national arbitration forum

 

DECISION

 

Great HealthWorks, Inc. v. Tim Blau

Claim Number: FA1204001440616

 

PARTIES

Complainant is Great HealthWorks, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA.  Respondent is Tim Blau (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orderomegaxl.com>, registered with 1&1 Internet, 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.

 

On April 26, 2012, 1&1 Internet, Inc confirmed by e-mail to the National Arbitration Forum that the <orderomegaxl.com> domain name is registered with 1&1 Internet, Inc and that Respondent is the current registrant of the name.  1&1 Internet, Inc has verified that Respondent is bound by the 1&1 Internet, 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 April 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@orderomegaxl.com.  Also on April 30, 2012, 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 May 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant uses the OMEGAXL trademark in connection with its dietary supplement and processed seafood businesses.

2.    Complainant owns trademark registrations for its OMEGAXL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,013,041 registered November 8, 2005).

3.    Respondent registered the disputed domain name on October 25, 2006.

4.    The disputed domain name is confusingly similar to Complainant’s OMEGAXL mark.

5.    The disputed domain name contains hyperlinks to third-party businesses, some of which compete with Complainant.

6.    Respondent commercially benefits from the operation of its website, likely through the collection of click-through fees.

7.    Based on the popularity of Complainant’s products, Respondent should have known of Complainant’s rights in the OMEGAXL mark.

 

 

 

 

B. Respondent

While Respondent did not submit a formal Response, Respondent e-mailed the forum correspondence indicating that Respondent was willing to transfer the disputed domain name voluntarily.

 

FINDINGS

Complainant, Great HealthWorks, Inc., uses the OMEGAXL trademark in connection with its dietary supplement and processed seafood businesses.

Complainant owns trademark registrations for its OMEGAXL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,013,041 registered November 8, 2005).

 

Respondent, Tim Blau, registered the <orderomegaxl.com> domain name on October 25, 2006. The disputed domain name contains hyperlinks to third-party businesses, some of which compete with Complainant.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registrations with the USPTO establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See 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).

 

The disputed domain name wholly includes Complainant’s mark, preceded by the generic term “order” and suffixed by the generic top-level domain (“gTLD”) “.com.” The affixation of a gTLD is irrelevant to a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The combination of a complainant’s mark with a generic word such as “order” does not remove a disputed domain name from the realm of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Therefore, the Panel finds that Respondent’s <orderomegaxl.com> domain name is confusingly similar to Complainant’s OMEGAXL mark within the meaning of Policy ¶ 4(a)(i).

 

Respondent has agreed to transfer the disputed domain name to Complainant.  Where Respondent has consented to the transfer of the disputed domain name, the Panel may decide to forego the traditional UDRP analysis and order the immediate transfer of the domain name.  See Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Therefore, the Panel foregoes the balance of the traditional UDRP analysis and orders the transfer of the <orderomegaxl.com> domain name without addressing the second and third policy elements.

 

DECISION

The Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <orderomegaxl.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 6, 2012

 

 

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