national arbitration forum

 

DECISION

 

Liberty Natural Products, Inc. v. ADM studio

Claim Number: FA1101001370288

 

PARTIES

Complainant is Liberty Natural Products, Inc. (“Complainant”), Oregon, USA.  Respondent is ADM studio (“Respondent”), represented by Xiaomin Gao, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <libertynaturalherbs.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically January 31, 2011; the National Arbitration Forum received payment January 31, 2011.

 

On January 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <libertynaturalherbs.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@libertynaturalherbs.com.  Also on February 3, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 1, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name registered by Respondent, <libertynaturalherbs.com> , is confusingly similar to Complainant’s LIBERTY NATURAL mark.

 

2.    Respondent has no rights to or legitimate interests in the <libertynaturalherbs.com> domain name.

 

3.    Respondent registered and used the <libertynaturalherbs.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Liberty Natural Products, Inc., is in the business of growing, distributing, and manufacturing botanical ingredients and natural products.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LIBERTY NATURAL mark (e.g., Reg. No. 3,546,052 issued December 16, 2008). Complainant alleges as well that it has common law rights in the mark; but, given the finding of legal rights through registration, the Panel does not address the issue of common law rights.

 

Respondent, ADM studio, registered the <libertynaturalherbs.com> domain name on May 21, 2008.  The disputed domain name resolves to a website that promotes an herbal product that competes with Complainant’s natural products.

The Panel notes that while the registration date of May 21, 2008, precedes publication of Complainant’s registration, the record shows that the date of filing, which is determinative, occurred well before Respondent’s registration.  The Panel, therefore, does not include discussion on this issue.

 

DISCUSSION

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 to or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in the LIBERTY NATURAL mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,546,052 issued December 16, 2008).  The Panel finds that this trademark registration sufficiently proves Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends that Respondent’s <libertynaturalherbs.com> domain name is confusingly similar to its LIBERTY NATURAL mark.  Respondent replicates Complainant’s mark in the disputed domain name, merely omitting the space between the terms in the mark.  Respondent also attaches the descriptive term “herbs,” which describes some of Complainant’s products, and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds that the addition of a descriptive term and gTLD to a mark fails to distinguish a domain name from the mark.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). 

 

Therefore, the Panel holds that Respondent’s <libertynaturalherbs.com> domain name is confusingly similar to Complainant’s LIBERTY NATURAL mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant asserts that Respondent has no rights to or legitimate interests in the disputed domain name that contains in its entirety Complainant’s protected mark.  According to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case to support these allegations that Respondent lacks rights and legitimate interests in the <libertynaturalherbs.com> domain name.  The burden then shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name.  The Panel may interpret Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”)

 

Although Respondent failed to submit a Response, the Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the <libertynaturalherbs.com> domain name under Policy ¶ 4(c).

 

Complainant asserts it has not granted Respondent permission to use its LIBERTY NATURAL mark in any way.  In addition, the WHOIS information lists “ADM studio” as the registrant of the disputed domain name, which the Panel finds is not similar to the <libertynaturalherbs.com> domain name.  Without evidence to the contrary, the Panel finds that the evidence in the record suggests that Respondent is not commonly known by the disputed 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 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).

 

Complainant also alleges that the <libertynaturalherbs.com> domain name resolves to a website that promotes “Anxiety Healthcare,” a product that competes with Complainant’s natural products.  A screen shot of the resolving website shows a site that offers for sale an herbal product that purports to relieve a variety of ailments.  Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name in connection with a commercial website that competes with Complainant’s business.  Accordingly, the Panel holds that Respondent does not use the <libertynaturalherbs.com> domain name for 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also 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.”).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant finally alleges that Respondent registered and used the disputed domain name in bad faith.  The evidence before the Panel shows that the <libertynaturalherbs.com> domain name redirects Internet users seeking Complainant’s business to a website that offers for sale products that compete with Complainant’s products.  Therefore, the Panel finds that Respondent’s <libertynaturalherbs.com> domain name disrupts Complainant’s business, behavior that supports findings that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Respondent uses the disputed domain name in connection with a commercial website that promotes a product that competes with Complainant’s products.  Furthermore, the <libertynaturalherbs.com> domain name is confusingly similar to Complainant’s LIBERTY NATURAL mark.  For these reasons, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s LIBERTY NATURAL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product on Respondent’s site.  Consequently, the Panel finds that this behavior provides additional evidence of Respondent’s registration and use in bad faith under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <libertynaturalherbs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  March 14, 2011.

 

 

 

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