National Arbitration Forum

 

DECISION

 

MonaVie, LLC v. John Degen

Claim Number: FA0907001272916

 

PARTIES

Complainant is MonaVie, LLC (“Complainant”), represented by Jacob C. Breim, of Strong & Hanni Law Firm, Utah, USA.  Respondent is John Degen (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <19fruits.com>, registered with Tucows Inc., and <jdwithmonavie.com>, registered with Godaddy.com, Inc.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2009.

 

On July 9, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, and <monovive.com> domain names are registered with Tucows Inc. and that the Respondent is the current registrant of the names.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 July 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jdwithmonavie.com> domain name is registered with Godaddy.com, Inc. and that the 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 the Policy.

 

 

On July 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 11, 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 postmaster@monta-vie.com, postmaster@mono-vie.com, postmaster@montevie.com, postmaster@monavive.com, postmaster@montivie.com, postmaster@montovie.com,  postmaster@monovive.com, postmaster@19fruits.com, and postmaster@jdwithmonavie.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names are confusingly similar to Complainant’s MONA·VIE mark; the disputed <19fruits.com> domain name is identical to Complainant’s 19 FRUITS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, <19fruits.com>, and <jdwithmonavie.com> domain names.

 

3.      Respondent registered and used the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, <19fruits.com>, and <jdwithmonavie.com> domain names in bad faith.

 

B.     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, MonaVie, LLC, produces and markets fruit beverages and gel form beverages under the MONA·VIE mark, which Complainant has registered several times and in various iterations with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,111,333 issued July 4, 2006, filed December 2, 2004).  Complainant’s beverages contain a proprietary blend of 19 fruits.

 

Respondent’s <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, <19fruits.com>, and <jdwithmonavie.com> domain names were registered no earlier than April 29, 2006.  The <monta-vie.com>, <mono-vie.com>, <monavive.com>, <montivie.com> and <montovie.com> domain names resolve to websites that display information about Complainant’s products as well as links to Complainant’s products sold on eBay.  The <monovive.com> and <montevie.com> domain names resolve to an unrelated network marketing company website.  Finally, the <19fruits.com>, and <jdwithmonavie.com> domain names resolve to websites that purport to sell the disputed domain names and promote their utility for advertising on the Internet.

 

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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Complainant contends that: (1) the registrant of each domain name is listed as “John Degen;” and (2) while the contact information for the <jdwithmonavie.com> domain name is different from the other domain names, the resolving website for that domain name mimics that of the <19fruits.com> domain name.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations of various versions of the MONA·VIE mark with the USPTO (i.e. Reg. No. 3,111,333 issued July 4, 2006, filed December 2, 2004) adequately demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i).  Moreover, Complainant’s rights in the mark relate back to the filing date of the mark under Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

The <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names all contain Complainant’s MONA·VIE mark in either correct or misspelled form; omitting the “·” symbol, which is not a permissible character in domain names, and adding the generic top-level domain “.com” and/or generic words or letters such as “jdwith.”  The Panel finds that none of these alterations contain sufficient distinction as to thwart a finding of confusing similarity under Policy ¶ 4(a)(i).  As such, the Panel finds that these disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).

 

With regards to the <19fruits.com> domain name, Complainant has failed to offer any evidence regarding its implied claim to the 19 FRUITS mark.  Since Complainant provides no registration of the mark with a governmental trademark authority, Complainant must assert sufficient secondary meaning in the mark to evidence common law rights under Policy ¶ 4(a)(i).  While Complainant contends that its MONA·VIE products contain a “proprietary blend of 19 fruits,” there is no evidence suggesting that Complainant markets its products under this notation or mark.  More to the point, there is absolutely no evidence before the Panel that would indicate that the consuming public associates the mark with Complainant’s products.  As such, the Panel must find that the alleged 19 FRUITS mark lacks secondary meaning that would justify a determination that Complainant has any common law rights in the mark under Policy ¶ 4(a)(i).  See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning).

 

Because the Panel has found that Complainant does not have rights to the implied 19 FRUITS mark that satisfy Policy ¶ 4(a)(i), the Panel will forego an analysis under both Policy ¶¶ 4(a)(ii) and (iii) with respect to the <19fruits.com> domain name.  See Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element); see also CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that, although the the respondent’s domain name <cyberimprints.com> was identical to the complainant’s incorporated business name, the complainant did not claim to hold any trademark or service mark rights in CYBERIMPRINTS or CYBERIMPRINTS.COM, and therefore, its request for transfer was denied).

 

While Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the <19fruits.com> domain name, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) with respect to the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names.

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names.  Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests.  The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c).  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).”); 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).

 

There is no evidence in the record, including the WHOIS information, by which the Panel could conclude that Respondent is commonly known by the disputed <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names.  The WHOIS information lists Respondent as “John Degen,” and Complainant has asserted that Respondent is not authorized to use Complainant’s mark.  The Panel therefore finds that Respondent has failed to meet Policy ¶ 4(c)(ii), in that Respondent is not commonly known by these disputed domain names.  See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

The <monta-vie.com>, <mono-vie.com>, <monavive.com>, <montivie.com> and <montovie.com> domain names resolve to websites that display information about Complainant’s products as well as links to Complainant’s products sold on eBay.  The Panel presumes that Respondent intended to commercially benefit through referral links to the eBay product listings.  The Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also 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)).

 

The <monovive.com> and <montevie.com> domain names resolve to an unrelated network marketing company website.  The Panel similarly presumes that Respondent commercially gains from referring Internet users to this website.  The Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Vance, supra, see also Disney Enters., supra.

 

Finally, the <jdwithmonavie.com> domain name resolves to a website that purports to sell the disputed domain name and promotes its utility for advertising on the Internet.  Offering a disputed domain name for sale to the public violates Policy ¶ 4(a)(ii) when the registrant seeks an amount in excess of the registration costs.  Respondent clearly promotes the disputed domain name on the resolving website in the context of high-value and high-cost domain names.  The Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

Finally, the Panel notes that Respondent has engaged in typosquatting with respect to the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, and <monovive.com> domain names, as Respondent has solely used misspelled versions of Complainant’s mark in these disputed domain names.  Such an activity is clear evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent clearly intended to sell the <jdwithmonavie.com> domain name at the time of its registration and at subsequent points, given the promotion of the disputed domain name for sale on the resolving website.  As such, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(i) with respect to this domain name.  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).

 

The Panel also finds that Respondent is commercially gaining from the referral and redirection of Internet users to either unrelated websites or websites that promote Complainant’s products via links on eBay through the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, and <monovive.com> domain names.  Since Respondent has created a likelihood of confusion for commercial gain as to Complainant’s affiliation with these disputed domain names and resolving websites, the Panel finds that Respondent has registered and continues to use these disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

Finally, the Panel notes Respondent’s engagement in typosquatting with respect to the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, and <monovive.com> domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names. 

 

Accordingly, it is Ordered that the <monta-vie.com>, <mono-vie.com>, <montevie.com>, <monavive.com>, <montivie.com>, <montovie.com>, <monovive.com>, and <jdwithmonavie.com> domain names be TRANSFERRED from Respondent to Complainant. 

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED as to the <19fruits.com> domain name.

 

Accordingly, it is Ordered that the <19fruits.com> domain name REMAIN with Respondent.

 

 

 

 

Honorable Karl V. Fink (Ret.), Panelist
Dated: September 2, 2009

 

 

 

 

 

 

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