General Nutrition Investment Company v. Helio Alves
Claim Number: FA1006001330413
Complainant is General
Nutrition Investment Company (“Complainant”), represented by Jacob H. Rooksby, of McGuire Woods LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gncbrasil.com>, registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2010.
On June 17, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <gncbrasil.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gncbrasil.com by e-mail. Also on June 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <gncbrasil.com> domain name is confusingly similar to Complainant’s GNC mark.
2. Respondent does not have any rights or legitimate interests in the <gncbrasil.com> domain name.
3. Respondent registered and used the <gncbrasil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, General Nutrition Investment Company, operates retail nutrition, health, and fitness stores. Complainant owns and operates these stores under its GNC mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GNC mark (e.g., Reg. 2,180,647 issued August 11, 1998).
Respondent, Helio Alves, registered the <gncbrasil.com> domain name on September 15, 2008. The disputed domain name formerly resolved to Respondent’s website, located at the <americavitaminas.com> domain name, which advertises vitamins and nutritional supplements that compete with Complainant’s products. Currently, the disputed domain name resolves to a separate website that contains identical advertisements for vitamins and nutritional supplements that compete with Complainant’s products.
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."
In view of 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 draw such inferences it 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 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.
Previous panels have concluded that a complainant may
establish rights in a mark through a federal trademark registration and that a
complainant’s trademark registration is not required to be in the country of a
respondent’s principal place of business.
Past panels have further determined that a domain name is confusingly similar to a complainant’s mark if it contains complainant’s mark in its entirety and combines the mark with a geographical term and a generic top-level domain (“gTLD”). See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); 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). Respondent’s <gncbrasil.com> domain name contains Complainant’s entire GNC mark and simply adds the misspelled geographical term “brasil” and the gTLD “.com.” Thus, the Panel finds that Respondent’s <gncbrasil.com> domain name is confusingly similar to Complainant’s GNC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <gncbrasil.com> domain name. Once the complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to a respondent’s failure to respond to the complaint, a panel may assume that a respondent does not have rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). While Respondent has failed to respond to the Complaint in this case and the Panel could find that Respondent lacks rights and legitimate interests in the <gncbrasil.com> domain name, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent has failed to present any evidence that would support a finding that Respondent is commonly known by the <gncbrasil.com> domain name. Furthermore, Complainant contends that Respondent has no rights in the GNC mark and that Complainant has not authorized Respondent to use the mark. The WHOIS information identifies Respondent as “Helio Alves,” which the Panel finds is not similar to the <gncbrasil.com> domain name. Due to the evidence in the record, the Panel concludes that Respondent is not commonly known by the <gncbrasil.com> domain name under Policy ¶ 4(c)(ii). The Panel finds that the lack of any connection between Respondent and the disputed domain name indicates that Respondent is not commonly known by the disputed domain name and consequently that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Policy ¶¶ 4(c)(i) and (c)(iii) require a respondent to utilize a disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have found that the use of a disputed domain name by a respondent to advertise products that directly compete with a complainant’s products does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Respondent’s <gncbrasil.com> domain name formerly resolved to Respondent’s website resolving from the <americavitaminas.com> domain name. Respondent’s website contained advertisements for vitamins and nutritional supplements that compete with Complainant’s similar products. Currently, the <gncbrasil.com> domain name resolves to a different website that contains the identical advertisements from Respondent’s website. The Panel finds Respondent’s use of the <gncbrasil.com> domain name does not constitute 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 Policy ¶ 4(a)(ii) has been satisfied.
When determining bad faith registration and use under Policy
¶ 4(b)(iii), a respondent’s use of a disputed domain name to advertise products
that directly compete with a complainant constitutes a disruption of the
complainant’s business, amounting to bad faith registration and use under the
Policy. See David Hall Rare Coins v.
A respondent’s use of a confusingly similar disputed domain
name to attempt to profit from confusion among Internet users created by the
disputed domain name, constitutes bad faith registration and use under Policy ¶
4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from
the likelihood of confusion between the complainant’s AIM mark and the
competing instant messaging products and services advertised on the
respondent’s website which resolved from the disputed domain name); see also Asbury Auto. Group,
Inc. v.
The Panel finds 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 <gncbrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 22, 2010
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