that it lacks control over the advertisements that appear on the website that resolves from the disputed domain name, panels have found this argument without merit because Respondent is ultimately responsible for what appears on its website.
Therefore, Complainant requests that the Panel conclude that Respondent does not have rights or legitimate interests in the domain name at issue.
Complainant alleges that Respondent is using the domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. The evidence before the Panel supports that claim. ICANN Policy does not require proof of registration in bad faith. Instead, a panel must make a decision based on the civil standard of the balance of probabilities, taking into account all the evidence.
To date, Respondent has been named in approximately 100 actions before World Intellectual Property Organization and the National Arbitration Forum. In most of these cases transfers have been ordered, with multiple findings that Respondent acted in bad faith in registering and using domain names that were identical or confusingly similar to third-party trademarks. ). Complainant has provided a list, attached as Exhibit C detailing the proceedings in which Respondent has lost its rights to disputed domain names, including more than 40 last year. Respondent’s registration of others’ marks as domain names can be deemed registration and use in bad faith under Section 4(b)(ii) of the Policy.
Respondent’s
combination of the name “
Even if Respondent did not have actual knowledge of Complainant's trademark rights, there is a "growing consensus" among UDRP panels that registrants of large numbers of domain names for use with pay-per-click advertising sites have an affirmative obligation to make "reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others." A party who knows, or should know by virtue of the results of a simple web search, of the pre-existing mark of another indicates bad faith when that party registers an identical or confusingly similar domain name. If Respondent did an Internet search prior to registration of the <houstonenzymes.com> domain name Respondent would have been aware of Complainant’s assertion of its rights in the marks HNI ENZYMES, HOUSTON NUTRACEUTICALS, and HOUSTON ENZYMES based on Complainant’s extensive use and marketing of its business on the internet from its website, <houstonni.com> and elsewhere. There is no evidence that Respondent made any effort to determine whether its registration of the domain name violated the trademark rights of others.
Therefore, Complainant requests that the Panel
conclude that Respondent has registered and used the domain name at issue in
bad faith.
With its Additional Submission dated August 12, 2008 Respondent stated in response to Complanaint’s Additional Submission the following:
Complainant provides as Exhibit A an affidavit from a corporate officer
with contradictory statements in an attempt to establish common law
rights. In paragraph 3 there is the
simple statement that “HNI has marketed its enzymes under the trademarks HOUSTON
NUTRACEUTICALS and HNI ENZYMES.” Three
paragraphs later, in paragraph 6, this same individual notes that $368,000 has
been invested in marketing HOUSTON NUTRACEUTICALS, HNI ENZYMES, and HOUSTON
ENZYMES. There is no breakdown of this
figure and, as noted in the Response, the exhibits to the Complaint do not
display any advertisements for the purported HOUSTON ENZYMES mark rather only
HOUSTON NUTRACEUTICALS and HNI ENZYMES.
These two paragraphs in the Exhibit A cannot coexist. Either Complainant has marketed under
Complainant provides no additional information or argument worth
responding to and, as such, Respondent will not reargue its Response.
Complainant provides little in the way of new argument here but there
are two points worth responding to.
First, Complainant notes that the Policy does not require proof of bad
faith registration. To the contrary,
“The necessity of proving bad faith registration and use is a key component of
the Policy.” Starwood Hotels & Resorts Worldwide, Inc.
v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9,
2005). “Complainant failed to meet the
burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).” Kay Hill, Ltd. v.
The second item worth
responding to involves the prior UDRP proceedings concerning Respondent. Complainant attached a chart gleaned, it seems, from the tools available at both the
Forum and WIPO. Attached
as Exhibit A is a chart of decisions from the Forum concerning Respondent which
provides a little more detail concerning those decisions. Of the 88 decisions, Respondent consented to
the transfer in 37 of them and made no responsive arguments. Of those 37, the Panels made no findings of
any kind in 33 of the decisions thus they cannot be categorized as negative in
any way. Sadly the interface the Forum
maintains only reflects the outcome and none of the reasoning. Thus a lazy user of the search function who
does not actually read the reported decisions could draw the conclusion that
“transfer” automatically equates to “bad faith” which is clearly not the
case. Respondent has prevailed on a
number of decisions as well, the last just this past month. While Respondent has been on the losing end
of a number as well, the overall picture is much more nuanced than Complainant
has portrayed it.
FINDINGS
The Panel finds that:
1.
the Domain Name <houstonenzymes.com>
is confusingly similar to Complainant’s
marks.
2.
Respondent
has not established any right or legitimate interest in the Domain Name <houstonenzymes.com>
and
3. Respondent has registered and is using the Domain Name <houstonenzymes.com>
in bad faith.
DISCUSSION
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.
Complainant asserts rights to the HOUSTON NUTRACEUTICALS, HNI ENZYMES, and HOUSTON ENZYMES marks. Complainant has applied for a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HOUSTON ENZYMES mark, but the application is still pending, and Complainant did not allege any other trademark applications or registrations with respect to either of the HOUSTON NUTRACEUTICALS or HNI ENZYMES marks. Nevertheless, the Panel finds that a trademark registration is not necessary to establish rights pursuant to Policy ¶ 4(a)(i). Instead, Complainant has the burden of proving that its mark or marks have acquired sufficient secondary meaning to establish common law rights pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Hiatt v. Pers. Fan & Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant claims common law
rights in all three of its alleged marks.
Complainant asserts it has continuously used the HOUSTON NUTRACEUTICALS
mark in conjunction with dietary supplements since 2001, and continuously used
the HNI ENZYMES mark in conjunction with dietary supplements since 2003. Complainant does not cite a first date of use
for the HOUSTON ENZYMES mark, but states that it applied to register the mark
with the USPTO. Complainant claims that
it “has invested a substantial amount of money, time, and resources promoting
its trademarks, and the public has come to recognize Complainant’s marks and
their indicia of origin, indicating that Complainant is the provider of the
goods.” As supporting evidence of these
contentions, Complainant provides advertisements and e-mails from its consumers. Complainant also provides as Exhibit A to its
Additional Submission an affidavit from an officer of Complainant testifying to
the amount of monetary expenditures made towards advertising by
Complainant. Complainant also argues in
its Additional Submission that there is no formal threshold on the amount of
evidence required in order to establish common law rights, and that its marks
have acquired secondary meaning in a small area, which is sufficient to satisfy
the requirements of the Policy. Since
the Panel finds sufficient evidence of secondary meaning associated with any or
all of the HOUSTON NUTRACEUTICALS, HNI ENZYMES, and HOUSTON ENZYMES marks, the
Panel concludes that Complainant has common law rights in the marks pursuant to
Policy ¶ 4(a)(i).
See Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the
complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local
consumers sufficient to establish common law rights where the complainant had
been continuously and extensively promoting a real estate development under the
mark for several years); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding
that the complainant could establish common law rights in its GW BAKERIES mark
through consistent and continuous use of the mark, which helped the mark become
distinctive and generate “significant goodwill”).
Complainant
argues that the <houstonenzymes.com>
domain name is confusingly similar to its HOUSTON NUTRACEUTICALS and HNI
ENZYMES marks. Complainant claims that
the dominant portion of the disputed domain name is “
The Panel finds that Complainant
has established sufficient common law rights in the HOUSTON ENZYMES mark. As a result the Panel finds that the disputed
domain name is identical to this mark pursuant to Policy ¶ 4(a)(i). See Bond
& Co. Jewelers, Inc. v.
Complainant must show that Respondent has no rights or legitimate
interests in respect of the disputed domain name. Respondent does not assume
the burden of proof, but may establish a right or legitimate interest in a
disputed domain name by demonstrating in accordance with paragraph 4(c) of the
Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona
fide offering of goods or services prior to the dispute;
(b) He is commonly known
by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Soussi, D2000-0252 WIPO July 5, 2000); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also 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.”); see also 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).
Complainant alleges that Respondent is not commonly known by the <houstonenzymes.com> domain name. The Panel notes that the WHOIS information identifies Respondent as “Texas International Property Associates – NA NA.” Thus, the Panel agrees with Complainant and finds accordingly pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Both parties agree that Respondent is using the <houstonenzymes.com> domain name to display a list of hyperlinks for third-party products and services both related and unrelated to Complainant’s business, and that Respondent receives click-through fees for each redirected Internet user. Respondent profits from this venture through “Hitfarm,” an online advertising business. The Panel finds that Respondent’s use of the <houstonenzymes.com> domain name constitutes 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. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 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).
Respondent argues that the
advertisements posted on the website resolving from the <houstonenzymes.com> domain name are placed there by Hitfarm and not
Respondent. Nevertheless, as Complainant
argues in its Additional Submission, the Panel holds Respondent responsible for
the content posted to its resolving website.
See Netbooks, Inc.
v. Lionheat Publ’g, FA 1069901 (Nat.
Arb. Forum Oct. 18, 2007) (“The Panel also notes that
Respondent is responsible for the content of any website using the domain name
at issue, and cannot pass that responsibility off to its registrar or domain
name service provider.”); see also
StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007)
(“Respondent has alleged that the registrar, GoDaddy, has posted these links
for the website associated with the Domain Name. However, the Panel finds this is no excuse
and holds Respondent accountable for the content posted to the site that
resolves from the Domain Name.”).
Complainant notes that
Respondent has been the respondent in numerous other UDRP proceedings in which the
disputed domain name was transferred from Respondent to the respective
complainants in those cases. Complainant
provides an extensive list of such cases in Exhibit C attached to its
Additional Submission. See, e.g., ZRT Lab., LLC v.
Complainant contends that the
competing links posted to the website resolving from the <houstonenzymes.com> domain name are likely to disrupt Complainant’s
business by diverting customers to the websites of Complainant’s
competitors. The Panel accordingly finds
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb.
13, 2007) (finding that the respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name
resolved to a website that displayed commercial links to the websites of the
complainant’s competitors); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed
domain name to operate a commercial search engine with links to the
complainant’s competitors).
According to Complainant, Respondent is using a confusingly similar domain name to profit off the goodwill associated with Complainant’s marks. The Panel determines that Respondent is accomplishing this by creating a likelihood of confusion strictly for Respondent’s own commercially gain. Thus, the Panel is of the view that Respondent registered and is using the <houstonenzymes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
As discussed above, the Panel holds Respondent responsible for the links posted to the website resolving from the <houstonenzymes.com> domain name, and consequently makes a finding of bad faith pursuant to the factors within Policy ¶ 4(b), and ¶ 4(a) generally. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately Respondent who is responsible for how its domain name is used.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008) (finding bad faith registration and use because “the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the Respondent is also responsible for the sponsored links currently appearing on the website.”).
Complainant argues in its
Additional Submission that Respondent must have been aware “on some level” of
Complainant and its business at the time Respondent registered the disputed
domain name. The Panel also finds
sufficient evidence to this effect, in order to make a finding of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <houstonenzymes.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: August 27, 2008
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