Pure Energy Club, LLC v. Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1101001365864
Complainant is Pure Energy Club, LLC (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), represented by Christina G. Radocha of Demand Domains, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pure3x.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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2011; the National Arbitration Forum received payment on January 3, 2011.
On January 4, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pure3x.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2011 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@pure3x.com. Also on January 12, 2011, 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 February 2, 2011.
On February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Pure Energy Club, LLC, is a manufacturer and distributor of the PUR3X family of energy drinks and organic coffees, which includes four products currently in production: PUR3X Renew, a canned 8.4 oz energy drink consisting of herbs and mild stimulants; PUR3X Passion, a canned 8.4 oz energy drink consisting of stimulants and natural aphrodisiacs; PUR3X Revolution, a canned 8.4 oz energy drink consisting of natural herbal ingredients that improve concentration and serve other medicinal purposes; and Tazza di Vita, an herbally enhanced blend of organic coffee.
All are collectively marketed under the marks PURE DESIGNER BEVERAGE CLUB and PUR3X (the “Mark”), which is often spelled PURE3X in company marketing materials.
The PUR3X products are marketed across the world using a unique MLM business structure (multi-level marketing) which has provided the sole source of Revenue to PURE ENERGY CLUB’S founder, Andrew Rinehart, since 2005, when Mr. Rinehart began selling his family of energy drink products.
Since its inception five years ago, Andrew Rinehart and Complainant Pure Energy Club have become one of the largest, most recognized MLM businesses in the Western United States. The Complainant Pure Energy Club, LLC currently has over 92,000 employees, directors and distributors working and being compensated in various capacities. The Complainant currently sells and ships over 300,000 PUR3X products per month bearing the PUR3X label, and grosses millions of dollars in sales.
Complainant Pure Energy Club is growing at the rate of thousands of new members per month, and was listed by Business for Home as the number one MLM Company with the most momentum world-wide.
The Disputed Domain wholly encompasses the Complainant’s Mark with the addition of only a silent letter. The NAF considers the gTLD extension to be irrelevant to its Policy ¶ 4(a)(i) analysis.
The Disputed Domain, <pure3x.com>, is identical phonetically to the Mark PUR3X. The Disputed Domain includes no textual or phonetic elements which differ from the Mark itself.
The Respondent registered the Disputed Domain in bad faith on, or about, August 16, 2006, which wholly incorporated Complainant’s Mark.
The Respondent is not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶ 4(iii).
On, or about, August 16, 2006, Respondent registered the domain name underlying this proceeding, <pure3x.com>. The Respondent has been using the domain passively ever since, but has maintained registration of the Disputed Domain under a privacy guard to hide the identity of the Respondent/Registrant.
B. Respondent
Complainant has incorrectly named Whois Privacy Protection Service, Inc./ Whois Agent as the Respondent; Demand Domains is the proper Respondent as it is the registrant of the domain name <pure3x.com>.
Complainant does not have enforceable trademark rights to PUR3x mark because the mark is merely descriptive, as Complainant states on its website “[o]ur name, Pure3x, is symbolic of the combination of quality products that represent purity and health as well as a compensation plan that emphasizes simplicity and pays you for bringing just 3 people in the club.”
Complainant has failed to meet its burden of proving that the PUR3X mark has developed a secondary meaning: all the evidence points to the inference that the earliest possible date Complainant could have started using the PUR3X mark is August, 2009, and thus there has not been a sufficient period of time for secondary meaning to be established in light of the evidence, or lack thereof.
Respondent does have legitimate rights and interest in the domain name <pure3x.com> because Respondent was the first to register <pure3x.com>. “[D]escriptive terms are legitimately subject to registration as domain names on a ‘first come, first served’ basis.
Complainant asserts that Respondent registered the domain name <pure3x.com> in bad faith. Respondent flatly rejects this notion. UDRP panelists have consistently held that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the Policy, because it is impossible for the domain name to have been registered in bad faith.
The domain name <pure3x.com> was registered on August 16, 2006. Complainant claims in the Complaint that the “PUR3X products…[have] provided the sole source of Revenue to PURE ENERGY CLUB’S founder, Andrew Rinehart, since 2005, when Mr. Rinehart began selling his family of energy drink products”; however, there is no indication or proof that PUR3X mark existed before the registration of the domain name <pure3x.com>.
Respondent requests that the Panel make a finding of reverse domain name hijacking. A finding of Reverse Domain Name Hijacking is warranted where the Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.
(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; however,
(3) the domain name has not been registered and is not being used in bad faith.
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 asserts common law rights in PUR3X mark. The Panel finds that a trademark registration is not necessary because Complainant can show continuous use and the acquisition of secondary meaning sufficient to establish common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000).
The Panel finds that Complainant has presented sufficient evidence to establish continuous use since 2005 and the subsequent acquisition of secondary meaning and has proven common law rights in the mark according to Policy ¶ 4(a)(i).
The Panel finds that the addition of a single letter to Complainant’s mark does not prevent confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
The Panel finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007).
Respondent’s <pure3x.com> domain name resolves to a generic webpage featuring a variety of unrelated pay-per-click links to websites of third parties. The Panel finds that using the disputed domain name to advertise unrelated websites through pay-per-click links is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000).
The Panel finds that Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
The Panel finds that Respondent has not registered or used the <pure3x.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001), see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Respondent contends that it did not register the <pure3x.com> domain name in bad faith because it registered the disputed domain name before Complainant had any rights in the PUR3X mark. The Panel agrees. The Panel finds that Respondent did not register the <pure3x.com> domain name in bad faith according to Policy ¶ 4(a)(iii) because the domain name registration predates Complainant’s rights in the PUR3X mark. See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000).
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and therefore finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001).
Even though Complainant has failed to satisfy its burden under the Policy, this does not necessarily result in a finding of reverse domain name hijacking by Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003).
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be DENIED.
Accordingly, it is Ordered that the <pure3x.com> domain name REMAIN with Respondent.
Richard DiSalle, Panelist
Dated: February 17, 2011
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