Universal Protein Supplements Corporation d/b/a Universal Nutrition v. New Ventures Services
Claim Number: FA1208001458721
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 New Ventures Services (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sportspharma.com>, registered with Register.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2012; the National Arbitration Forum received payment on August 17, 2012.
On September 19, 2012, Register.com confirmed by e-mail to the National Arbitration Forum that the <sportspharma.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@sportspharma.com. Also on September 19, 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 October 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Complainant’s Business and Website
Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Universal Nutrition” or “Complainant”) incorporated in 1983 in the State of New Jersey, United States. Since 1983, Complainant has become one of the leading manufacturers of sports nutrition health products in the world. In 2007, Universal Nutrition acquired the SPORTPHARMA mark and all goodwill associated with it from Protient, Inc. (and Protient’s predecessor in interest, Sportpharma, Inc.) (hereinafter “Complainant” refers to Universal Nutrition and/or its predecessors in interest). Complainant began using the SPORTPHARMA mark for nutritional supplements at least as early as 1989. On May 16, 1994, Complainant filed a United States trademark application for SPORTPHARMA USA that registered on August 15, 1995. On January 31, 2001, Complainant filed a United States trademark application for SPORTPHARMA that registered on November 13, 2001. Exhibit B-1. On July 20, 2002, Complainant’s United States registration for SPORTPHARMA USA lapsed. Complainant continues to maintain and renew its United States trademark registration for SPORTPHARMA. In addition, Complainant owns trademark registrations for SPORTPHARMA in the United States, Japan, Canada, China, and in the European Union.
Complainant’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant’s sales volume has been more than $20 million each year since at least 2003. In addition, Complainant spends more than one million dollars each year in advertisements.
Complainant registered <sportpharma.com> on July 15, 1996.
Relationship Between the Parties
No business relationship exists between Complainant and Respondent. Further, Respondent does not have, and never has had, permission to use Complainant’s SPORTPHARMA trademark.
Respondent’s Business and Website
Respondent registered the domain name <sportspharma.com> on September 23, 1999. Accordingly, Respondent registered its domain more than three (3) years after Complainant registered its domain and approximately ten (10) years after Complainant began using its SPORTPHARMA mark. Respondent acted without the authorization or knowledge of the Complainant. Respondent uses without authorization Complainant’s SPORTPHARMA mark in conjunction with products that are in direct competition with Complainant’s products. On February 28, 2012, Complainant contacted Respondent regarding its improper use of Complainant’s SPORTPHARMA mark and requested that Respondent contact Complainant. Respondent did not respond to Complainant’s letter.
Respondent offers the <sportspharma.com> domain for sale at a price much higher than the cost of registration. As of July 2, 2012, Respondent’s “price” for the domain was $3,449. As of August 16, 2012, Respondent’s homepage continues to advertise that the domain is for sale and that Respondent’s “price” for the domain is $1,277.
In addition, Respondent’s website is a parking page featuring links to goods in direct competition with those sold by Complainant, namely nutritional supplements. Respondent adopted a domain name nearly identical to Complainant’s mark to lure traffic from Complaint’s specialized field, to prevent Complaint’s rightful registration and use of the domain name at issue, and to create uncertainty regarding Complainant’s affiliation, endorsement, or sponsorship of Respondent’s website.
LEGAL ARGUMENT
FIRST ELEMENT: Respondent’s domain name is either identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant’s multiple federal trademark registrations for SPORTPHARMA establish Complainant’s rights in the mark pursuant to ICANN Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
Under U.S. trademark law, registered marks presumptively are inherently distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”). Inherently distinctive trademarks, like Complainant’s SPORTPHARMA mark, are strong. Strong marks receive the greatest range of protection from another party’s use of a confusingly similar mark. AMF INC. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
Here, Respondent’s domain name is virtually identical to Complainant’s SPORTPHARMA mark. Respondent’s inclusion of the letter “s”, using the plural form “sports” is irrelevant. Likewise, the use of the generic top-level domain “.com” is without significance to this analysis under Policy ¶4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark), see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark). Accordingly, Respondent’s mere inclusion of the letter “s” and the gTLD “.com” does not distinguish the domain at issue from Complainant’s SPORTPHARMA mark.
In addition, Respondent uses the disputed domain name to link to sites selling goods of Complainant’s competitors, goods that are identical, similar, and competing with those covered by Complainant’s SPORTPHARMA mark. Accordingly, Respondent’s registration and use or <sportspharma.com> is likely to confuse consumers and lead them to conclude falsely that a connection or affiliation exits between the disputed domain name and Complainant. No such connection or affiliation exists.
As defined by the Policy ¶4(a)(i), the disputed domain name is confusingly similar to Complainant’s SPORTPHARMA mark, because it is virtually identical to Complainant’s mark and is used to link to sites that offer goods identical to goods identified in Complainant’s trademark registration. Accordingly, Complainant satisfies the “first element” pursuant to Policy ¶4(a)(i), because Respondent’s domain name is virtually identical to a trademark in which Complainant has rights.
SECOND ELEMENT: Respondent has no rights or legitimate interests in the disputed domain name.
(i) Respondent has never used the disputed domain name or any name associated with it in connection with a bona fide offering of goods or services.
Respondent has no rights or legitimate interests with respect to the domain at issue. Conversely, Complainant’s longstanding use of the SPORTPHARMA mark predates any rights Respondent may claim. Respondent’s domain name is virtually identical to Complainant’s registered SPORTPHARMA trademark. Such similarity negates any presumption of Respondent’s legitimate use. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the Respondent’s use of the Complainant’s entire mark in the domain name makes it difficult to infer a legitimate use).
Respondent uses the <sportspharma.com> domain name to divert consumers away from Complainant’s website towards other websites offering competing products. Operating a website at a domain name confusingly similar to Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (“The use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s mark] to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Further, Complainant has used its SPORTPHARMA mark for more than twenty years, and has owned <sportpharma.com> for more than fifteen (15) years. Complainant has not authorized Respondent to use its SPORTPHARMA mark. Accordingly, Respondent’s registration and use of <sportspharma.com> cannot constitute a bona fide use of the domain name. See Swagelok Company v. Elite Sales, Inc., FA 1421137 (Nat. Arb. Forum Feb. 23, 2012) (finding “On its website at the disputed domain name Respondent is using the term ‘swagelock’ or ‘swagelocks’ as a mark for products competing with Complainant, instead of offering genuine products of Complainant (whether authorized or not by Complainant). Thus, Respondent cannot claim that it is making a ‘bona fide’ or a legitimate noncommercial or fair use of a disputed domain name.”). Similarly, Respondent does not offer Complainant’s genuine products on its website. Such use, therefore, is not bona fide.
Respondent cannot satisfy the requirements of Policy ¶4(c)(i), because Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
(ii) Respondent is not commonly known by the disputed domain name.
No evidence exists to establish that the disputed domain name is the legal name of Respondent. Respondent uses a privacy guard to hide the WHOIS information for the disputed domain name. Respondent cannot satisfy the requirements of Policy ¶4(c)(ii) because the disputed domain name is not Respondent’s commonly known name, as evidenced by the WHOIS information for the disputed domain.
(iii) Respondent’s use of the disputed domain name is not for any legitimate noncommercial fair use.
Pursuant to Policy ¶4(c)(iii), a respondent may demonstrate that it has legitimate interest in a domain name when it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Conversely, a respondent that misleadingly diverts consumers cannot rely on such use to demonstrate that it is using the disputed domain for a legitimate noncommercial or fair use. Here, Respondent registered a domain name virtually identical to Complainant’s SPORTPHARMA mark and to Complainant’s <sportpharma.com> domain. In addition, Respondent uses the disputed domain name to operate a website that provides links to websites that sell goods directly competitive with Complainant’s goods. This intentional misdirection evidences that Respondent cannot satisfy the requirements of Policy ¶4(c)(iii).
(iv) Respondent’s awareness of Complainant’s mark prior to registration of the disputed domain name evidences Respondent’s lack of rights or legitimate interest in the disputed domain name.
A respondent’s awareness of another’s trademark rights prior to the time the respondent registers a disputed domain name is evidence that the respondent lacks rights or legitimate interests in that domain name. See Quinn v. Zournas, FA 610713 (Nat. Arb. Forum Feb. 17, 2006). At the time of Respondent’s registration of the domain, Complainant had made use of the SPORTPHARMA mark for ten years and owned a United States federal trademark registration for SPORTPHARMA USA. Therefore, Respondent – at the very least – had constructive knowledge of Complainant’s rights prior to the date it registered the disputed domain. Respondent’s registration of the domain, despite such constructive notice, illustrates that Respondent is without rights or legitimate interests in the disputed domain name. See Biogen, Inc. v. Kel Ellis, KELCO, D2002-0679 (WIPO Sept. 10, 2002) (finding the Respondent did not have legitimate rights in the disputed domain in part because, pursuant to 15 U.S.C. § 1072, Respondent had constructive notice of Complainant’s mark based upon Complainant’s trademark registration).
Complainant has not authorized Respondent to use Complainant’s SPORTPHARMA mark. Respondent’s use of the domain is not in connection with a bona fide offering of goods for sale. Complainant’s rights in the SPORTPHARMA mark predate any rights Respondent could claim in the disputed domain. Respondent is not commonly known by the disputed domain name. Accordingly, Complainant has satisfied the “second element” pursuant to Policy ¶4(a)(ii) because Respondent has no rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the Respondent was not a licensee of the Complainant; (2) the Complainant’s prior rights in the domain name preceded the Respondent’s registration; (3) the Respondent was not commonly known by the domain in question).
THIRD ELEMENT: The disputed domain name was registered and is being used in bad faith.
(i) Respondent’s bad faith is evidenced by use of Complainant’s trademark primarily for the purpose of disrupting Complainant’s competing business.
Respondent has intentionally attempted to disrupt and is currently disrupting Complainant’s business by using a domain name containing Complainant’s SPORTPHARMA mark, such domain name linking to websites selling competing goods. Respondent’s “link farm” website illustrates its bad faith registration and use. See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, FA 235714 (Nat. Arb. Forum March 16, 2004) (finding that the respondent’s domain, which contained no independent content, but linked to third party commercial sites that offered for sale the same types of products associated with the complainant’s trademark was in bad faith by seeking to “capitalize on the expectations of those Internet users by directing them to other commercial sites offering similar products”).
(ii) Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
Pursuant to Policy ¶4(b)(iv), use of a domain name to intentionally attract consumers to a website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith. Here, Respondent’s registration of <sportspharma.com> represents bad faith action for commercial gain. In order to drive traffic to Respondent’s website, Respondent uses a nearly identical domain name, so that consumers will incorrectly assume an affiliation to Complainant. As a result, Respondent presumably profits from pay-per-click links through the domain, and is therefore able to generate revenue through the misappropriation of Complainant’s goodwill. Respondent’s actions, therefore, constitute bad faith. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third party websites); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third party websites demonstrated bad faith registration and use pursuant to Policy ¶4(b)(iv)).
(iii) Respondent knew of Complainant’s prior use and registration of the SPORTPHARMA mark.
A respondent acts in bad faith when the respondent has actual knowledge of a Complainant’s prior use of a mark when the Respondent registered the disputed domain name. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding bad faith registration where Respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). Here, Respondent almost certainly had actual knowledge of the Complainant’s mark because Respondent registered a domain nearly identical to Complainant’s mark and Respondent provides links to third-party websites that sell goods competing with Complainant’s goods through its website.
Even if Respondent could claim that it did not have actual knowledge – which it cannot plausibly do – Respondent had a duty to investigate prior to registering its domain name. See Collegetown Relocation, L.L.C. v. John Mamminga, FA 95003 (Nat. Arb. Forum July 20, 2000) (“When registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”); see also Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“The domain name ‘sound-choice.com’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party.”). Even the most cursory investigation by Respondent would have revealed Complainant’s rights in the mark because Complainant’s SPORTPHARMA mark has been registered and in use for many years. Further, Regardless of whether Respondent failed to investigate or investigated and then disregarded Complainant’s longstanding, strong rights in the mark, Respondent’s actions evidence bad faith.
Pursuant to Policy ¶ 4(b), Respondent registered and used the domain in bad faith because (1) Respondent has intentionally attempted to disrupt Complainant’s business, (2) Respondent has intentionally attempted to attract, for commercial gain, Complainant’s potential customers to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website, and (3) Respondent either failed to make even a cursory investigation, or investigated and disregarded Complainant’s rights in its SPORTPHARMA mark. Accordingly, Complainant has satisfied the “third element” pursuant to Policy ¶4(a) (iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 rights in its SPORTPHARMA mark through its trademark registrations with various government authorities, including the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,506,878 filed Jan. 31, 2001; registered Nov. 13, 2001), the CIPO (Reg. No. TMA689990 registered June 15, 2007), the SAIC (Reg. No. 7,527,946 registered January 7, 2011), and the OHIM (Reg. No. 1,473,131 registered July 16, 2001). The panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) concluded a complainant adequately establishes rights in its trademark through registration with several authorities internationally, including the USPTO. This Panel concurs and finds that Complainant’s rights in the SPORTPHARMA mark are adequately evidenced pursuant to Policy ¶4(a)(i) by its multiple trademark registrations. Complainant’s rights in the SPORTPHARMA mark date back to the original filing date with the USPTO of January 31, 2001. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant claims the <sportspharma.com> domain name is confusingly similar to the SPORTPHARMA mark. Complainant contends adding the letter “s” in the domain name to create the plural word “sports,” and adding the generic top-level domain (“gTLD”) “.com” does not adequately distinguish the domain name from Complainant’s mark, making the <sportspharma.com> domain name is “virtually identical” to Complainant’s mark. The Panel agrees and finds the <sportspharma.com> domain name is confusingly similar to Complainant’s SPORTPHARMA mark under Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent is not commonly known by the <sportspharma.com> domain name, in part due to Respondent’s use of a “privacy guard” to hide the WHOIS information associated with the disputed domain name. This Panel agrees. A person may not act anonymously and obtain rights to a mark. There must be some public relationship between the mark and the person using the mark. A privacy guard registration prevents that relationship from being formed.
The subsequently disclosed WHOIS information indicates “New Venture Services” is the registrant. No other evidence on the record demonstrates Respondent is commonly known by the <sportspharma.com> domain name. Respondent therefore lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent’s use of the disputed domain name to divert customers away from Complainant’s website and to other competing websites via hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <sportspharma.com> domain name. Complainant has supplied the Panel with a screenshot of the resolving website that appears to support its claims. Using a domain name to resolve to a web site consisting solely of hyperlinks to competing entities for commercial gain is not a use in connection with a bona fide offering of goods under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See H-D Mich. 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent offered the <sportspharma.com> domain name for sale at a price of $3,449 on July 2, 2012, and $1,277 on August 16, 2012. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) stated an offer to sell the disputed domain name demonstrates the domain name was registered in bad faith. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel concluded the respondent’s attempt to sell the domain name for far more than the out-of-pocket costs associated with registering the domain name was evidence of bad faith registration and use. This Panel holds Respondent’s attempts to sell the <sportspharma.com> domain name for $3,449 and $1,277 are in excess of its presumed out of pocket costs and are sufficient to conclude registration and use of the domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent intends to disrupt Complainant’s business by using a domain name incorporating Complainant’s mark and hosting a webpage linking to competing commercial websites. Complainant argues Respondent’s “link farm” website is evidence of its bad faith registration and use. The panel in Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), held that using a confusingly similar domain name to bring Internet users to a website containing commercial links to complainant’s competitors represents bad faith registration and use. This Panel agrees under the facts of this case and holds Respondent’s “link farm” disrupts Complainant’s business by offering competing commercial websites. Such disruption adequately demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iii).
Complainant argues Respondent’s use of the <sportspharma.com> domain name to create confusion among Internet consumers for commercial gain represents bad faith registration and use. Complainant claims Respondent attracts traffic through misappropriation of Complainant’s SPORTPHARMA mark, and profits by using “pay-per-click” links at the resolving website. The Panel concurs and finds Respondent registered and uses the <sportspharma.com> domain name in bad faith under Policy ¶4(b)(iv), as demonstrated by Respondent’s attempt to lure traffic to its website by confusing Internet users, and making a profit from as a result. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent is using the disputed domain name in a commercial context. The domain name was registered using a privacy guard service, which raises the rebuttable presumption the domain name was registered and is being used in bad faith. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <sportspharma.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 23, 2012
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