Universal Protein Supplements Corporation d/b/a Universal Nutrition v. BuyDomains.com
Claim Number: FA1211001472359
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 BuyDomains.com (“Respondent”),
represented by Erik S. Zilinek, Massachusetts,
USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalpak.net>, registered with Tucows, 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.
Kendall Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2012; the National Arbitration Forum received payment on November 26, 2012.
On November 22, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <animalpak.net> domain name (the Disputed Domain Name) is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@animalpak.net. Also on November 30, 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 December 20, 2012.
On January 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall Reed 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.
A. Complainant
a) Complainant is one of the leading providers of sports nutrition health products in the world. Complainant owns numerous registrations around the world for its ANIMAL PAK mark which it uses to promote these products, including a United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,437,306 registered Mar. 20, 2001) registration.
b) The <animalpak.net> domain name is identical to the ANIMAL PAK mark in which Complainant has rights. Respondent’s deletion of the space between words in the mark and the addition of the generic top-level domain (“gTLD”) “.net” do not differentiate the domain name from the mark in any way.
c) Respondent is not commonly known by the <animalpak.net> domain name. Respondent registered the domain without the authorization or knowledge of Complainant. The WHOIS record for the <animalpak.net> domain name lists “Buydomains.com” as the domain name registrant, which is not at all similar to the disputed domain name.
d) Respondent uses the <animalpak.net> domain name to link to websites that sell products that are in direct competition with Complainant’s products.
e) The <animalpak.net> domain name is being offered for sale on <buydomains.com> for a price of $1,288.
f) Respondent’s registration and use of the <animalpak.net> domain name is disruptive to Complainant’s business.
g) Respondent intentionally attempted to divert consumers by creating a likelihood of confusion so that it could commercially gain. Respondent uses an identical domain name so that consumers will incorrectly assume an affiliation to Complainant. As a result, Respondent profits from competitive pay-per-click links on the domain from the misappropriation of Complainant’s goodwill.
h) Respondent was aware of Complainant’s rights in the ANIMAL PAK mark prior to the registration and use of the <animalpak.net> domain name. Respondent registered its domain name more than 20 years after Complainant began using the ANIMAL PAK mark and more than five years after the registration of the ANIMAL PAK mark with the USPTO.
B. Respondent
a) Respondent denies that it registered the <animalpak.net> domain name in bad faith, but nevertheless agrees to transfer the domain name to Complainant as the domain is not critical to Respondent’s business, and thus is not worth the cost involved in defending Respondent’s rights in the domain.
b) Respondent notes that the Panel may choose to simply transfer the domain without issuing an opinion on the merits of the case.
c) Respondent registers domain names that it believes to be common or generic, and invites potential claimants to contact it regarding domain names which are believed to violate a trademark through the publicly available Trademark Complainant Procedure at <buydomains.com>. Complainant never contacted Respondent. Had Complainant contacted Respondent and claimed a violation of trademark rights, Respondent would have transferred the <animalpak.net> domain name immediately at no cost.
d) Respondent did not register the <animalpak.net> domain name for the purpose of selling it to Complainant.
e) Respondent did not register the <animalpak.net> domain name in an effort to disrupt Complainant’s business.
FINDINGS
The panel finds that Respondent has consented to the transfer of the <animalpak.net> domain name to the Complainant.
Dispositive Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <animalpak.net> domain name to Complainant. In such a circumstance, a panel may forgo the traditional UDRP analysis and order an immediate transfer of the <animalpak.net> domain name. 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.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
It is Ordered that the <animalpak.net> domain name be transferred from Respondent to Complainant.
Kendall Reed, Panelist
Dated: January 10, 2013
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