Vitacost.com, Inc. v. Satheesh Babu
Claim Number: FA1103001376353
Complainant is Vitacost.com, Inc. (“Complainant”), represented by Mary Marback, Florida, USA. Respondent is Satheesh Babu (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vita-cost.net>, registered with GoDaddy.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2011; the National Arbitration Forum received payment on March 7, 2011.
On March 8, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <vita-cost.net> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the names. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 March 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@vita-cost.net. Also on March 11, 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 April 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vita-cost.net> domain name is confusingly similar to Complainant’s VITACOST mark.
2. Respondent does not have any rights or legitimate interests in the <vita-cost.net> domain name.
3. Respondent registered and used the <vita-cost.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vitacost.com, Inc., started in 1994 as an online retail company which sells Nutraceutical vitamin supplements, dietary supplements, and personal healthcare items. Complainant owns the VITACOST mark and uses the mark to establish its Internet presence and promote its healthcare products and supplements. Complainant holds a trademark registration for its VITACOST mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,379,109 issued August 22, 2000).
Respondent, Satheesh Babu, registered the <vita-cost.net> domain name on October 22, 2010. The disputed domain name resolves to a website which sells vitamins and supplements in direct competition with Complainant’s business. The website identifies A-Z Nutrition as the supplier of the nutrition products and states that A-Z nutrition has been in business since 1983. A-Z nutrition is the registered trade name for SCD Enterprises, LLC, which was incorporated on November 8, 2010.
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.
Complainant contends that it has established rights in the VITACOST mark. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the Panel found that a trademark registration adequately demonstrates a complainant’s rights in a mark under 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 is not required to register the mark within the country of Respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds a trademark registration for the VITACOST mark with the USPTO (Reg. No. 2,379,109 issued August 22, 2000). Therefore, the Panel finds that Complainant has demonstrated its rights in the VITACOST mark through its registration with a trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <vita-cost.net> domain name is confusingly similar to its VITACOST mark. The domain name incorporates Complainant’s mark in its entirety and merely changes the name by adding a hyphen and the generic top-level domain (“gTLD”) “.net.” The Panel finds that the addition of a hyphen does not adequately distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, the Panel finds that the affixation of a gTLD does not serve to avoid a finding of confusing similarity. 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). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s VITACOST mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <vita-cost.net> domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie case in support of its allegations against Respondent. Given that Respondent failed to submit a timely response to the Complaint, the Panel may view this as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(i). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will examine the record in order to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Satheesh Babu,” which is not similar to the disputed domain name. Complainant further asserts that it has neither authorized nor licensed Respondent to use its VITACOST mark within the disputed domain name. Finding no other evidence that would provide a basis for finding that Respondent is commonly known by the disputed domain name, the Panel determines that Respondent is not commonly known by the <vita-cost.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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain name resolves to a website which professedly sells vitamins and nutritional supplements in direct competition with Complainant’s business in Nutraceutical sales and dietary supplements. The Panel finds that Respondent’s use of a confusingly similar domain name to sell products in direct competition with Complainant is not 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also 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.”).
Complainant indicates that Respondent uses the supplement sales as a means to lure customers into providing their personal and credit card information. Complainant contends that Respondent’s online services are unlike typical online stores, in that Respondent offers no Secure Sockets Layer or Transport Layer Security to Internet users purchasing goods from the resolving website. Complainant argues that this lack of security allows Respondent to defraud purchasers into providing their personal and credit card information, opening them up to substantial risks. The Panel finds that such use of the <vita-cost.net> domain name is evidence of a “phishing” practice and demonstrates that Respondent has no rights or legitimate interests in the disputed domain name under policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent’s use of the <vita-cost.net> domain name disrupts it business. Respondent’s resolving website purports to be an e-commerce website specializing in vitamins and supplements, which directly compete with Complainant’s business of providing nutritional and dietary supplements online. Those intending to purchase Complainant’s products may find Respondent’s website and consequently purchase the same products from Respondent instead. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a competing website does disrupt Complainant’s business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See 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); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent uses the disputed domain name to operate a website which purportedly sells vitamins and supplements. Complainant also argues that Respondent uses this online storefront to defraud customers into providing their credit card and personal information. Given the use of the confusingly similar domain name, Internet users searching for Complainant may find Respondent’s website and may become confused as to Complainant’s sponsorship of the website and products offered. Given the likelihood of confusion with Complainant, users may also be more prone to offer their information under the belief that the website is secure. Respondent attempts to profit from this confusion either from the receipt of online sales or through gathering personal and credit card information of purchasers. The Panel finds that such registration and use of the <vita-cost.net> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); 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).
Complainant points out that Respondent’s resolving website offers none of the secure-purchasing protocols of typical online stores. This opens up online purchasers to numerous security risks when providing their personal and credit card information. Complainant argues that Respondent attempts to lure users into providing their personal information as part of a fraudulent “phishing” scheme. The Panel concludes that such registration and use of the disputed domain name to operate a “phishing” scheme is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vita-cost.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 22, 2011
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