Universal Protein Supplements Corporation d/b/a Universal Nutrition v. FH Holdings
Claim Number: FA1204001440998
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Maureen Beacom Gorman of Marshall Gerstein & Borun, Illinois, USA. Respondent is FH Holdings (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalpak.org>, registered with GoDaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <animalpak.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@animalpak.org. Also on April 27, 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 Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
i. The United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,437,306 registered March 20, 2001);
ii. The European Union Office for Harmonization of the Internal Market (“OHIM”) (Reg. No. 004046521 registered January 18, 2006);
iii. The Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 1127658 registered August 12, 2009) and;
iv. The Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA745,144 registered August 12, 2009) amongst others;
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its ANIMAL PAK mark.
2. Respondent’s <animalpak.org> domain name is identical to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.”).
Complainant claims to have established its rights in the ANIMAL PAK mark by registering it with trademark authorities all over the world. Complainant submits trademark registrations from multiple governmental trademark authorities to support its claim including; the USPTO (Reg. No. 2,437,306 registered March 20, 2001), OHIM (Reg. No. 004046521 registered January 18, 2006), MIIP (Reg. No. 1127658 registered August 12, 2009) and CIPO (Reg. No. TMA745,144 registered August 12, 2009) amongst others. Thus, the Panel concludes that Complainant has satisfied the rights requirement encapsulated in Policy ¶ 4(a)(i) via its multitude of registrations. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant also claims that Respondent’s <animalpak.org> domain name is identical and/or confusingly similar to its ANIMAL PAK mark. The Panel notes that the domain includes the entire mark, merely removing the space between terms and adding the generic top-level domain (“gTLD”) “.org.” The Panel determines that Respondent’s disputed domain name is identical to Complainant’s ANIMAL PAK mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “FH Holdings.” The Panel further notes that Respondent has not offered any evidence that would indicate that it is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name resolves to a website offering its own products for sale alongside those of its competitors. Complainant submits a screenshot from the website to verify its claims. See Complainant’s Exhibit G. Based upon the evidence provided, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the 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 Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Complainant contends that Respondent is using the disputed domain name to confuse Internet users and then commercially gain from the confusion. Complainant claims that the disputed domain name resolves to a website selling its own products, as well as the products of its competitors in the health and bodybuilding supplement industry. The Panel notes that the screenshots provided by Complainant appear to indicate that the website only offers Complainant’s products for sale from the website itself. The Panel infers that Respondent charges Internet users to purchase the goods it has listed for sale from its website. As a result, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Whirlpool Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that the respondent’s use of the <whirlpoolparts.com> domain name to operate a website selling the complainant’s products constituted bad faith registration and use under the Policy, despite the fact that the respondent operated a storefront business for 27 years selling the complainant’s parts and appliances).
Complainant also contends that Respondent was aware of Complainant’s rights in the ANIMAL PAK mark prior to registering the disputed domain name. Complainant states that Respondent is an authorized distributor of its products. Complainant claims that the scope of Respondent’s rights to sell the goods does not extend to using Complainant’s ANIMAL PAK mark on the Internet. However, the Panel notes that a pre-existing relationship such as this appears to indicate that Respondent had actual knowledge of Complainant’s rights in the ANIMAL PAK mark when it registered the disputed domain name. While constructive notice has not typically been deemed sufficient to support a finding of bad faith registration and use, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ANIMAL PAK mark when it registered the disputed domain name, and also concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animalpak.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page