National Arbitration
Forum
DECISION
Universal Protein Supplements Corporation d/b/a
Universal Nutrition v. Dalech, LLC
Claim Number: FA0908001278030
PARTIES
Complainant is Universal
Protein Supplements Corporation d/b/a
Universal Nutrition (“Complainant”), represented by Christopher W. Schneider,
of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutritionsupply.com>,
registered with Tucows Inc.
PANEL
The undersigned
certifies that he or she has acted independently and impartially and to the
best of his or her knowledge has no known conflict in serving as Panelist in
this proceeding.
Robert T. Pfeuffer, Senior District Judge, as Panelist.
PROCEDURAL HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum electronically on August 5, 2009;
the National Arbitration Forum received a hard copy of the Complaint on August
7, 2009.
On August 6, 2009,
Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <universalnutritionsupply.com>
domain name is registered with Tucows Inc. and that the Respondent is the
current registrant of the name. 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 August 12, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 1, 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@universalnutritionsupply.com by e-mail.
A timely Response was received and determined to be complete on August
24, 2009.
On August 27, 2009,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Robert T.
Pfeuffer, Senior District Judge, as Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges as follows:
1. Its holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its UNIVERSAL NUTRITION mark (i.e., Reg. No. 3,020,559 issued September 11, 2007).
2. That it owns trademark registrations with trademark authorities around the world.
3. Respondent’s <universalnutritionsupply.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark.
4. Respondent’s disputed domain name contains Complainant’s mark in its entirety, deletes the space between the terms in the mark, adds the generic “supply,” and adds the top-level domain (“gTLD”) “.com.”
5. Respondent is not commonly known by the <universalnutritionsupply.com> domain name.
6. Respondent is not authorized to use the UNIVERSAL NUTRITION mark.
7. The WHOIS information lists Respondent
as “Dalech, LLC.”
8. Respondent’s <universalnutritionsupply.com> domain name resolves to a website selling Complainant’s products without Complainant’s permission.
9. Respondent is profiting from redirecting Internet users interested in Complainant to Respondent’s competing website featuring Complainant’s goods.
10. Respondent’s use of the domain name is
not a bona fide offering of goods or services under Policy <universalnutritionsupply.com>.
11. That Respondent’s use of the domain names is not a legitimate noncommercial of fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
12. Respondent has offered to sell to Complainant the disputed domain name for the sum of $35,000.00.
13. Respondent’s offer to sell the domain name to Complainant constitutes bad faith registration and use under Policy ¶ 4(b)(i).
14. Respondent’s <universalnutritionsupply.com> domain name resolves to a website selling Complainant’s products without Complainant’s permission.
15. Respondent’s use of the disputed domain name disrupts Complainant’s sports nutrition health products business by redirecting Internet users to Respondent’s website and away from Complainant’s business.
16. Respondent’s profits from the disputed domain name through the sale of Complainant’s products and through the redirection of Internet users interested in Complainant to Respondent’s website.
17. Respondent’s use of the disputed domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark, therefore Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website and disputed domain name.
B. Respondent
Respondent contends that:
1. Complainant has not registered the <universalnutritionsupply.com>
mark that Respondent uses for its
business.
2. Complainant has only registered the
UNIVERSAL NUTRITION mark.
3. Complainant has had the opportunity to
purchase the disputed domain name and by failing to do so waived any rights
that Complainant may have in the disputed domain name.
4. Complainant has not established rights
in the <universalnutritionsupply.com> mark or the disputed domain name.
5. The <universalnutritionsupply.com>
domain name resolves to a website selling vitamins and food supplements
obtained from a distributor.
6. The sale of those products is a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).
7. Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
8. Respondent has not violated any of the other factors listed in Policy &4(b) or engaged in other conduct that would constitute bad faith registration and use pursuant to Policy Policy ¶ 4(a)(iii).
9. Respondent
did not register the <universalnutritionsupply.com> domain name for the purpose of selling it to
Complainant.
10. It decided to offer the disputed domain
name to Complainant only after Complainant approached Respondent and began this
proceeding against Respondent.
11. It simply attempted to recover the cost of purchasing the disputed domain name and the cost of establishing its business under the disputed domain name.
FINDINGS
1.
The disputed
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 to the domain name.
3.
The
domain name was registered and is being used 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.
Identical
and/or Confusingly Similar
The Panel finds Complainant has registered the UNIVERSAL NUTRITION mark with the USPTO and further finds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
The Panel finds that Respondent’s disputed domain name contains Complainant=s mark in its entirety and that the addition of a generic term is (supply) is insufficient to distinguish the disputed domain name from Complainant’s mark. Likewise, the addition of the generic top-level domain “gTLD” “.com” does nothing to distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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).
In support of the Panel’s finding that the deletion of a space and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i), see Gurney’s Inn Resort & Spa Ltd., v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark.
Rights
or Legitimate Interests
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), therefore, the burden has shifted to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
From the evidence submitted by Complainant, the Panel finds that Respondent is not commonly known by the <universalnutritionsupply.com> domain name. Thus the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007)(concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).
It is shown by the evidence that the disputed domain name resolves to a website selling Complainant’s products without Complainant’s permission. Therefore, Respondent is profiting by redirecting Internet users interested in Complainant to Respondent’s competing website featuring Complainant’s goods. Such use of the disputed domain name cannot be said to be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant’s product and under the same name”); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant’s used parts without a license from Complainant to do so.”).
It is undisputed that Respondent offered to sell the disputed domain name to Complainant. However, Respondent alleges that it did not register the name in an effort to sell it to Complainant and that it only attempted to recoup its costs in the purchase of the domain name and business organization expense from Complainant in making such offer. The Panel is not convinced from Complainant’s evidence that the offer to sell the domain name was in bad faith by Respondent. By so finding the Panel does not suggest that these circumstances establish in the Respondent any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Respondent’s <universalnutritionsupply.com> domain name resolves to a website selling Complainant’s products without Complainant’s permission. Although Respondent claims it purchases these goods from a distributor, such use by Respondent may well disrupt sports nutrition health products business by redirecting Internet users to Respondent’s website and away from Complainant’s business. The Panel therefore concludes that such use by Respondent of the disputed domain name disrupts Complainant’s business and that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
By selling Complainant’s products and through the redirection of Internet users interested in Complainant to Respondent’s website, the Panel agrees with the Complainant’s contention that such use by Respondent of a domain name that is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum March 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant’s mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
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 <universalnutritionsupply.com> domain name
be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Senior District Judge,
Panelist
Dated: September 8, 2009
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