VDF FutureCeuticals, Inc. v. Private c/o Michael Anderson
Claim Number: FA0908001278310
Complainant is VDF FutureCeuticals, Inc. (“Complainant”), represented by Sharon
D. Armstrong, of Winthrop & Weinstine, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coffeeberrymask.com>, registered with Namesdirect.
The undersigned certifies that he 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2009.
On August 7, 2009, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <coffeeberrymask.com> domain name is registered with Namesdirect and that Respondent is the current registrant of the name. Namesdirect has verified that Respondent is bound by the Namesdirect 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 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 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 firstname.lastname@example.org by e-mail.
On August 10, 2009, Respondent, having learned of these proceedings, sent an e-mail which the Panel is treating as a Response.
An Additional Submission was received from Complainant on September 14, 2009 that was determined to be timely and complete pursuant to Supplemental Rule 7.
On September 15, 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.
All submissions were considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
VDF is an internationally known biotechnology company.
COFFEEBERRY is the brand name VDF coined to identify its goods that are derived from the whole fruit of the traditional coffee plant.
VDF uses its COFFEEBERRY mark in connection with a variety of goods and licenses the mark.
VDF is the exclusive owner of nine (9) federal trademark registrations for its distinctive COFFEEBERRY mark. VDF filed its first application on October 30, 2003 establishing this date as its nationwide priority date.
Respondent registered the <coffeebeanerymask.com> domain name, which is confusingly similar to the COFFEEBERRY mark, on November 27, 2007, over a year after VDF obtained six (6) federal trademark registrations for its COFFEEBERRY trademark and obtained its constructive first use date for a seventh registration.
The coffee berry is a simple and generic fruit that bears the seeds for the coffee bean. This fruit of the coffee berry has skin rejuvenating properties known all over the world. Respondent hopes to develop or offer a product in the near future for a skin care product derived from the coffee berry fruit. This product would be applied in a clay mask to sit and absorb on the skin.
Respondent has registered over 300 health related domain names to support his health information and products internet business.
The domain <coffeeberrymask.com> in its current published format offering ads and pay-per-click links has currently generated no income. Respondent offered to disable such advertising, and remove the site from SEDO domains until Respondent can offer a product made of the actual coffee berry fruit and develop a professional website for Coffeeberrymask.com.
C. Complainant’s Additional Submission
Respondent’s e-mail correspondence is insufficient to rebut Complainant’s prima facie showing on each of the required UDRP elements.
Respondent has not claimed either that Respondent is commonly known under the <coffeeberrymask.com> domain name or similar mark or that Respondent is using the domain name in a non-commercial or fair use manner.
Respondent’s reservation of the <coffeeberrymask.com> domain name for a future, unplanned use does not constitute either a bona fide current use or demonstrable preparations to make bona fide use of the domain name in the future.
Registration of a domain name by a party without rights to and legitimate interests in the domain name for the purpose of warehousing it for future use constitutes a disruption of the trademark-holder’s business and is evidence of bad faith use and registration of the domain name.
Respondent has registered and is using the <coffeeberrymask.com> domain name to link to third parties selling skin care products competitive with those of Complainant.
Complainant, VDF FutureCeuticals, Inc., manufactures and sells nutritional products around the world. Complainant owns a number of trademark registrations for the COFFEEBERRY mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,163,412 issued October 24, 2006). Complainant uses its COFFEEBERRY mark to identify its goods derived from the fruit of a coffee plant.
Respondent registered the <coffeeberrymask.com> domain name November 27, 2007. Respondent’s disputed domain name resolves to a website displaying third party links offering nutritional and cosmetic products in competition with Complainant.
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."
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 owns a number of trademark registrations for the
COFFEEBERRY mark with the USPTO (i.e. Reg. No. 3,163,412 issued October 24,
2006). The Panel finds that Complainant
has established rights in the COFFEEBERRY mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See
Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum
Dec. 21, 2006) (finding that the Complainant’s federal trademark registration
established its rights in the mark under Policy ¶ 4(a)(i));
Respondent’s <coffeeberrymask.com> domain name is confusingly
similar to Complainant’s COFFEEBERRY mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s mark in its entirety, adds the term “mask,” and adds the generic
top-level domain “.com.” The Panel finds
that the addition of the term “mask” creates a confusing similarity between the
disputed domain name and Complainant’s mark because the term has an obvious
relationship to Complainant’s business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term
“security” to the complainant’s VANCE mark, which described the complainant’s
business, the respondent “very significantly increased” the likelihood of
confusion with the complainant’s mark).
In addition, the Panel finds that the addition of a gTLD is irrelevant
in distinguishing a disputed domain name from a registered mark. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the <coffeeberrymask.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the
arguments made in the Complaint, the Panel finds that Complainant has
established a prima facie case in
support of its contentions. See SEMCO Prods.,
LLC v. dmg world media (
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <coffeeberrymask.com>
domain name, in that the registrant is listed as “Michael Anderson.” Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See 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); see also
Respondent is using the <coffeeberrymask.com> domain name to display links advertising third-party websites that offer nutritional and cosmetic products in competition with Complainant. The Panel finds that Respondent is using the disputed domain name to earn click-through fees, and thus finds that Respondent has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither 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) because the registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <coffeeberrymask.com> domain name to disrupt the business of Complainant by offering links to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
In addition, Respondent is using the <coffeeberrymask.com> domain name to intentionally
divert Internet users to the associated website, which displays third-party
links to competing websites that offer nutritional and cosmetic products. In cases such as this, the Panel assumes that
Respondent is collecting click-through fees and is attempting to profit by
creating a likelihood of confusion between Complainant’s mark and the disputed
domain name. The Panel finds that
Respondent’s use of the disputed domain name is further evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coffeeberrymask.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 29, 2009
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