Vitacost.com, Inc. v. Private Whois Service
Claim Number: FA1006001332810
PARTIES
Complainant is Vitacost.com, Inc. (“Complainant”), represented by Mary
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vitacost.biz>
and <vitacost.net>,
registered with Internet.bs Corp.
PANEL
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 30, 2010.
On June 30, 2010, Internet.bs Corp. confirmed by e-mail to the National
Arbitration Forum that the <vitacost.biz>
and <vitacost.net> domain
names are registered with Internet.bs Corp. and that the Respondent is the
current registrant of the names.
Internet.bs Corp. has verified that Respondent is bound by the
Internet.bs Corp. 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, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of July 29,
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@vitacost.biz and
postmaster@vitacost.net. Also on July 9,
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.
A timely Response was received and determined to be complete on July
26, 2010.
On August 3, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Vitacost and Vitacost.com are both registered trademarks owned by
Vitacost.com, Inc. and are used in the course and scope of the company's online
internet sales. Also, Vitacost.com, Inc.
owns a multitude of related trademarks internationally. Complainant is a worldwide leading online
Internet company which sells Nutraceutical vitamin supplements, dietary
supplements and personal healthcare items.
It currently ships to customers in 51 countries around the world, Puerto
Rico and the
Vitacost is also a registered company doing business in the European
community and has registered the name Vitacost with 33 international domain
names and 3
In May of 2007, the Registrant of
Vitacost.biz and Vitacost.net was Steven Dinerman. He was notified by Complainant that the
registration of the disputed domain names amounted to bad faith registration
and use and offered to purchase the domains and reimburse Mr. Dinerman for the
costs associated with the registration.
No response was received. Complainant sent an email to Mr.
Dinerman. Still no response was
received. In January of 2010,
Complainant again notified Mr. Dinerman but no response was received.
As of the filing of this Dispute, the domains have been transferred to
a registrant who has had his or her identity hidden through a "private
whois service." It is assumed this
transfer was to evade Complainant but if this is not the case, the new
Registrant has refused to respond to any communications as well.
The disputed domain names are confusingly similar to Complainant's
trademarks and its Internet services provided under the domain names
Vitacost.com/ie/org et al.
Respondent has no rights or legitimate interest in the use of the
domain names. They are not used for any bona fide offering of goods or services
and there is no indication that Respondent was known by the domain names prior
to registration. The Complainant has not
authorized nor licensed Respondent to use the Vitacost trademark of register a
domain name composed of the Complainant's trademark. A search of the disputed websites return
inactive websites. Respondent has
registered the domain names in order to prevent the Complainant from reflecting
the mark in corresponding domain names.
The disputed domain names have been registered and are being used in
bad faith. Respondent has refused to
communicate with Complainant and has made efforts to evade communication. There is no legitimate use of the domain
names and Respondent's inactivity and passive holding of the domain names is
bad faith. Respondent had knowledge of
Complainant's trademarks and business names when he registered the disputed
domain names. Complainant's marks are
well-known in many markets and Respondent must have been aware of the deception
and confusion that would follow if they use the domains. Respondent registered and uses the domain
names in bad faith to confuse consumers with Complainant's mark.
B. Respondent
It is specifically denied that the transfer of the subject domains were
done in an effort to evade the Complainant.
At the time of transfer, the owner also transferred over 18 other
non-related domains. These transfers
were due to dissatisfaction with the service provided by the former
registrant. They were transferred to a
"private whois service" in order to end an ongoing problem of
spamming domains and to retain privacy.
The owner of the domains is a serial entrepreneur owning many domains
for potential future use. The owner has
owned the subject domains for 9 years and has never offered them to the public
nor the Complainant for purchase. Also,
the subject domains are not being used and have never been used, thus could not
have possibly confused consumers.
Most recently, Respondent is working on a new project which is focused
on selling Vitamin Fortified Pet Foods being offered as a wholesaler to
"associated businesses."
Respondent will strongly consider both domains for this venture as they
are easier for potential customers to remember and it doesn't appear it is
confusingly similar to, or will in any way be used to confuse the "general
public" into thinking the product is being offered by another company.
FINDINGS
1- The disputed domain names are 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 names.
3 - The disputed domain names were registered
and are 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.
Complainant, Vitacost.com, Inc., is an online company that sells vitamin supplements, dietary supplements, and personal healthcare items. Complainant asserts rights in the VITACOST mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,379,109 registered on August 22, 2000). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the mark under 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues Respondent’s <vitacost.biz> and <vitacost.net> domain names are identical to its VITACOST mark. The Panel finds that the disputed domain names are identical to complainant’s mark because the domain names fully incorporate the mark and then merely attaches a generic top level domain (“gTLD”). 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark); see also Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark). Here, Complainant contends that Respondent replicates Complainant’s mark in its entirety and then affixes the gTLD “.biz” to the <vitacost.biz> domain name and the gTLD “.net” to the <vitacost.net> domain name. Therefore, based on precedent, the Panel may find Respondent’s <vitacost.biz> and <vitacost.net> domain names are identical to Complainant’s VITACOST mark pursuant to Policy ¶ 4(a)(i).
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). 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 The Panel is reminded that
Complainant must first make a prima facie case that 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.”).
Complainant has not authorized or licensed Respondent to use its mark in a domain name. Furthermore, the WHOIS information lists “Private Whois Service” as the registrant of the disputed domain names. Respondent does not claim to be known by the name but offers his assertion that he will "strongly consider" using the disputed domains in the future for a venture into "Vitamin Fortified Pet Foods." Based on the record and the Response, the Panel finds that Respondent is not commonly known by either the <vitacost.biz> domain name or the <vitacost.net> domain name under 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 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’s <vitacost.biz> and <vitacost.net> domain names, which are identical to its VITACOST mark, resolve to inactive websites. The Panel finds that respondent’s failure to make active use of a disputed domain name that is identical to a complainant’s mark does not constitute a bona fide offering or goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel may find that Respondent does not use its disputed domain names to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent’s disputed domain names resolve to inactive websites. The Panel finds that Respondent's failure to make an active use of a domain names constitutes bad faith use when the domain name registration occurred after the complainant acquired rights in a mark. See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name after the complainant registered its trademark with the USPTO). In this case, Complainant alleges that Respondent registered the <vitacost.biz> and <vitacost.net> domain names on December 24, 2001 and December 23, 2001 respectively. Complainant argues that these registrations occurred after Complainant registered the VIACOST mark with the USPTO. Therefore, the Panel may find Respondent registered the disputed domain names, which are identical to Complainant’s VITACOST mark, after Complainant acquired rights in the mark and that this amounts to bad faith pursuant to Policy ¶ 4(a)(iii).
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 <vitacost.biz> and <vitacost.net> domain names be TRANSFERRED
from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: August 12, 2010
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