General Nutrition Investment Company v. Above.com Domain Privacy
Claim Number: FA1206001448333
Complainant is General Nutrition Investment Company (“Complainant”), represented by William N. Federspiel of McGuire Woods LLP, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gnctotallean.com>, registered with ABOVE.COM, PTY. LTD.
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 electron-ically on June 12, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 13, 2012, ABOVE.COM, PTY. LTD. confirmed by e-mail to the National Arbitration Forum that the <gnctotallean.com> domain name is registered with ABOVE.COM, PTY. LTD. and that Respondent is the current registrant of the name. ABOVE.COM, PTY. LTD. has verified that Respondent is bound by the ABOVE.COM, PTY. 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 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2012 by which Re-spondent 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@gnctotallean.com. Also on June 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 10, 2012, 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 Not-ices, 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
Complainant is a wholly owned intellectual property investment subsidiary of GNC Holdings, Inc.
Directly or through its affiliates, franchisees, licensees, GNC owns and operates retail nutrition, health and fitness stores.
Complainant owns trademark registrations, on file with the United States Patent and Trademark Office ("USPTO") for the GNC mark (including Registry No. 2,180,647, registered August 11, 1998).
Complainant owns worldwide trademark registrations for the GNC TOTAL LEAN mark, including a trademark registration with IP Australia (“IPA”) (Registry No. 1,357,555, registered April 21, 2010).
Respondent registered the disputed <gnctotallean.com> domain name on Nov-ember 19, 2011.
Respondent’s <gnctotallean.com> domain name is identical to Complainant’s GNC TOTAL LEAN mark.
Although Respondent does not have rights to or legitimate interests in the dis-puted domain name, it uses the domain name to provide third-party links to com-petitors of Complainant in the diet and health industry.
Respondent does not have, and has not had, permission to use Complainant’s marks in the disputed domain name or otherwise.
Respondent knew of Complainant’s rights in the GNC and GNC TOTAL LEAN marks when it registered the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark or 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."
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 can-celled 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 Vert-ical 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 reason-able 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 has rights in its GNC TOTAL LEAN marks under Policy ¶ 4(a)(i)by virtue of its registration of the mark with a national trademark authority, the IPA. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning then to the central question under this head of the policy, because the disputed domain name contains Complainant’s entire mark, absent only the spaces between its terms, while adding the generic top-level domain (“gTLD”) “.com,” we conclude that the <gnctotallean.com> domain name is substantively identical to Complainant’s GNC TOTAL LEAN mark under Policy ¶ 4(a)(i). See, for example, Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding the domain name <croatiaairlines.com> identical to a complain-ant's CROATIA AIRLINES trademark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show 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 a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, when a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the 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 alleges, and Respondent does not deny,
that Respondent has no rights in the GNC TOTAL LEAN mark, that Complainant has not granted Respondent a license or other permission to use Complainant’s mark in any way, and that Respondent has not been commonly known by any name related to Complainant. Moreover, the pertinent WHOIS information identifies the registrant of the <gnctotallean.com> domain name only as “Above.com Domain Privacy,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain name pursuant to Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent had been commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not using the <gnctotallean.com> domain name for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii), in that the domain name resolves to websites featuring links to the websites of companies competing with the business of Complainant. On the record before us, we conclude that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial 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: “[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).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Presumably for profit, Respondent employs the disputed domain name to send Internet users to the websites of businesses operating in competition with Com-plainant in the weight-loss and diet industries. This disrupts Complainant’s bus-iness, and it stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008):
Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to … products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is … evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Further, we are persuaded that Respondent employs Complainant’s mark in a domain name which is substantively identical to that mark in order to facilitate its scheme to profit from confusion among Internet users as to the possibility of a relationship between the domain name and Complainant is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that offered links to third-party websites featuring services similar to those of a complainant).
Finally, it is plain from the record that Respondent knew of Complainant and its rights in the GNC TOTAL LEAN mark when it registered the contested domain name. This too is evidence of bad faith registration and use of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having first concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <gnctotallean.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 24, 2012
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