Gaspari Nutrition, Inc. v. Gaspari, Inc
Claim Number: FA1205001444215
Complainant is Gaspari Nutrition, Inc. (“Complainant”), represented by Gregory M. Krakau of Leland, Parachini Steinberg, Matzger & Melnick, LLP, California, USA. Respondent is Gaspari Inc (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gaspari.com>, registered with Inames Co., Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received payment on May 15, 2012. The Complaint was received in Korean and English.
On June 8, 2012, Inames Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <gaspari.com> domain name is registered with Inames Co., Ltd and that Respondent is the current registrant of the name. Inames Co., Ltd has verified that Respondent is bound by the Inames Co., Ltd 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 June 12, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 2, 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@gaspari.com. Also on June 12, 2012, the Korean language 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 July 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
A. Complainant makes the following assertions:
1. Respondent’s <gaspari.com> domain name is confusingly similar to Complainant’s GASPARI NUTRITION mark.
2. Respondent does not have any rights or legitimate interests in the <gaspari.com> domain name.
3. Respondent registered or used the <gaspari.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 contends that it has protectable rights in the GASPARI NUTRITION mark through its trademark registrations with the USPTO and the European Union’s Office for Harmonization in the Internal Market (“OHIM”). However, the Panel notes that Complainant actually supplies trademark information from the USPTO (e.g., Reg. No. 2,989,635 registered August 30, 2005) and WIPO (Reg. No. 1,000,939 registered April 22, 2009), not with OHIM. Based upon the information provided, the Panel finds that Complainant has established rights in the GASPARI NUTRITION mark under Policy ¶ 4(a)(i), regardless of Respondent’s physical location. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Further, Complainant asserts that the <gaspari.com> domain name is confusingly similar to the GASPARI NUTRITION mark. The Panel notes that the disputed domain name removes the NUTRITION portion from Complainant’s mark while adding the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the Respondent’s <gaspari.com> domain name is confusingly similar to Complainant’s GASPARIA NUTRITION mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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 argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent “cannot claim protection under Policy ¶ 4(c)(ii) merely by adopting a corporate name that is confusingly similar to a prior existing trademark . . . .” The Panel notes that the WHOIS for the disputed domain name identifies “Gaspari Inc” as the domain name registrant. The Panel also notes, however, that Respondent has not come forward with information indicating that it is actually known by the disputed domain name or “Gaspari Inc.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Further, Complainant argues that Respondent is using the disputed domain name to advertise third-party links to Complainant’s dietary and nutritional supplements. Complainant also asserts that the resolving website contains other commercial links to generic topics such as “fitness” and “nutrition.” The Panel notes that Complainant’s screenshot appears to show third-party links to competing companies and products. See Exhibit M. Complainant notes that Respondent’s website contains the following language: “Coming Soon…We’re planning to operate health shopping mall related business with this domain.” The Panel finds that Respondent’s use of the disputed domain name does not amount to 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant contends that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). The Panel notes that Complainant argued, under Policy ¶ 4(a)(ii), that Respondent’s domain name resolves to a website featuring links to companies that offer competing goods. The Panel finds that such use may disrupt Complainant’s business by referring Internet consumers away from Complainant. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Further, Complainant argues that Respondent achieves commercial gain from its hosting of commercial hyperlinks on the resolving website. Complainant argues that Respondent has created confusion with the GASPARI NUTRITION mark and with Complainant’s company in order to achieve such commercial gain. The Panel agrees and find that Respondent registered and is using the <gaspari.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gaspari.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 18, 2012
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