national arbitration forum

 

DECISION

 

Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Vlad Claudiu Andries

Claim Number: FA1211001473742

 

PARTIES

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 Vlad Claudiu Andries (“Respondent”), Romania.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <animalpakreview.com>, registered with Enom, Inc.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.

 

On December 3, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <animalpakreview.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@animalpakreview.com.  Also on December 4, 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 January 3, 2013, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant incorporated in 1983 in the State of New Jersey, USA, and since that time has become one of the leading providers of sports nutrition health products in the world.

 

Complainant owns at least 20 federal registrations and a European Union trademark registration for the ANIMAL PAK mark, including: United States Patent and Trademark Office ("USPTO") Reg. No. 2,437,306 registered Mar. 20, 2001 and European Union Office for Harmonization in the Internal Market (“OHIM”) Reg. No. 004046521 registered Jan. 18, 2006.

 

Respondent registered the <animalpakreview.com> domain name on December 15, 2010. 

 

Respondent’s <animalpakreview.com> domain name is identical to the ANIMAL PAK mark, despite the additions of the generic top-level domain “.com” and the generic term “review” within the domain name.

Respondent has no rights or legitimate interests in the disputed domain name. 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 uses the disputed domain name to divert Internet users away from Complainant’s website and toward Respondent’s own website where it offers “superficial commentary and links to other websites designed to earn Respondent ‘click-through’ advertising revenue.”  Respondent’s linking to third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent is not commonly known by the disputed domain name as there is no evidence that shows that Respondent’s name is “Animal Pak Review,” and it appears that Respondent is “apparently a bodybuilding instructor and nutrition consultant named Alex.”  Further, there is no evidence to show that “Animal Pak Reviews” is a legally chartered or commonly known name.  Therefore, Respondent cannot satisfy the requirements of Policy ¶ 4(c)(ii).

 

The disputed domain name was registered and is being used in bad faith.  Respondent’s bad faith is evidenced by its use of Complainant’s ANIMAL PAK mark primarily for the purpose of disrupting Complainant’s business.  Respondent’s use of click-through links to competing businesses has disrupted and continues to disrupt Complainant’s business. Respondent is intentionally attempting to divert Complainant’s customers to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.  By using Complainant’s mark within the domain name, Respondent is creating a likelihood of confusion with Complainant and its mark from which Respondent profits through pay-per-click links available on the resolving website. Respondent was aware of Complainant’s prior use and registration of the ANIMAL PAK mark prior to registering and using the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding. However in an email to the dispute resolution provider the National Arbitration Forum dated January 3, 2013, Respondent asserts that it has let the domain name expire.

 

FINDINGS

Complainant owns trademark registrations with the USPTO and OHIM for its ANIMAL PAK mark.

 

Complainant’s trademark rights in ANIMAL PAK predate Respondent’s registration of at-issue domain name.

 

At the time the Complaint was filed the WHOIS information identified “Vlad Claudiu Andries” as at-issue domain name’s registrant.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent’s at-issue domain addresses a website offering superficial commentary and links to third parties including to Complainant’s competitors. The website is designed to earn Respondent ‘click-through’ advertising revenue.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant owns USPTO as well as OHIM registrations for the ANIMAL PAK mark. Therefore, the Panel finds that Complainant has rights in the ANIMAL PAK mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Respondent’s <animalpakreview.com> domain name is confusingly similar to Complainant’s ANIMAL PAK mark. Adding the generic term “review” to Complainant’s ANIMAL PAK trademark (without the space), and then appending the top level domain name “.com” thereto, does not distinguish the at-issue domain name from Complainant’s mark under Policy ¶4(a)(i).  See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); 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)).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of his rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Vlad Claudiu Andries” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Further, Respondent has never used the at-issue domain name or any name associated with it in connection with a bona fide offering of goods or services. Respondent uses the disputed domain name to divert Internet users away from Complainant’s website and toward Respondent’s own website where it offers superficial commentary and links to other websites designed to earn Respondent click-through advertising revenue. Respondent’s use of the domain name to facilitate linking to third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii).  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith under Policy ¶4(a)(iii) in registering and using the at-issue domain name.

 

Respondent uses the at-issue domain name primarily for the purpose of disrupting Complainant’s business via the <animalpakreview.com> website’s click-through links to third party and competing businesses. Respondent’s website appears to contain several “Buy Now” clickable links to products that compete with Complainant in the bodybuilding market. Therefore, the Panel concludes, pursuant to Policy ¶ 4(b)(iii), that Respondent has registered and is using the at-issue domain name in bad faith.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Additionally, Respondent is intentionally attempting to divert Complainant’s customers to Respondent’s website by creating confusion between the at-issue domain name and Complainant’s ANIMAL PAK trademark.  By using Complainant’s mark within the confusingly similar <animalpakreview.com> domain name, Respondent creates a likelihood of confusion between the domain name and Complainant’s mark from which Respondent profits through the pay-per-click links available on his <animalpakreview.com>website.  These circumstances demonstrate that Respondent has registered and is using the disputed domain name in bad faith under 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.’”).

 

Finally, Respondent was undoubtedly aware of Complainant’s ANIMAL PAK mark when he registered the at-issue domain name. Complainant’s registered ANIMAL PAK trademark is well known throughout the world. Complainant’s mark is comprised of terms not normally found in juxtaposition, thus further suggesting Respondent knew of the Complainant’s trademark prior to registering <animalpakreview.com>. Additionally, Respondent’s use of the domain name to address a website displaying links to entities that compete with Complainant further suggests that Respondent had knowledge of Complainant and its ANIMAL PAK trademark before he registered the at-issue domain name. Given the foregoing, it is implausible to hold that Respondent did not have knowledge of the ANIMAL PAK mark prior to registering the at-issue domain name. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Registering a domain name with prior knowledge of another’s rights therein indicates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <animalpakreview.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  January 6, 2013

 

 

 

 

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