Alticor Inc. v. Ken McGlone / McGlone Mortgage Company, Inc.
Claim Number: FA1107001397651
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Ken McGlone / McGlone Mortgage Company, Inc. (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buynutriliteproducts.com>, registered with 1 & 1 Internet AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 11, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <buynutriliteproducts.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@buynutriliteproducts.com. Also on July 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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, 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 <buynutriliteproducts.com> domain name is confusingly similar to Complainant’s NUTRILITE mark.
2. Respondent does not have any rights or legitimate interests in the <buynutriliteproducts.com> domain name.
3. Respondent registered and used the <buynutriliteproducts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is an international direct selling company, selling a number of brand products. Complainant owns the NUTRILITE mark and has been selling NUTRILITE brand nutrition and wellness products since 1947. Complainant holds a number of trademark registrations for its NUTRILITE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 402,891 registered August 24, 1943).
Respondent, Ken McGlone / McGlone Mortgage Company, Inc., registered the <buynutriliteproducts.com> on June 20, 2008. The disputed domain name resolves to Respondent’s website, a page for McGlone Mortgage Company, a mortgage rate search site, that does not relate to Complainant’s NUTRILITE mark.
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 alleges that it has demonstrated its rights in the NUTRILITE mark. Past panels have held that a complainant can establish rights in a mark via registration with a trademark authority. 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 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).”). Complainant has numerous trademark registrations for its NUTRILITE mark with the USPTO (e.g., Reg. No 402,891 registered August 24, 1943). Therefore, the Panel finds that by registering its mark with the USPTO, Complainant has established rights in the NUTRILITE mark under Policy ¶ 4(a)(i).
Complainant also alleges that Respondent’s <buynutriliteproducts.com> domain name is confusingly similar to Complainant’s NUTRILITE mark. The disputed domain name utilizes Complainant’s entire mark and then alters it by adding the generic words “buy” and “products” and by adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding generic words to Complainant’s mark does not sufficiently distinguish the disputed domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also reiterates the consistent finding that a gTLD does not factor into a Policy ¶ 4(a)(i) analysis. 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 NUTRILITE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Previous panels have determined that a complainant must first make a prima facie case in support of its claims and that the burden of proof subsequently shifts to the respondent. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Here, Complainant has presented a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel is allowed to assume that Respondent has waived its right to any claims of rights or legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests according to Policy ¶ 4(c).
Moreover, Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the domain name registrant as “Ken McGlone / McGlone Mortgage Company, Inc.,” which is not similar to the disputed domain name. Complainant claims that it has never authorized Respondent to use the NUTRILITE mark or variations of the mark within the domain name. In light of these facts, the Panel finds that Respondent is not commonly known by the <buynutriliteproducts.com> domain name 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 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 resolving website is a home page for Respondent’s “McGlone Mortgage Company,” a mortgage rate search site, and does not contain any content associated with Complainant’s NUTRILITE products. The Panel finds that Respondent’s hosting of a confusingly similar disputed domain name to resolve to its own website completely unrelated to Complainant’s mark 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <buynutriliteproducts.com> domain name redirects Internet users to Respondent’s home mortgage rate search website. Due to the confusingly similar disputed domain name, Internet users may be mislead as to Complainant’s sponsorship of, or association with, the resolving site. Respondent tries to commercially gain from this confusion by increasing Internet traffic to his own website. The Panel finds that Respondent’s registration and use of the disputed domain name for such a purpose is evidence of bad faith according to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that 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 <buynutriliteproducts.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2011
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