General Nutrition Investment Company v. Jack Button
Claim Number: FA1110001410233
Complainant is General Nutrition Investment Company (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Jack Button (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmcsuplementos.com> and <gmcvitaminas.com>, registered with GoDaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2011; the National Arbitration Forum received payment on October 4, 2011.
On October 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <gmcsuplementos.com> and <gmcvitaminas.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 October 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@gmcsuplementos.com and postmaster@gmcvitaminas.com. Also on October 5, 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 November 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gmcsuplementos.com> and <gmcvitaminas.com> domain names are confusingly similar to Complainant’s GNC mark.
2. Respondent does not have any rights or legitimate interests in the <gmcsuplementos.com> and <gmcvitaminas.com> domain names.
3. Respondent registered and used the <gmcsuplementos.com> and <gmcvitaminas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, General Nutrition Investment Company, owns and operates retail nutrition, health, and fitness stores under the GNC mark that 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 owns two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its GNC mark:
Reg. No. 2,180,647 registered August 11, 1998 &
Reg. No. 3,429,065 registered May 20, 2008.
Respondent, Jack Button, registered the <gmcsuplementos.com> and <gmcvitaminas.com> domain names on February 16, 2011 and February 28, 2011 respectively. The disputed domain names formerly resolved to the <gncsuplementos.com> website that sold unauthorized versions of Complainant’s products. Complainant won its UDRP case against the owner of the <gncsupplementos.com> domain name. After the transfer of that domain name, the <gmcsuplementos.com> and <gmcvitaminas.com> domain names currently fail to resolve to an active website.
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 provides evidence of its trademark registrations with the USPTO for its GNC mark:
Reg. No. 2,180,647 registered August 11, 1998 &
Reg. No. 3,429,065 registered May 20, 2008.
Past panels have held that a trademark registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to 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).”). In accord with this precedent, the Panel holds that Complainant has established Policy ¶ 4(a)(i) rights in the GNC mark.
Respondent’s <gmcsuplementos.com> and <gmcvitaminas.com> domain names contain a misspelled version of Complainant’s GNC mark, exchanging the letter “n” for the letter “m.” Respondent attaches either the descriptive term “suplementos” or “vitaminas” to this misspelled version of Complainant’s mark, along with the generic top-level domain (“gTLD”) “.com.” Previous panels have found these alterations fail to adequately distinguish a disputed domain name from a complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Based on these holdings, the Panel finds that Respondent’s <gmcsuplementos.com> and <gmcvitaminas.com> domain names are confusingly similar to Complainant’s GNC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <gmcsuplementos.com> and <gmcvitaminas.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant asserts that Respondent is not licensed to use Complainant’s GNC mark. The WHOIS information lists “Jack Button” as the registrant of the <gmcsuplementos.com> and <gmcvitaminas.com> domain names. Respondent has not contradicted the WHOIS information or Complainant’s assertions. Prior panels have determined that a respondent is not commonly known by a disputed domain name based on the evidence in the record, such as the WHOIS information and whether or not the complainant authorized the respondent to use the complainant’s mark. See 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); 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). After examining the record and UDRP precedent, the Panel finds that Respondent is not commonly known by the <gmcsuplementos.com> and <gmcvitaminas.com> domain names under Policy ¶ 4(c)(ii).
Respondent previously used the <gmcsuplementos.com> and <gmcvitaminas.com> domain names to resolve to a website that attempted to sell unauthorized versions of Complainant’s products. Past panels have found that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or a fair use of a disputed domain name under 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 accordingly as to the <gmcsuplementos.com> and <gmcvitaminas.com> domain names.
Respondent currently fails to make an active use of the <gmcsuplementos.com> and <gmcvitaminas.com> domain names. Prior panels have determined that a failure to make an active use of a disputed domain name is evidence that the respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Thus, the Panel holds that Respondent’s failure to make an active use of the disputed domain names is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent formerly used the disputed domain names to resolve to the website at the <gncsuplementos.com> domain name that offered unauthorized versions of Complainant’s products for sale. Previous panels have found bad faith registration and use when a respondent registered and used a disputed domain name to resolve to a website selling unauthorized versions of a complainant’s products. 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).”). Therefore, the Panel holds that Respondent registered and uses the <gmcsuplementos.com> and <gmcvitaminas.com> domain names in bad faith under Policy ¶ 4(b)(iii).
As noted above, Respondent formerly used the confusingly similar domain names to resolve to a website selling unauthorized versions of Complainant’s products. Prior panels have determined that the registration and use of a disputed domain name for such a purpose is evidence of Policy ¶ 4(b)(iv) bad faith registration and use as this purpose is evidence that the respondent is attempting to commercially gain by creating confusion as to the complainant’s affiliation with the disputed domain name. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); 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). Thus, the Panel decides that Respondent registered and uses the <gmcsuplementos.com> and <gmcvitaminas.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent currently does not make an active use of the <gmcsuplementos.com> and <gmcvitaminas.com> domain names. Past panels have found that a respondent’s failure to make an active use of a disputed domain name is evidence of Policy ¶ 4(a)(iii) bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). The Panel finds accordingly.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmcsuplementos.com> and <gmcvitaminas.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Date: November 10, 2011
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