national arbitration forum

 

DECISION

 

Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Fundacion Private Whois / Domain Administrator

Claim Number: FA1206001449635

 

PARTIES

Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, Illinois, USA.  Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <animalpac.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 20, 2012.

 

On June 21, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <animalpac.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@animalpac.com.  Also on June 25, 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 July 23, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant makes the following assertions:

1.     Respondent’s <animalpac.com> domain name is confusingly similar to Complainant’s ANIMAL PAK mark.

2.    Respondent does not have any rights or legitimate interests in the <animalpac.com> domain name.

3.    Respondent registered or used the <animalpac.com> domain name in bad faith.

           

B.   Respondent failed to submit a Response in this proceeding.

 

FINDINGS

  1. Complainant has rights in the ANIMAL PAK mark which it uses in connection with dietary and nutritional supplements;
  2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) trademark registration for the ANIMAL PAK mark (Reg. No. 2,437,306 registered March 20, 2001);
  3. Respondent registered the <animalpac.com> domain name on September 16, 2005;
  4. The <animalpac.com> domain name is confusingly similar to the ANIMAL PAK mark;
  5. Respondent is not commonly known by the <animalpac.com> domain name;
  6. The disputed domain name resolves to a website where Respondent displays links to competing third-party websites;
  7. Respondent has engaged in typosquatting;
  8. Respondent registered and is using the <animalpac.com> domain name with the intent to sell the domain name for an amount in excess of out-of-pocket expenses;
  9. The <animalpac.com> domain name is disruptive to Complainant’s business;
  10. The disputed domain name intentionally diverted Complainant’s customers by creating a likelihood of confusion;
  11. Respondent had actual knowledge of Complainant’s rights in the ANIMAL PAK mark prior to the registration and use of the <animalpac.com> domain name.

 

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

 

Complainant contends that it has rights in the ANIMAL PAK mark, used in connection with dietary and nutritional supplements. Complainant asserts its rights in its mark by virtue of its ownership of the USPTO trademark registration for the ANIMAL PAK mark (Reg. No. 2,437,306 registered March 20, 2001). Panels have found that the registration of a mark with a trademark authority is evidence of rights in a mark. 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)). Panels have also held that the location of the parties is irrelevant when determining if a complainant has rights in a mark given its trademark registration ownership. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the ANIMAL PAK mark pursuant to Policy ¶ 4(a)(i).

 

Complainant alleges that the <animalpac.com> domain name is confusingly similar to the ANIMAL PAK mark. Complainant claims that the only substantive change made to its mark in the disputed domain name is the replacement of the letter “k” with the letter “c.” The Panel finds that Respondent’s exchange of one letter for another in a disputed domain name does not differentiate the domain name from the allegedly-infringed-upon mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). The Panel also finds that Respondent’s deletion of a space and addition of the generic top-level domain (“gTLD”) do not negate a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <animalpac.com> domain name is confusingly similar to the ANIMAL PAK mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 contends that Respondent is not commonly known by the <animalpac.com> domain name. Complainant argues that no business relationship exists between itself and Respondent and that Respondent does not have, and has never had, permission to use the ANIMAL PAK mark in any capacity. Additionally, Complainant notes that the WHOIS information for the <animalpac.com> domain name lists “Fundacion Private Whois/ Domain Administrator” as the domain name registrant. The Panel finds that this listing does not reflect the disputed domain name. Panels have found that a lack of authorization to use a mark and an unsupportive WHOIS record indicate that a respondent is not commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the <animalpac.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent is using the disputed domain name in a way that provides Respondent with neither rights nor legitimate interests in the <animalpac.com> domain name. Complainant argues that the disputed domain name resolves to a website that displays links to competing third-party websites. The Panel notes that the screenshot of the website lists these links under headings such as “Body Building Supplements” and “Gain Muscle Mass.” The Panels in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), held that the display of links to competing website is not a use within the protective bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). As such, the Panel finds that Respondent’s use of the <animalpac.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant contends that Respondent’s willingness to sell the disputed domain name is evidence of Respondent’s lack of rights and legitimate interests. Complainant notes that the <animalpac.com> domain name is listed on a domain name auction site for a price of 1,710 dollars. Complainant insists that this amount exceeds the out-of-pocket costs Respondent incurred by acquiring and maintaining the <animalpac.com> domain name. Therefore, the Panel finds that Respondent’s willingness to sell the <animalpac.com> domain name is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

 

Complainant next asserts that Respondent’s lack of rights and legitimate interests is evidenced by the fact that the <animalpac.com> domain name includes a typosquatted version of the ANIMAL PAK mark. Complainant contends that the only substantive change to Complainant’s mark in the disputed domain name is the exchange of one letter, “k,” for another, “c.” Panels have consistently held that typosquatting is evidence of a lack of rights and legitimate interests. See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). Therefore, the Panel finds that Respondent’s typosquatting demonstrates that Respondent has no rights or legitimate interests in the <animalpac.com> domain name under Policy ¶ 4(a)(ii).

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <animalpac.com> domain name in bad faith. Complainant puts forth evidence of Respondent’s willingness to sell the <animalpac.com> domain name: screenshots of the WHOIS record and auction sites. The Panel notes that each offer for sale includes that the <animalpac.com> domain name lists an asking price of $1,710. Complainant argues that this is certainly an amount in excess of Respondent’s out-of-pocket costs. Panels have previously held that the willingness to sell a disputed domain name for an excessive amount is evidence of bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Therefore, the Panel finds that Respondent’s willingness to sell the <animalpac.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).

 

Complainant contends that Respondent intentionally attempted to attract Internet users to the disputed domain name by creating a likelihood of confusion as to the source of the <animalpac.com> domain name. Complainant asserts that this scheme allowed Respondent to profit off of its display of links to competing third-party websites on the <animalpac.com> domain name’s resolving website. The Panel notes that these links appear under headings such as “Muscle Building” and “Muscle Supplements” based on the screenshots provided by Complainant. The Panel finds that Respondent intended to take commercial advantage of Internet users’ mistakes regarding the source of the <animalpac.com> domain name. The Panel finds that Respondent registered and is using the <animalpac.com> domain name in bad faith 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 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).

 

Complainant asserts that Respondent’s <animalpac.com> domain name is constructed merely of a typosquatted version of Complainant’s ANIMAL PAK mark, minus the space between words and plus a gTLD. Complainant argues that Respondent’s replacement of the letter “k” with the letter “c” of the ANIMAL PAK mark in the disputed domain name is an intentional change made by Respondent to take advantage of inevitable misspellings of the mark in domain names in order to divert the Internet users to Respondent’s website. Panels have found that typosquatting is clear evidence of bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent registered and is using the <animalpac.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant asserts that, due to its long-standing trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the ANIMAL PAK mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of the ANIMAL PAK mark on the disputed domain name to increase the likelihood of confusion indicates that Respondent had actual knowledge of Complainant and its rights. The Panel chooses to disregard Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and thus conclude that Respondent registered the <animalpac.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <animalpac.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

August 3, 2012

 

 

 

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