Purity 12, LLC v. Lucky Supplements LLC
Claim Number: FA0912001296551
Complainant is Purity 12, LLC (“Complainant”), represented by Jeffrey
N. Aldous of Purity 12, LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <purity12trials.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 30, 2009; the National Arbitration Forum received a hard copy of the Complaint December 1, 2009.
On December 1, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <purity12trials.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 24, 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@purity12trials.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <purity12trials.com>, is confusingly similar to Complainant’s PURITY 12 mark.
2. Respondent has no rights to or legitimate interests in the <purity12trials.com> domain name.
3. Respondent registered and used the <purity12trials.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Purity 12, LLC, asserts
rights in its PURITY 12 mark based on its publication in the Official Gazette
on August 25, 2009 under the serial number 77/717,023. The PURITY 12 mark is used in connection with
goods and services, specifically, dietary and nutritional supplements. The Panel finds that Complainant has shown
common law rights in the mark that date back to August 25, 2009.
Respondent, Lucky Supplements
LLC, registered the <purity12trials.com> domain name June 5, 2009. The
disputed domain name resolves to a website that links Internet users to
advertisements for a product in direct 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 does not hold a registration for its PURITY 12 mark. The Panel finds that registration of a mark is not necessary under Policy ¶ 4(a)(i) provided that Complainant can show evidence of common law rights in the mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts rights in its PURITY 12 mark through its holding of serial numbers 77/717,023 and 77/815,828 as its application for registration with the United States Patent and Trademark Office (“USPTO”). Complainant contends its serial number 77/717,023 was published in the Official Gazette August 25, 2009, and that a Notice of Allowance was published November 17, 2009. Complainant contends that it is an internationally known manufacturer of dietary, nutritional and weight loss supplements and has been using the PURITY 12 mark in conjunction with the commercial sales of its products. The Panel finds that Complainant established common law rights in the PURITY 12 mark under Policy ¶ 4(a)(i) dating back to at least August 25, 2009. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues the Respondent’s <purity12trials.com> domain name is confusingly
similar to Complainant’s PURITY 12 mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s PURITY 12 mark because Respondent’s domain
name incorporates the entirety of Complainant’s mark, adds the generic term
“trials,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of the generic
term “trials” creates a confusing similarity between the disputed domain name
and Complainant’s mark. See 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); see also Experian Info. Solutions, Inc. v. Credit
Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain
names incorporating the complainant’s entire EXPERIAN mark and merely adding
the term “credit” were confusingly similar to the complainant’s mark). The Panel also finds that the addition of a
gTLD to a registered mark is irrelevant in distinguishing a disputed domain
name and a mark. See 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); see also Jerry Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has such 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 established a prima facie case in support of its contentions and that Respondent failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
The WHOIS information lists the registrant as “Lucky Supplements LLC.” Respondent is not a licensee of Complainant and is not otherwise authorized to use the PURITY 12 mark. Respondent is not authorized by Complainant to register the domain name nor is Respondent authorized to run active websites incorporating Complainant’s PURITY 12 mark. 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain 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).
Respondent registered the <purity12trials.com>
domain name
June 5, 2009. The disputed domain name
resolves to a website that links Internet users to advertisements for a product
in direct competition with Complainant.
Respondent is using the disputed domain name to confuse consumers and to
attract Internet users to Respondent’s website for Respondent’s financial
gain. The Panel finds that Respondent’s
use of the disputed domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Metro. Life
Ins. Co. v. Bonds,
FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using
a confusingly similar domain name to divert Internet users to competing
websites does not represent 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 Panel finds
that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant provided evidence of its rights in the PURITY 12 mark through a showing of common law rights along with application for registration with the USPTO. The Panel finds that Complainant’s evidence is sufficient to establish rights in the mark dating back to the date of publication in the Official Gazette August 25, 2009. Complainant has not provided any evidence to show that it possessed common law rights or other trademarks prior to this date or that Respondent was aware of Complainant’s interest in the mark. Since Respondent registered the disputed domain name on June 5, 2009, prior to Complainant’s evidence of rights in the mark, the Panel finds that Complainant failed to show that Respondent registered or used the mark in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
The Panel finds that Complainant did NOT satisfy the elements of ICANN Policy ¶ 4(a)(iii).
Having failed to established evidence to satisfy all three of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <purity12trials.com> domain name REMAIN WITH Respondent.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 20, 2010
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