Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd.
Claim Number: FA1211001471116
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Matthew Ciesielski of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Shirlee Cornejo / Universal Export Import Ltd. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universal-nutrition.biz>, registered with Godaddy.com, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2012; the National Arbitration Forum received payment on November 27, 2012.
On November 15, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <universal-nutrition.biz> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 November 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@universal-nutrition.biz. Also on November 28, 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 December 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has done business under the name “Universal Nutrition” and has registered and used the UNIVERSAL NUTRITION mark in the sale of nutrition health products around the world.
Complainant has trademark registrations for the UNIVERSAL NUTRITION mark with the USPTO as well as with the EUC. Complainant’s multiple federal trademark registrations for the UNIVERSAL NUTRITION mark establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent registered the <universal-nutrition.biz> domain name on March 5, 2012.
The <universal-nutrition.biz> domain name is merely the UNIVERSAL NUTRITION mark with the addition of a hyphen and the generic top-level domain “.biz.” Neither of these additions has significance under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the <universal-nutrition.biz> domain name. No evidence shows that Respondent’s name is “UNIVERSAL NUTRITION.” Respondent is not able to point to any evidence establishing that it is legally chartered or commonly known by Complainant’s mark. Accordingly, Respondent is not commonly known by the disputed domain name.
Respondent is using the <universal-nutrition.biz> domain name to steer Internet users to sites offering services related to and competing with Complainant’s site. Respondent’s domain name resolves to a website providing an array of links designed to earn Respondent advertising revenues. This is neither a legitimate noncommercial or fair use, nor a bona fide offering of goods and/or services.
Respondent registered and is using the <universal-nutrition.biz> domain name in bad faith. Respondent was using Complainant’s trademark primarily to disrupt Complainant’s competing business. The disputed domain name’s resolving website provides links to competing goods.
Respondent is using the disputed domain to distract Complainant’s potential customers. Respondent has chosen this domain name because it desires to gain profits from an Internet user’s incorrect assumption that Respondent is affiliated with Complainant. Instead of finding Complainant’s products, Internet users will find themselves redirected through pay-per-click links to websites that sell products in direct competition to those sold under the UNIVERSAL NUTRITION mark.
Respondent had actual knowledge of Complainant’s interest in the UNIVERSAL NUTRITION mark as demonstrated by the distinctive nature of the mark, the similarity between the <universal-nutrition.biz> domain name and the mark, and the fact that the domain name’s resolving website features products that directly compete with the products Complainant sells under the UNIVERSAL NUTRITION mark. Respondent also had at least constructive knowledge of Complainant’s rights due to the fact that Complainant registered its mark nearly 30 years prior to Respondent’s registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However Respondent did informally respond via email. Therein, Respondent ostensibly directed the following statements to Complainant:
The website has not been created or used yet and certainly we would not create a website without your approval. I would like to ask you to please kindly check on this case and let us know if we really should sell the domain name to your company or how we should proceed. I hope to hear from you soon! Best regards – FruzsinaGönczy
The Respondent further stated:
The Domain was reserved in order to promote the Universal Nutrition products as a Universal Nutrition official and exclusive Hungarian distributor. This webpage was not published at all. Finally we have not created the promotion site as Universal Nutrition asked us not to publish it. Domain cannot be cancelled, - because it has been subscribed for a year - We are willing to give up this domain and transfer it to Universal Protein Supplements Corporation property. We kindly ask you to start the necessary procedure of the domain transfer. Sincerely! – Tibor Kozaroc
Complainant owns trademark registrations with the USPTO, and elsewhere, for the UNIVERSAL NUTRITION mark.
Respondent consents to having the at-issue domain name transferred to Complainant.
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.”).
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 generally requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
However, the Panel may decide the instant case without considering all three Paragraph 4(a) subparts. The Panel’s following analysis is essentially the same, as its analysis in Seagate Technology LLC v. Whois Agent / Whois Privacy Protection Service, Inc., FA1432711 (Nat. Arb. Forum April 18, 2012) wherein the respondent likewise consented to transferred the at-issue domain name to the complainant.
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Notwithstanding Policy ¶4(a), Rules ¶15(a) permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
As a prerequisite to obtaining the relief requested even where, as here, Respondent consents to such relief, Complainant must nevertheless demonstrate under Policy ¶4(a)(i) that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. That it does. Complainant establishes rights in the UNIVERSAL NUTRITION mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and other trademark registrars. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, the <universal-nutrition.biz> domain name is identical to Complainant’s mark. Respondent’s domain name is constructed by adding a hyphen between UNIVERSAL and NUTRITION, and then appending the generic top-level domain, “.com,” to the resulting string. These trivial changes are insufficient to distinguish the at-issue domain name from the UNIVERSAL NUTRITION mark under Policy ¶4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also 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)). Since the at-issue domain name is identical to Complainant’s registered trademark, it is thus outcome determinative that Respondent unequivocally agrees to transfer the at‑issue domain name to Complainant.
Given the foregoing and as discussed below, the Panel sees no basis for including substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in the instant decision. When a respondent consents to transfer its domain name, judicial economy dictates that the arbitrating panel simply proceeds to grant Complainant’s requested relief in recognition that there is no dispute between the parties regarding the domain name’s ultimate disposition. The “consent to transfer” situation is somewhat analogous to where a complainant withdraws its complaint. In both cases there is no need for the arbitrating panel to issue a decision based on the merits of either Policy ¶4(a)(ii) or ¶4(a)(iii).
Some panels disagree with this Panel’s position and urge that even though a respondent consents to transfer an at-issue domain name, the panel in such cases should nonetheless proceed to a decision containing analysis under Paragraph 4(a)ii and/or 4(a)iii. In Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel states:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
While the Graebel Van Lines panel suggests that allowing a domain name to be transferred by consent without complete paragraph 4(a) analysis shields cybersquatters from adverse findings, this Panel respectfully considers such concern to be misplaced. Rather, this Panel is of the opinion that the UDRP’s charge is limited to simply determining whether or not an at-issue domain name should be transferred from a respondent.
Judicial economy and the intent of the UDRP to provide an abbreviated low cost process to settle domain name disputes demands the expeditious and efficient resolution of such disputes to the extent reasonably possible. A respondent that consents to a complainant’s requested relief allows the parties, the dispute resolution provider, and the Panel, to dispense with having to consume unnecessary time and resources on matters that are unessential in determining the dispute’s conclusion. See Tokyu Corporation v. Whois Privacy Protection Service, Inc. / Demand Domains, Inc. D2008-1406 (WIPO December 8, 2008) (finding that “[w]hen a respondent consents to transfer … it serves little purpose to expend the panel's and the parties resources in an exercise which will have no impact on the ultimate outcome of the decision process.”). In Tokyu, like in the instant case, the respondent’s consent to transfer was unequivocal and express.
Furthermore where, as here, the respondent consents to the complainant’s requested relief, such respondent’s submissions will typically offer little or no substantive challenge to the Paragraph 4(a) claims made in the complaint. In such cases it is likely that the response, if any, will be less effective in addressing Paragraph 4(a) concerns, if addressed at all, than where the respondent decides to defend its domain name registration on the merits. Conclusions drawn from analysis under Paragraph 4(a)ii and 4(a)iii that are based on the usually terse response of a respondent who has agreed to transfer its domain name are thus of dubious validity.
Importantly, the singularly narrow task before this Panel is to determine whether or not the requested relief should be granted, denied, or the case dismissed.
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.
Policy ¶ 4(i) (emphasis added).
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What may be equated to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and the complainant has established rights in a confusingly similar or identical at-issue domain name, then only if surrounding circumstances call into question the cogency of the respondent’s consent need a panel proceed to engage in additional Paragraph 4(a) analysis. Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
Having established that Respondent’s domain is identical to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and further having established that Respondent consents to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universal-nutrition.biz> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 2, 2013
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