Gestion Michel Grisé Inc. v. Calorad
Claim Number: FA1112001418522
Complainant is Gestion Michel Grisé Inc. (“Complainant”), represented by Marie-Louise Donald, Canada. Respondent is Calorad (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calorad.com>, registered with Network Solutions, LLC.
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.
HÉCTOR ARIEL MANOFF as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 7, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <calorad.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 December 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@calorad.com. Also on December 9, 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.
A timely Response was received and determined to be complete on December 29, 2011.
An Additional Submission was received from Complainant before the deadline on December 28, 2011. However, the Additional Submission was deemed not in compliance with Supplemental Rule #7 because payment was not received until after the deadline had passed.
On January 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant argues that the domain name in dispute is identical to its trade-mark CALORAD. Complainant provides evidence of its registration for the US CALORAD mark (Reg. No. 2,252,357 filed January 29, 1997; registered June 15, 1999).
Complainant argues that it is a Canadian company, which has been active in the sale of dietary supplements since as early as 1995 and owns a subsidiary, Nutri-Diem Inc. which manufactures, sells and distributes a liquid dietary supplement introduced in the US and Canadian market on January 1996 under the name CALORAD.
Complainant argues that it has no knowledge of the reasons why Respondent would have registered the disputed domain name, although Complainant may presume that Respondent, was a sub-distributor or sub-agent acting on behalf of its former distributor in Canada and the US of CALORAD, Essentially Yours Industries, Inc. (EYI).
Complainant points out that such license did not provide that the name CALORAD could be used as a domain name for the exclusive use of the distributor. Complainant provides evidence about it.
Complainant argues that on May 2011 noticed that the domain name <calorad.com> was in the name of the Respondent and it redirected the visitor to a web site, <asantae.com>, such web site offered for sale certain health-care products bearing Complainant’s trademark CALORAD. Owners of the web site <asantae.com> and Complainant have had a business relationship from January 2009 until December 2010.
Complainant argues to have been in contact with Respondent in order to settle the matter, who refused to transfer the disputed domain name unless Complainant purchased it.
Complainant argues that on Mid-June 2011 Respondent modified the redirecting link to <asantae.com> by posting a ‘under construction, please come back later’.
Complainant argues that Respondent has no rights or legitimate interests in respect of the domain and holds no current rights under any license agreement or other type or form of agreement, which could or would be entitling Respondent the right to sell, distribute or otherwise commercialize the product bearing the trademark CALORAD and its use of the disputed domain name bearing the entirety of Complainant’s trademark CALORAD.
Complainant also points out that the WHOIS name of Respondent appears to be CALORAD which is not a use authorized by Complainant (owner of the CALORAD trade-mark), nor is it a company or any other legal entity.
Complainant argues that Respondent’s use of a domain name using in its entirety the trademark is clearly infringing upon the property rights and intellectual property rights.
Complainant argues that there exists no bona fide offering of good or services which could be valid if used under the trademark CALORAD, which is and has always been the entire and sole property of Complainant.
Complainant argues that Respondent offers to sell the disputed domain name and does not appear to have any selling operations through the disputed domain name.
Complainant argues that Respondent’s refusal to transfer the disputed domain name to Complainant, has the consequence of preventing Complainant, owner of the trademark CALORAD, from reflecting the mark in a corresponding domain name.
B. Respondent
Respondent argues that the domain name <calorad.com> was registered on September 3, 1996, prior to the word Calorad was a trademark in 1999.
Respondent argues that she knew about the product in 1996 and decided to become a distributor for Essentially Yours Industries, Inc. (EYI) selling the product.
Respondent argues that the product had just been introduced to US and did not have Internet presence, so Respondent decided to build a web presence and provided support for people interested in it.
Respondent argues that her website had a fully operative ordering page which was in operation for years and it was responsible for a lot of traffic to the EYI.
Respondent argues to have been one of the first people to sell Calorad on the Internet and that was the reason why she had got the domain name.
Respondent argues that Complainant was fully aware that Respondent registered the domain name and was marketing and selling products CALORAD through Complainant’s prior licensee (Essentially Yours Industries, Inc.) and that Complainant knew that Respondent had a legitimate reason to use <calorad.com>.
Complainant also argues that Respondent had made a lot of money due to Complainant’s operations.
Respondent argues that Complainant did not contact her prior to June 2011 regarding the domain name Respondent had had for years.
C. Additional Submissions
Complainant argues that it has never had any knowledge of Respondent’s sales or marketing activities in relation with the products CALORAD.
Complainant argues that it has never had any knowledge whatsoever of the internet registration of an individual such as Respondent.
Complainant argues that it never received from Respondent any sales reports, sums, royalties or whatever form of compensation for its licensed rights.
Preliminary Issue: Deficient Additional Submission
Complainant submitted an Additional Submission on December 28, 2011 prior to the deadline. However, payment was not received until after the deadline and so it has been deemed deficient by the National Arbitration Forum pursuant to Supplemental Rule 7. The Panel finds that since the payment was not timely received but the Additional Submission was filed by the deadline, in the interests of justice, it will be considered. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process” ).
Complainant, Gestion Michel Grisé Inc. is a Canadian company, which has been active in the sale of dietary supplements since as early as 1995 and through its subsidiary sells and distributes a liquid dietary supplement introduced in the US and Canada on January 1996 under the name CALORAD.
Complainant filed a trademark application for CALORAD in US for the cited goods in 1997 and got a registration in 1999.
Respondent, Calorad (Yvonne Newman) registered the domain name <calorad.com> in 1996, after having noticed the existence of the product CALORAD and its introduction in US market and to become a distributor for Essentially Yours Industries, Inc.
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.
Complainant argues that it has rights in the CALORAD mark and provides evidence of its registration for the US CALORAD mark (Reg. No. 2,252,357), which was filed on January 29, 1997 and granted on June 15, 1999.
Complainant also argues having used CALORAD trademark for a liquid dietary supplement in the US and in the Canadian market on January 1996.
This Panel finds that Complainant had rights for CALORAD in 1996 (prior to the registration of the disputed domain name) based on the fact that Respondent herself recognized having decided to create a website and become a distributor of the product CALORAD after having heard about the product and its introduction in US.
The Panel finds that this use prior to registration of the trademark allows the mark to acquire secondary meaning which in turn confers common law rights. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Complainant’s registration of a mark is unnecessary to acquire rights under the Policy. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant argues that the <calorad.com> domain name is identical to Complainant’s CALORAD mark and since Respondent has not made changes to Complainant’s mark in the disputed domain name other than the addition of the generic top-level domain (“ gTLD”) “.com.” This Panel finds that the disputed domain name is identical to Complainant’s CALORAD mark under Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Since Complainant has a trademark registration for the exact disputed domain name and the Respondent admits having chosen this domain name based on the Complainant’s product, this Panel finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent has not submitted evidence to challenge it.
Even though the WHOIS record for the <calorad.com> domain name lists “Calorad” as the domain name registrant, it is not enough to consider Respondent to be commonly known by the disputed domain name. This Panel finds that the WHOIS record is not determinative. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
This Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not authorized to use the CALORAD mark.
Respondent has not submitted sufficient and determinant evidence to support an authorized use of CALORAD and the use of a disputed domain name to sell the products of the complainant without authorization does not confer upon the domain name registrant rights or legitimate interests in the domain name. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also 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).
This Panel finds that Respondent’s previous use of the <calorad.com> domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Thus, Respondent does not have rights or legitimate interests in the <calorad.com> domain name.
By the time Complainant files this UDRP claim, the <calorad.com> domain name resolved to a website which was inactive and only displayed a statement announcing that the <calorad.com> domain name was under construction. Due to this lack of active use, this Panel finds that Respondent lacks rights and legitimate interests in the domain name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Finally, Respondent offers Complainant to sell the domain name and this Panel finds it is another sign of lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Both parties agree that when Complainant contacted Respondent to request the transfer of the disputed domain name, Responder offered to sell it. This Panel finds it as evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent argues that she “helped to build a web presence for the product . . .” and that Complainant “did quite well as a result of all the marketing and selling . . .” made by the Respondent. However, this Panel finds that the registration and use of a disputed domain name to compete with Complainant by selling Complainant’s goods disrupts Complainant’s business and demonstrates bad faith. See Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Therefore, the Panel finds that the disputed domain is used to drive Internet traffic away from Complainant and thus is disruptive to Complainant, indicating bad faith under Policy ¶ 4(b)(iii).
This Panel also finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv) since Respondent registered and used a domain name that included a trademark without appropriate authorization from its owner and this Panel finds that Respondent attempted to take advantage of the confusion created by the identical domain name as to the source, sponsorship, or affiliation with the disputed domain name for its own commercial gain. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001).
In addition, Respondent admitted to having left an “under construction” message on the disputed domain name. This Panel finds that this inactive domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Finally, this Panel finds that Respondent knew of Complainant’s rights in the CALORAD mark prior to the registration and use of the disputed domain name and it constitutes bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). When registering the domain name Respondent was aware of CALORAD product and that it had been introduced in the US market.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <calorad.com> domain name be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: January 23, 2012
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