MonaVie, LLC v. John Degen
Claim Number: FA0907001272916
PARTIES
Complainant is MonaVie, LLC (“Complainant”), represented by Jacob C. Breim, of Strong & Hanni Law Firm,
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.
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
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.
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.
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
The Panel finds that Complainant has
satisfied Policy ¶ 4(a)(ii).
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
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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