J. R. Andorin, Inc. d/b/a Natural Wellness v. Natural Wellness Centers Of America Inc.
Claim Number: FA1107001399143
Complainant is J. R. Andorin, Inc. d/b/a Natural Wellness (“Complainant”), represented by Morris B. Cohen, New York, USA. Respondent is Natural Wellness Centers Of America Inc. (“Respondent”), represented by John R. Taylor of Natural Wellness Centers Of America, Inc., California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturalwellness.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2011; the National Arbitration Forum received payment on July 18, 2011.
On July 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <naturalwellness.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@naturalwellness.com. Also on July 21, 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 August 30, 2011.
On
September 1, 2011, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed dr.
Katalin Szamosi as Panelist.
Complainant's timely additional submission to the National Arbitration Forum
was received on September 2, 2011.
Respondent's timely additional submission to the National Arbitration Forum was received on September 7, 2011.
Complainant requests that the domain name be transferred from the Respondent to Complainant.
A. Complainant
Complainant asserts its rights in the NATURAL WELLNESS mark as it has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,026,211 registered December 24, 1996 and Reg. No. 3,361,368 registered January 1, 2008). Furthermore the Complainant argues that Respondent’s <naturalwellness.com> domain name is identical or confusingly similar to Complainant’s NATURAL WELLNESS mark as the only difference is a space between the terms and the attachment of the generic top-level domain (“gTLD”) “.com.”
Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name. In support of this Complainant asserts that
· no evidence suggests that Respondent is commonly known by the disputed domain name or that Respondent has acquired any trademark or service mark rights in the disputed domain name;
· the WHOIS information indicates that the registrant of the disputed domain name is “Natural Wellness Centers of America Inc.”
· due to their registration, application and common law rights in the NATURAL WELLNESS mark, there is no reasonable circumstance in which the Respondent could legitimately use the domain name in dispute without creating a false impression of association with the Complainant. Complainant argues that Respondent registered and uses the disputed domain names in bad faith. In support of this Complainant contends that
· Respondent, in registered the <naturalwellness.com> domain name, purposefully created a likelihood of confusion with Complainant.
B. Respondent
Respondent argues in the Response that
· <naturalwellness.com> domain name is not confusingly similar to Complainant’s NATURAL WELLNESS mark because the disputed domain name does not separate the two words as does the mark and adds the gTLD “.com.”
· Respondent’s corporate name has been “Natural Wellness Centers of America, Inc.” since 2000 and the <naturalwellness.com> domain name is a variation on the corporate business name, therefore it is commonly known by the <naturalwellness.com> domain name which is supported by the declaration of John R. Taylor, CEO of Respondent and the evidence of the incorporation.
· Respondent’s predecessor started promoting and selling nutritional and health supplement products online on September 15, 1999 and Respondent has continued since then. Furthermore at the time it started using the <naturalwellness.com> domain name to sell and market its products, there were no other websites online selling similar products.
· Respondent did not register and is not using the <naturalwellness.com> domain name in bad faith and that there is no evidence of any oral or written offer by Respondent to transfer or sell the disputed domain name.
· at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or Complainant’s <natural-wellness.com> domain name, which means Respondent did not register the disputed domain name to prevent Complainant from registering its mark.
· Respondent was unaware of the existence of Complainant or of Complainant’s business, products, services, or website at the time it registered the disputed domain name.
· Respondent began marketing and selling nutritional and health supplements from the <naturalwellness.com> domain name in January 2000 and Complainant did not engage in such business activity until 2002.
· There is very little overlap between the products and services of Complainant and Respondent as Complainant’s products primarily encompass liver support for hepatitis C patients while Respondent’s products cover a broader range of digestive system products, multivitamins, minerals, and other health supplements.
C. Additional Submissions
Complainant
In the additional submission the Complainant argues that
· Respondent's statements claiming the domain name is not identical or confusingly similar to Complainant's registered trademark are without merit.
· Respondent offers no evidence to support that it is commonly known by or that third parties refer to Respondent as the subject domain name.
· Respondent's trademark applications were filed after the Complaint was served on Respondent.
· Respondent changed its web address from <naturalwellness.com> to <NWCnatulars.com> and announced the change of the website. After negotiations with the Complainant stalled the Respondent redesigned its home page and added the word "Natural Wellness" and "NaturalWellnes.com"
· Respondent's claim that it never received communication from Complainant after Respondent's attempt to direct mail originally intended for an employee of Complainant is false.
· Because the subject domain name <naturalwellness.com> is identical to Complainant's trademark Natural Wellness, it is a source of confusion to customers and the public.
· Complainant has continuously been in the business of marketing and promoting nutritional and health supplements, body care products, and wellness DVDs and CGs since 1996. Furthermore Complainant promoted and sold nutritional and health supplements throughout the United States, Canada and foreign countries.
· Complainant uses its trademark "Natural Wellness" without a dash on the website, products, invoices, catalogs, flyers, package inserts, brochures and monthly newsletters; furthermore there is no dash in the company name as stated by the Respondent.
· Respondent's statement that Complainant was not in the business of selling nutritional and health supplements until sometime in 2002 is inaccurate.
· Respondent's claim that Complainant sells only liver support for hepatitis C patients is inaccurate.
Respondent
In the additional submission the Respondent argues that
· nothing presented by Complainant to date contradicts evidence filed by Respondent showing that Respondent and its predecessors have used the domain name NATURALWELLNESS.com and corporate name NATURAL WELLNESS CENTERS OF AMERICA, INC. since at least as early as September 15, 1999
· Respondent has an established business that operates as a bona fide California corporation
· Respondent competed fairly and competitively in a marketplace never even entered by Complainant until after Respondent had been in that market already for years.
· Complainant has lost its rights based on numerous legal theories, including laches, estoppel, acquiescence, numerous different and relevant statues of limitations and the relevant principles and notions of fair play and substantial justice.
· Sufficient evidence has been presented to demonstrate that Respondent is commonly known by NWC, NaturalWellness.com and Natural Wellness Centers of America.
· it filed trademark applications for its common law trademark NATURALWELLNESS.COM and NATURAL WELLNESS CENTERS OF AMERICA to obtain legal protection for its legitimate use and ownership rights in its trademarks
· Complainant's Exhibit 5 is largely meaningless for numerous reasons.
· There is no evidence at all in Complainant's Exhibit 7 to support its contention that Complainant has ever "been in the business of marketing and promoting nutritional and health supplements, body care products, and wellness DVDs and CDs."
· There is no evidence Complainant has ever done business outside the United States.
· Given the allegation in the additional submission of Complainant in paragraph 8 that Complainant's business is 10 times larger than that of Respondent, it can be assumed that the use of the domain name by Respondent had no adverse economic impact, has bestowed no unfair, disproportionate economic advantage or benefit upon Respondent and Complainant cannot and has not claimed any economic harm or disadvantage by its own failure to register the domain name.
· Any confusion that exists between the trademark and website of the Complainant and the domain name of the Respondent is caused by Complainant's own inconsistent use of the generic, descriptive name "Natural Wellness" as a corporate name and a domain name.
· In May 1999 no supplements were for sale online, and in December of 2000 there was no website under Complainant's domain name. Again in March of 2001, there was no website under Complainant's domain name and no evidence of online sale of supplements until 2003 when Complainant first showed "SUPPLEMENTS" category. There was no confusion until Complainant entered the supplement business.
· Complainant's initial registration in 1996 for the trademark NATURAL WELLNESS was on the "Supplemental Register". This register is where the USPTO places registrations that do not qualify for registration on the "Principal Register" and are granted fewer rights to those marks.
· NATURAL WELLNESS did not achieve registration in the Principal Register until 2006. By this time, Respondent had been using the mark NATURAL WELLNESS for a period of 7 years.
· After registering the trademark Complainant had three years to register the domain name <naturalwellness.com>.
· Andorin never contacted NWCA at all prior to initiating this UDRP proceeding. As a professional courtesy Respondent communicated with Complainant once in 2006.
The
Panel finds it appropriate to consider Respondent’s Response, as well as
Complainant’s and Respondent's Additional Submissions in resolving this case.
Complainant is the owner of the NATURAL WELLNESS trademark, which is registered
with the United States Patent and Trademark Office.
On September 15, 1999, Respondent registered the domain name <naturalwellness.com>.
On July 31, 2000, Respondent became incorporated in the State of California under the name NATURAL WELLNESS CENTERS OF AMERICA INC.
Respondent registered and uses the disputed domain name in connection with its
business activity which covers the sale of nutritional and health supplements.
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.
The Panel notes that ownership of a federally registered trademark is strong evidence of a Complainant’s rights in that mark under Policy ¶ 4(a)(i). See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005). Here, Complainant owns the federally registered NATURAL WELLNESS mark.
Respondent
contends that the initial registration in 1996 for the trademark NATURAL WELLNESS
was on the "Supplemental Register". This register is where the USPTO
places registrations that do not qualify for registration on the
"Principal Register" and are granted fewer rights.
The Panel finds that the question whether the mark was only registered in the
Supplemental Register is of no significance in the matter at hand since the
UDRP only requires that the domain name is identical or confusingly similar to
a trademark or service mark in which Complainant has rights. Complainant
sufficiently presented evidence in support of its rights. Therefore, the Panel
finds that the Complainant has rights in the trademark NATURAL WELLNESS.
Since the only changes to the mark are the omission of the space between the terms and the attachment of the generic top-level domain (“gTLD”) “.com,” the Panel finds that Respondent’s <naturalwellness.com> domain name is identical to Complainant’s NATURAL WELLNESS mark for the purposes of Policy ¶ 4(a)(i). See In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), where the panel held that because of the constraints of domain name formation that do not allow spaces and require gTLDs, a domain name consisting of a mark with only these changes remains confusingly similar. Also see Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), where the panel found the <redhat.org> domain name identical to the RED HAT mark despite the removed space and added gTLD.
As to the second element, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant asserts that no evidence suggests that Respondent is commonly known by the disputed domain name or that Respondent has acquired any trademark or service mark rights in the disputed domain name.
Respondent asserts that it has rights in the domain name in dispute, as it has, since the September 15, 1999 registration, continually, and in good faith, used the domain name to refer Internet users to its website, where Respondent sells nutritional and health supplements.
Complainant did not dispute or submit evidence which would contradict evidence filed by Respondent that Respondent began marketing and selling nutritional and health supplements under the <naturalwellness.com> domain name prior to Complainant, who did not engage in such business activity under its domain name <natural-wellness.com> until 2002.
Furthermore, Complainant did not dispute or submit evidence which would contradict Respondent's statement that at the time Respondent registered the disputed domain name, it had no knowledge of Complainant or Complainant’s <natural-wellness.com> domain name.
Respondent has been incorporated in the State of California since July 31, 2000 under the name NATURAL WELLNESS CENTERS OF AMERICA INC., has been doing business continuously under this name, and has operated an online shop under the domain name in dispute.
Panel notes that in the Panel's view the mark NATURAL WELLNESS is a weak (almost generic) mark which is commonly used in this sector of the market. Since no evidence was presented to the contrary, the Panel accepts Respondent’s assertion that it chose the domain name without knowing about the Complainant's mark or business, especially since Respondent's subsequent corporate name NATURAL WELLNESS CENTERS OF AMERICA is similar to the domain name.
Since Complainant has not submitted any evidence to the contrary, the Respondent appears to have a legitimate interest in the disputed domain name. Respondent has submitted sufficient evidence to make his Response plausible, and it is sufficient to overcome the Complaint’s assertions, See Powerstation LLC v. Christoph De Vos, D2001-1017 (WIPO Oct. 10, 2001) ("The Complainant relies on the fact that the Respondent has no links with the Complainant. However, the Panel is satisfied that many entities around the world, including the Respondent, use "Powerstation" for radio and other activities. Absent any evidence to the contrary, the Respondent appears to have a legitimate interest in the domain names in dispute.")
The Panel further notes that Complainant registered its trademark in 1996 and the domain name <natural-wellness.com> in 1996, and the registration of the disputed domain name took place in 1999. Thus Complainant has failed to institute proceedings for twelve years, while Complainant has known about the existence of Respondent's business for at least six years as Complainant admits they were aware of Respondent's business as early as 2006.
The Panel considers that the Respondent’s longstanding use of the domain with an active website that sells similar products as Complainant without objection from Complainant for as long as six to nine years should be on the merits - with the note that laches on its own is not a defense under the Policy, See Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
On
the basis of the above, the Panel finds that Complainant failed to present a
prima facie case that Respondent has no rights or legitimate interest in the
domain name. As the Respondent was able to submit evidence in support of its bone
fide offering of goods and services, it thereby successfully demonstrated that its
use of the disputed domain name falls under the exemptions in section 4(c)(i)
of the UDRP. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May 14, 2001) ("Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purpose of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
the Respondent. In those circumstances, the common approach is for respondents
to seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some other reason why they can fairly be said to have a relevant right
or legitimate interest in respect of the domain name in question.").
In conclusion, the Panel finds that Complainant has not satisfactorily met its
burden on the second element, and Panel finds Respondent likely having rights
and legitimate interests in the domain name in dispute.
The Panel concludes that Complainant failed to present a prima facie case that Respondent has no rights or legitimate interest in the domain name and it is highly probable that Respondent has rights or legitimate interests in the <naturalwellness.com> domain name pursuant to Policy ¶ 4(a)(ii). Therefore, Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <naturalwellness.com> domain name shall REMAIN WITH Respondent.
Dr. Katalin Szamosi Panelist
Dated: September 13, 2011
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