Pacificherbal, LLC v. emmerse c/o lazaro remond
Claim Number: FA0902001246873
Complainant is Pacificherbal, LLC (“Complainant”), represented by Patrick
Mastrogiacomo, of Mastrogiacomo PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vicerect.com>, registered with Godaddy.com, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 11, 2009.
On February 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vicerect.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 February 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 2009 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 March 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <vicerect.com> domain name is confusingly similar to Complainant’s VICEREX mark.
2. Respondent does not have any rights or legitimate interests in the <vicerect.com> domain name.
3. Respondent registered and used the <vicerect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pacificherbal, LLC, markets and sells products in the field of dietary supplements under the VICEREX mark. Complainant applied to the United States Patent and Trademark Office (“USPTO”) for a trademark registration for the VICEREX mark on January 20, 2009. Complainant contends that it has used the VICEREX mark continuously in commerce to promote its products since at least as early as March 1, 2005, a date which is also reflected on Complainant’s trademark registration application.
Respondent registered the <vicerect.com> domain name on December 5, 2008. The disputed domain name resolves to a website that resembles Complainant’s website resolving from the <vicerex.com> domain name, incorporates Complainant’s design and logos from the website, and in fact reproduces that website in its entirety.
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 must first establish that it has rights to the
mark included in the disputed domain name.
Under Policy ¶ 4(a)(i) registration of a trademark is not necessary to
establish that Complainant has rights in the mark provided that Complainant can
show common law rights through a showing of sufficient secondary meaning. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name complaint under the Policy); see also
Complainant contends that it has established common law rights in the VICEREX mark through its continuous use of the mark in commerce, since at least as early as 2005, to promote its products. Because of Complainant’s multi-year use of the VICEREX mark to market and sell dietary supplements, the Panel finds that, pursuant to Policy ¶ 4(a)(i), Complainant has indeed established common law rights in the VICEREX mark since at least as early as 2005. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
Complainant contends that Respondent’s <vicerect.com> domain name is confusingly similar to its VICEREX mark. The <vicerect.com> domain name differs from Complainant’s mark only in that the letters “ct” have replaced the letter “x,” and the generic top-level domain (gTLD) “.com” has been added to the mark. Replacing one or more letters in a mark with letters that are phonetically similar, as “ct” and “x” are when they follow the letters “vicere,” does not sufficiently distinguish a mark for the purposes of Policy ¶ 4(a)(i). See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (“The word “quest” and “crest” are similar in sound and are phonetically similar and thus these two words may be considered confusingly similar. Therefore, confusing similarity exists between <mapcrest.com> and Complainant’s MAP QUEST mark.”). Also, under Policy ¶ 4(a)(i), the addition of a gTLD is irrelevant when considering whether a domain name is confusingly similar to a mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that despite these changes, the disputed domain name is nevertheless confusingly similar to Complainant’s VICEREX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <vicerect.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known by the <vicerect.com> domain name nor has it ever been the owner or licensee of the VICEREX mark. The WHOIS record for the disputed domain name lists Respondent as “emmerse c/o lazaro remond.” Because there is no evidence contrary to Complainant’s contentions that Respondent is not known by any variant on the VICEREX mark, the Panel finds that Respondent is not commonly known by the <vicerect.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The <vicerect.com> domain name resolves to a website that
incorporates Complainant’s design and logos used on Complainant’s website that
resolves from its <vicerex.com> domain name. Complainant contends that Respondent is
attempting to pass the website at the <vicerect.com>
domain name off as
Complainant’s own website. Complainant
further alleges that this passing off is not a
bona fide offering of goods or services nor a legitimate noncommercial
or fair use. The Panel agrees, and finds
that Respondent’s use of the disputed domain name is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent
lacked rights and legitimate interests in the disputed domain name when the
respondent copied the complainant’s websites in their entirety at the disputed
domain names); see also Kmart
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s passing off of the website at <vicerect.com> as Complainant’s own website constitutes an intentional disruption of Complainant’s business, because Internet visitors are diverted from Complainant’s online business to Respondent’s. The Panel agrees that Respondent’s reproduction of Complainant’s own website indicates that Respondent is intentionally trying to disrupt Complainant’s business through diversion of Internet users, and that this disruption is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant also contends that Respondent is gaining commercially from the diversion of Internet customers to Respondent’s website that resolves from the <vicerect.com> domain name, through the click-through fees that Respondent is receiving from the third-party websites. The Panel agrees that Respondent is intentionally using the disputed domain name for commercial gain through creating a likelihood of confusion with Complainant’s mark, and so the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s use of the <vicerect.com> domain name for commercial gain is also evidence of Respondent’s registration and use in bad faith. 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 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.’”).
Furthermore, Respondent’s reproduction, on the website resolving from the disputed domain name, of Complainant’s entire website that resolves from the <vicerex.com> domain name, shows the Panel that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <vicerect.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 6, 2009
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