Great HealthWorks, Inc. v. omegaxlisthebest
Claim Number: FA1210001467135
Complainant is Great HealthWorks, Inc. (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA. Respondent is omegaxlisthebest (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omegaxlingredients.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2012; the National Arbitration Forum received payment on October 12, 2012.
On October 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <omegaxlingredients.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@omegaxlingredients.com. Also on October 18, 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 November 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Allegations
1. Complainant has continuously and exclusively used its OMEGAXL mark since 2003 in connection with its dietary supplement and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,063,715 registered February 28, 2006).
2. Complainant spends about $10 million per year on advertising and promotions for its OMEGAXL products.
3. Respondent’s <omegaxlingredients.com> domain name is confusingly similar to Complainant’s OMEGAXL mark.
4. Respondent merely adds the term “ingredients” to Complainant’s OMEGAXL mark, as well as the generic top level domain (gTLD) “.com,” to comprise its <omegaxlingredients.com> disputed domain name.
5. Respondent has no rights or legitimate interest in the <omegaxlingredients.com> domain name.
6. Respondent is not commonly known by the <omegaxlingredients.com> domain name.
7. Complainant has not authorized Respondent to use the disputed domain name or the OMEGAXL mark for any purpose.
8. The WHOIS information for the <omegaxlingredients.com> domain name does not indicate that Respondent is commonly known by it.
9. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
10. Respondent is using the <omegaxlingredients.com> domain name to direct Internet users to a website advertising products and businesses that are competitors of Complainant.
11. Respondent is commercially profiting through the use of pay-per-click advertising.
12. Respondent’s <omegaxlingredients.com> domain name was registered and is being used in bad faith.
13. Respondent has at least constructive notice of the OMEGAXL mark.
14. Respondent is using the <omegaxlingredients.com> domain name to intentionally attract, for commercial gain, Internet searchers to its website in order to generate click-through advertising revenues.
B. Respondent
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 claims it has continuously and exclusively used the OMEGAXL since 2003 in connection with its dietary supplements and processed seafood and seafood extracts. Complainant provides evidence of its trademark registrations with the USPTO (e.g., Reg. No. 3,063,715 registered February 28, 2006). Evidence of registration with a national trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has established rights in its OMEGAXL mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that the <omegaxlingredients.com> domain name is confusingly similar to Complainant’s OMEGAXL mark. Complainant argues that the only difference between the OMEGAXL mark and the <omegaxlingredients.com> domain name is the addition of the term “ingredients”. The term “ingredients” is descriptive of the composition of the OMEGAXL dietary supplements. The Panel therefore finds that Respondent’s <omegaxlingredients.com> domain name is confusingly similar to Complainant’s OMEGAXL mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent is not commonly known by the <omegaxlingredients.com> domain name. Complainant claims that it is the owner of the OMEGAXL mark and has been for nearly 10 years. Complainant further alleges that it has not authorized Respondent to use the <omegaxlingredients.com> domain name and has not otherwise granted Respondent permission to use its mark for any purpose. Complainant points out that the WHOIS information for the <omegaxlingredients.com> domain name fails to indicate that Respondent is commonly known by the domain name and lists “omegaxlisthebest” as Registrant. The lack of any further evidence in the record suggesting that a respondent is actually commonly known by the domain name and was so known prior to the domain name’s registration indicates that Respondent is not commonly known by the <omegaxlingredients.com> domain name according to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Complainant alleges that Respondent is using the <omegaxlingredients.com> domain name to direct Internet users to a website featuring advertisements for competing products and companies. The Panel notes that the resolving website features links such as “worldwide web.best-omega-3-supplement.com,” “Good Essential Fatty Acids,” “Click here to visit Nuraflex now,” “Flex Protex,” “free e-book,” and “Fish Oil Pills,” while also purporting to provide information about Complainant’s product and related products. The display of advertisements and pay-per-click links, as well as the unauthorized provision of information, is not a bona fide offering of goods or services or a legitimate noncommercial fair use under Policies ¶¶ 4(c)(i) and 4(c)(ii). 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).”). Based on, and accepting, Complainant’s assertions and the evidence presented, the Panel finds that Respondent has no rights or legitimate interest in the <omegaxlingredients.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶4(a)(ii).
The contents of Respondent’s website indicates that Respondent was well aware of Complainant’s trademark rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Complainant argues, and this panel finds, that the resolving website features link advertisements for competing products and companies. Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet searchers to its website in order to generate click-through advertising revenues. This type of use indicates bad faith pursuant to Policy ¶ 4(b)(iv). 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.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omegaxlingredients.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 3, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page