Vitamin Shoppe Industries, Inc. v. Melanie Miller
Claim Number: FA1210001466820
Complainant is Vitamin Shoppe Industries, Inc. (“Complainant”), represented by Arne M. Olson, Illinois, USA. Respondent is Melanie Miller (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitaminshoppe.info>, registered with GoDaddy.com LLC (R171-LRMS).
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.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2012; the National Arbitration Forum received payment on October 11, 2012.
On October 15, 2012, GoDaddy.com LLC (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <vitaminshoppe.info> domain name is registered with GoDaddy.com LLC (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com LLC (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com LLC (R171-LRMS) 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 October 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@vitaminshoppe.info. Also on October 16, 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.
A timely Response was received and determined to be complete on October 22, 2012.
On October 26, 2012, the parties filed a Joint Request to Stay the Administrative Proceeding for a period of 45 days. The request was approved by the Forum on October 26, 2012. On December 7, 2012, Complainant requested that the Stay be removed. The Forum granted the request on December 7, 2012.
Complainant submitted a timely Additional Submission on December 7, 2012.
On December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges:
1. Complainant is the owner of THE VITAMIN SHOPPE mark around the world as well as in the United States and is the holder of 28 respective registrations for the word mark and logos worldwide.
2. Complainant particularly provides evidence of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,481,640 registered Aug. 28, 2001); and (Reg. No. 2,481,906 registered Aug. 28, 2001).
3. Complainant’s rights in it’s THE VITAMIN SHOPPE mark predate the registration date of the disputed <vitaminshoppe.info>.
4. Complainant first used its mark in 1977 and its first registration was on August 28, 2001.
5. The <vitaminshoppe.info> disputed domain name is confusingly similar to Complainant’s THE VITAMIN SHOPPE mark
6. Respondent merely eliminates the term “the” from Complainant’s THE VITAMIN SHOPPE mark.
7. The addition of the generic top-level domain “.info” does not sufficiently distinguish the <vitaminshoppe.info> domain name from THE VITAMIN SHOPPE mark.
8. Respondent has no rights or legitimate interests in the disputed domain name.
9. Complainant has never authorized, licensed or otherwise permitted respondent to use THE VITAMIN SHOPPE mark in any domain name or for any reason.
10. Respondent is not commonly known by THE VITAMIN SHOPPE mark or the <vitaminshoppe.info> domain name.
11. Respondent has failed to create a bona fide offering of goods or services.
12. Respondent’s resolving website is a parked site containing pay-per-click advertisements for goods in competition with those offered by Complainant.
13. Respondent has registered and uses the <vitaminshoppe.info> domain name in bad faith.
14. Complainant’s rights in THE VITAMIN SHOPPE mark existed before Respondent used or registered the <vitaminshoppe.info> domain name.
15. Respondent is profiting from the confusion created by its <vitaminshoppe.info> domain name and by gaining pay-per-click fees.
16. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with THE VITAMIN SHOPPE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s <vitaminshoppe.info> domain name.
B. Respondent Alleges:
1. Respondent did not create this domain name.
2. Respondent purchased the <vitaminshoppe.info> domain name when it had dropped from its previous owner.
3. The <vitaminshoppe.info> domain name has existed since at least 2003.
4. Respondent’s intent when purchasing the <vitaminshoppe.info> domain name was to leverage the basic keywords that comprise the disputed domain name and market them to a targeted site.
5. Respondent rarely earns more than pocket change for the parked domain name.
6. There was no malice in the purchase of this domain name.
7. The <vitaminshoppe.info> domain name sat dormant during the time period of Respondent’s ownership.
C. Complainant’s Additional Submission
1. While Complainant is sympathetic to Respondent’s alleged medical and financial conditions, but notes that such conditions do not allow Respondent to intentionally use THE VITAMIN SHOPPE mark for her own commercial benefit.
2. As Respondent was using a privacy shield Complainant could not directly contact her first. Complainant has reached out to Respondent to amicably resolve the dispute since that time.
3. The prior ownership of the disputed domain name is irrelevant to this dispute and does not relieve Respondent of its responsibility.
4. Respondent does not deny that she is not authorized to use the THE VITAMIN SHOPPE mark, and admits that she financially benefits from her use of the mark in the disputed domain name.
5. While Respondent claims that there was no “malice” in her purchase of the disputed domain name, she does not deny that she was aware of Complainant and its rights in the THE VITAMIN SHOPPE mark when she registered the domain name.
6. Respondent has admitted to using the disputed domain name to resolve to a parked page featuring links to Complainant’s competitors in the nutritional supplement industry, and is being paid for such use.
7. Complainant has satisfied all of the requirements of the Policy, and Respondent has not rebutted the same.
The Complainant is the owner of THE VITAMINE SHOPPE trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,481,640 registered Aug. 28, 2001); and (Reg. No. 2,481,906 registered Aug. 28, 2001), registered well in advance of the registration date for the disputed domain name.
In Annex 1 to its Complaint the Complainant provided copies of it’s THE VITAMIN SHOPPE (word) and “THE VITAMIN SHOPPE Since 1977” (logo), particularly registrations with the USPTO, the OHIM, the Ecuador and Indian Patent Offices, covering at least 29 countries.
As follows from the provided evidences, the Complainant first registered its trademark on August 28, 2001.
The Complainant registered the <vitaminshoppe.com> domain name in 1996.
The Respondent registered the disputed domain name on June 6, 2012.
Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use THE VITAMIN SHOPPE trademark, or to use this trademark in any domain name. This is reaffirmed and directly follows from the Respondent’s submissions, particularly copies of the correspondence between the Complainant and the Respondent during the suspension period in the proceedings.
As follows from Annex 4 to the Complaint, the website associated with the disputed domain name is a parked domain containing pay-per-click advertisements for goods in competition with those offered by Complainant under THE VITAMIN SHOPPE trademark. The study of a print-out of the web page related to the parked disputed domain shows that the advertised products particularly cover vitamins and nutritional supplements.
The Respondent has also admitted to receiving commercial compensation for its use of the disputed domain name.
The Respondent does not provide any valid argument to rebut the allegation related to identity of the Complainant’s registered trademark and the disputed domain name.
Neither the Response submitted by the Respondent, nor the relevant correspondence between the parties do not allow to establish any other relevant facts that have to be taken into account when assessing the three elements under Paragraph 4(a).
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.
The Panel finds that the Complainant has established its trademark rights derived from its trademark registrations, particularly its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,481,640 registered Aug. 28, 2001); and (Reg. No. 2,481,906 registered Aug. 28, 2001), which is well in advance of the registration date for the disputed domain name.
Thus, the Panel finds that the trademark registrations for THE VITAMIN SHOPPE trademark confirmed by due evidences along with the <vitaminshoppe.com> domain name establish a prima facie case of Complainant’s rights in THE VITAMIN SHOPPE trademark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <vitaminshoppe.info> domain name is confusingly similar to Complainant’s THE VITAMIN SHOPPE trademark.
The Respondent has used Comlainant’s THE VITAMIN SHOPPE mark in its entirety just deleting the article “the” and adding the (“gTLD”) “.info.”
Since the <vitaminshoppe.info> domain name incorporates the Complainat’s earlier registered trademark in its entirety, the Panel finds these dinstinctions insufficient to establish a disputed domain name that is distinct and unique from a registered mark. See The Royal Bank of Scotland Group Plc. V. Julio R., FA1026462 (Nat. Arb. Forum Aug. 21, 2007) (finding respondent’s <royal-bank-of-scotland.info> domain name confusingly similar to complainant’s THE ROYAL BANK OF SCHOTLAND mark).
The Panel thus finds that the Respondent’s <vitaminshoppe.info> domain name is confusingly similar to the Complainant’s registered THE VITAMIN SHOPPE mark pursuant to Policy ¶ 4(a)(i).
Respondent made no contentions under Policy 4(a)(i) and did not specifically argue over the identity of the earlier registered mark and the disputed domain name.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The Panel finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Thus, the burden of proof shifts to Respondent to show to the contrary. 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).
Particularly, the Complainant claims it has never authorized, contracted, licensed or otherwise permitted the Respondent to use it’s THE VITAMIN SHOPPE mark.
The Complainant states that there is no evidence that the Respondent has ever been commonly known by THE VITAMIN SHOPPE mark or the <vitaminshoppe.info> domain name.
As noted, the Respondent did not rebut this element through its Response, but actually admitted to not being affiliated with or authorized by the Complainant.
The WHOIS information for Respondent lists “Melanie Miller” who has no connection to the domain name and the Complainant has not authroized the Respondent to use the disputed domain name as the registrant. Therefore, the Panel finds that the Respondent is not commonly known by the <vitaminshoppe.info> domain name. 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).
The Panel also finds that the Respondent lacks rights or a legitimate interest in the <vitaminshoppe.info> domain name pursuant to Policies ¶¶ 4(c)(i) or 4(c)(iii) based on the following.
The <vitaminshoppe.info> domain name is a parked domain name containing pay-per-click advertisements for goods competing with the Complianant’s products. As noted, the links placed on the website relate to vitamins and nutritional supplements. For example, some of the links present on the Respondent’s website include: “Vitamin World Sale,” “Puritan’s Pride Vitamins,” “Swanson Vitamins,” “Anti Aging Supplements,” “Nutrition Supplements,” and “Antioxidant Supplements.”
A website containing links related to third parties would ultimately divert customers from a confusingly similar domain. The Panel thus finds that using the confusingly similar <vitaminshoppe.info> domain name in order to run a parked page to attract Internet users and divert them away from the Complainant’s page is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Therefore, the Panel finds that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶ 4(c)(i) or 4(c)(iii).
The Panelist thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the submitted evidences establishing that the Respondent’s disputed domain name resolves to a parked web page advertising links directing to businesses directly competing with the Complainant, and taking into account the fame that THE VITAMIN SHOPPE trademark has acquired during its use for over 30 years, as well as the fact that the Respondent may be profiting from the confusion and the use of pay-per-click links, the Panel finds that Respondent’s use of the disputed domain name is attempted to attract, for commercial gain, Internet users to the Respondent’s web page, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web page, which falls within the confines of Policy ¶ 4(b)(iv). Respectively, the Respondent is using it’s domain name in bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees’”).
The Panelist thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vitaminshoppe.info> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: January 18, 2013
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