General Nutrition Investment Company v. Rene Oswaldo Bustos
Claim Number: FA1110001412709
Complainant is General Nutrition Investment Company (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Rene Oswaldo Bustos (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gnccolombia.com>, registered with NamesDirect.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 24, 2011, NamesDirect confirmed by e-mail to the National Arbitration Forum that the <gnccolombia.com> domain name is registered with NamesDirect and that Respondent is the current registrant of the name. NamesDirect has verified that Respondent is bound by the NamesDirect 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 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@gnccolombia.com. Also on October 25, 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 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns and operates retail nutrition, health and fitness stores under its GNC.COM mark.
Complainant owns a service mark registration on file with the United States Patent and Trademark Office (“USPTO”) for its GNC.COM mark (Reg. No. 3,793,104, registered May 25, 2010).
Because of Complainant’s continuous use of the GNC.COM mark and substantial investment in advertising incorporating the mark, the mark has become famous and widely recognized by consumers throughout the United States and abroad.
Complainant has developed a substantial reputation and valuable goodwill in the GNC.COM mark.
Respondent registered the disputed <gnccolombia.com> domain name on March 28, 2011.
The disputed domain name formerly resolved to a website that solely contained hyperlinks to Complainant’s website and the websites of Complainant’s competitors in the nutrition, health and fitness store business.
Currently, the disputed domain name resolves to a website that purports to sell Complainant’s products without Complainant’s authorization.
Respondent’s <gnccolombia.com> domain name is confusingly similar to Complainant’s GNC.COM mark.
Respondent is not commonly known by the <gnccolombia.com> domain name.
Respondent is not licensed to use Complainant’s GNC.COM service mark.
Respondent does not have any rights to or legitimate interests in the domain name <gnccolombia.com>.
Respondent both registered and uses the <gnccolombia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the GNC.COM service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the … mark through registration of the mark with the USPTO.”).
This is true without regard to whether Complainant’s rights in its mark arise from registration in the jurisdiction where Respondent resides or does business. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
There is no dispute in the record of this proceeding that Complainant’s GNC.COM service mark is famous and well-recognized by consumers. Respondent’s <gnccolombia.com> domain name is confusingly similar to the mark within the meaning of Policy ¶ 4(a)(i). The only difference between the mark and the domain name is the addition to the mark of the geographic term “Colombia.” This difference is insufficient to distinguish the domain from the mark under the standards of the Policy. See, for example, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
To the same effect, see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks both rights and legitimate interests in the <gnccolombia.com> domain name. Under Policy ¶ 4(a)(ii), once a complainant makes out a prima facie case in support of this allegation, the burden shifts to a respondent to prove that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that under Policy ¶ 4(a)(ii) a complainant must make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name, whereupon the burden shifts to that respondent to show that it does have such rights or interests).
Complainant has made out a prima facie case under this head of the Policy. Therefore, and owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the <gnccolombia.com> domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that because a respondent failed to submit a response to a UDRP complaint:
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends that Respondent is not commonly known by the <gnccolombia.com> domain name, and that Respondent is not licensed to use Complainant’s GNC.COM mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Rene Oswaldo Bustos,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the domain name so as to have demonstrated that it has rights to or legitimate interests in the domain as provided in Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the <gnccolombia.com> domain name as provided in Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain as provided in Policy ¶ 4(c)(iii), and so has no rights to or legitimate interests in the domain within the meaning of those provisions, in that Respondent formerly used the disputed domain name to host hyperlinks that resolved to Complainant’s website and the websites of Complainant’s commercial competitors and currently uses the domain to sell Complainant’s products without authorization. We accept these assertions as alleged in the Complaint. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark in a domain name without authorization to attract Internet users to its website, which offered both that complainant’s products and those of that complainant’s commercial competitors).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the contested <gnccolombia.com> domain name as alleged in the Complaint disrupts Complainant’s business and stands as evidence of registration and use of the domain in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to the mark of another to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); to the same effect, see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000).
In addition, in the circumstances here presented, we may comfortably presume that Respondent profits from the receipt of click-through fees or similar revenues owing to the visits of Internet users to the website resolving from the contested domain name. From this it is evident that, in registering and using the domain in the manner alleged in the Complaint, Respondent is attempting to benefit commercially by creating confusion as to the possibility of Complainant’s affiliation with the disputed domain name through both the former and current resolving websites. This is evidence of bad faith registration and use of the domain within the meaning of Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission and mislead Internet users by implying that that respondent was affiliated with that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <gnccolombia.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 29, 2011
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