national arbitration forum

 

DECISION

 

General Nutrition Investment Company v. Jack Button

Claim Number: FA1108001403047

 

PARTIES

Complainant is General Nutrition Investment Company (“Complainant”), represented by William N. Federspiel of McGuireWoods LLP, Virginia, USA.  Respondent is Jack Button (“Respondent”), South Carolina, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <gncsuplementos.com> and <gncvitaminas.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 12, 2011.

 

On August 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gncsuplementos.com> and <gncvitaminas.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  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 August 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@gncsuplementos.com and postmaster@gncvitaminas.com.  Also on August 16, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <gncsuplementos.com> and <gncvitaminas.com> domain names are confusingly similar to Complainant’s GNC.COM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <gncsuplementos.com> and <gncvitaminas.com> domain names.

 

3.    Respondent registered and used the <gncsuplementos.com> and <gncvitaminas.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, General Nutrition Investment Company, owns and operates retail nutrition, health, and fitness stores called “General Nutrition Centers.”  Complainant’s General Nutrition Centers sell vitamin and mineral supplements, sports nutrition products, herbs, health foods, cosmetics and miscellaneous health care products, diet products, sports accessories, fitness products, and specialty workout apparel.  Complainant offers all of its products and services under its GNC family of marks, including its GNC.COM mark.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GNC.COM and related marks (e.g., Reg. No. 3,793,104 registered May 25, 2010).

 

Respondent, Jack Button, registered the <gncsuplementos.com> and <gncvitaminas.com> domain names on December 8, 2010 and February 16, 2011 respectively.  The disputed domain names both resolve to the same Portuguese website that offers Complainant’s vitamin products for sale.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has provided this Panel with evidence of its trademark registrations with the USPTO for its GNC.COM and related marks (e.g., Reg. No. 3,793,104 registered May 25, 2010).  The Panel determines that this is sufficient evidence of Complainant’s rights in the GNC.COM mark for the purpose of Policy ¶ 4(a)(i).  See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant claims that Respondent’s <gncsuplementos.com> and <gncvitaminas.com> domain names are confusingly similar to Complainant’s GNC.COM mark.  The <gncsuplementos.com> domain name contains Complainant’s entire GNC.COM mark with the addition of the descriptive Portuguese term “supplementos.”  Similarly, Respondent has added the Portuguese term “vitaminas” to Complainant’s mark in the <gncvitaminas.com> domain name.  The Panel determines that the additions of descriptive terms fails to distinguish the disputed domain names from Complainant’s mark, which means that the Panel finds that Respondent’s <gncsuplementos.com> and <gncvitaminas.com> domain names are confusingly similar to Complainant’s GNC.COM mark pursuant to Policy ¶ 4(a)(i).  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <gncsuplementos.com> and <gncvitaminas.com> domain names.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <gncsuplementos.com> and <gncvitaminas.com> domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant asserts that Respondent is not commonly known by either of the <gncsuplementos.com> and <gncvitaminas.com> domain names.  Complainant maintains that Respondent is not licensed to use Complainant’s GNC.COM mark.  The WHOIS information, which lists the registrant of the disputed domain name as “Jack Button,” is not similar to the <gncsuplementos.com> and <gncvitaminas.com> domain names.  Respondent has failed to respond to the Complaint and has, therefore, failed to contradict any of Complainant’s arguments or provide any evidence to the Panel that Respondent is commonly known by the disputed domain name.  In the absence of such evidence, the Panel agrees with Complainant that Respondent is not commonly known by the <gncsuplementos.com> and <gncvitaminas.com> domain names under Policy ¶ 4(c)(ii).  See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant claims that Respondent’s <gncsuplementos.com> and <gncvitaminas.com> domain names resolve to the same website, found at the <gncsuplementos.com> domain name.  At this website, Complainant alleges that Respondent sells Complainant’s vitamin products.  The Panel holds that such a use of the disputed domain names to sell Complainant’s products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and uses the <gncsuplementos.com> and <gncvitaminas.com> domain names to disrupt Complainant’s business by selling Complainant’s vitamin products to Complainant’s potential customers.  As Complainant has not authorized Respondent to sell its vitamin products at websites resolving from confusingly similar domain names, the Panel concludes that such a use does disrupt Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Complainant further argues that Respondent, by using the confusingly similar <gncsuplementos.com> and <gncvitaminas.com> domain names to sell Complainant’s vitamin products, is attempting to confuse Internet users in to believing that Complainant is affiliated with the resolving websites.  The Panel presumes that Respondent is attempting to profit from this suggestion through the sale of vitamin products.  The Panel determines that Respondent’s registration and use of the <gncsuplementos.com> and <gncvitaminas.com> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).

 

The Panel finds Complainant has satisfied 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 <gncsuplementos.com> and <gncvitaminas.com> domain names be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  September 12, 2011

 

 

 

 

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