Universal Protein Supplements Corporation d/b/a Universal Nutrition v. PPA Media Services / Ryan G Foo
Claim Number: FA1301001482332
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 PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutrion.com>, registered with INTERNET.BS CORP.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2013; the National Arbitration Forum received payment on January 28, 2013.
On January 31, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <universalnutrion.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 February 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2013 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@universalnutrion.com. Also on February 1, 2013, 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 February 28, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition, is one of the leading providers of sports nutrition health products in the world.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UNIVERSAL NUTRITION mark (e.g., Reg. No. 3,020,559, registered November 29, 2005). Complainant also owns a trademark registration with the Office for Harmonization in the Internal Market (“OHIM”) for the UNIVERSAL NUTRITION mark (Reg. No. 5,913,017, registered April 24, 2008).
Respondent is not authorized to use Complainant’s trademark.
Respondent’s domain name is nearly identical and confusingly similar to a trademark or service mark in which Complainant has rights. Additionally, the use of the generic top-level domain “.com” is without significance under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name and Respondent is not commonly known by the disputed domain name.
Respondent is using the <universalnutrion.com> domain name to divert users away from Complainant’s website, redirecting them to <onlinefwd.com>, where they are confronted with a “link farm” designed to earn Respondent “click-through” advertising revenue.
The disputed domain name was registered and is being used in bad faith. Respondent intends to sell the disputed domain name for a profit, as evidenced by auction-style listings at Sedo. Respondent is using the disputed domain name primarily for the purpose of disrupting Complainant’s competing business.
Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion. At the time of registry, Respondent was aware of Complainant’s rights in its UNIVERSAL NUTRITION mark.
Respondent registered the <universalnutrion.com> domain name on January 11, 2006.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and OHIM.
Complainant’s trademark rights in UNIVERSAL NUTRITION predate Respondent’s registration of at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain name redirects traffic to a website addressed by another domain name. The landing website offers links under various nutrition related topics which in turn list links to various third parties some of which compete with Complainant. The website is designed to earn Respondent ‘click-through’ advertising revenue.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Either of Complainant’s USPTO registration or OHIM registration for the UNIVERSAL NUTRITION mark is conclusive evidence of Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); 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).”). It is immaterial that Respondent may reside outside the jurisdiction of the trademark’s registrar. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <universalnutrion.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark. In forming the domain name Respondent removes the letters “t” and “i” in “NUTRITION” from the UNIVERSAL NUTRITION mark. Respondent’s resulting and intended misspelling of Complainant’s mark in the second level domain name does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Further, removing the space between the terms in Complainant’s mark and the appending the top level domain name, ”com,” are individually and collectively insignificant under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (concluding that the elimination of spaces between words, as well as the addition of a gTLD does not sufficient distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i)).
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 “PPA Media Services / Ryan G Foo” 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).
Respondent is using the <universalnutrion.com> domain name to divert users away from Complainant’s website, redirecting them to <onlinefwd.com>, where they are confronted with a “link farm” designed to earn Respondent click-through” advertising revenue. The <universalnutrion.com> domain name ultimately addresses a website featuring a variety of images accompanied by hyperlinks to various nutrition products and services, as well as another website that is dominated by hyperlinks to an array of competing third-party domain names. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c((iii). 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.
Additionally, Respondent’s rights and legitimate interests in the at-issue domain name are also shown to be lacking because Respondent has posted the domain name for auction with a minimum bid far in excess of its registration fee. Respondent’s decision to offer the <universalnutrion.com> domain name for sale further suggests that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
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 which also shows that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent has posted the at-issue domain name on an auction website with a starting bid far in access of its acquisition cost. Respondent’s action suggests that Respondent registered and is using the <universalnutrion.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
As also mentioned above, Respond is using the confusingly similar domain name to market and advertise products that compete with those offered by Complainant. The confusing nature of the domain name manuevers Internet users looking for Complainant, but who have misspelled Complainant’s trademark, to competing websites. Therefore, the Panel finds that that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(iii). 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).”)
Furthermore, Respondent’s use of the confusingly similar domain name to lure consumers looking for Complainant to a monetized landing page and presumably profiting by way of click-through fees whenever confused Internet users utilize the displayed hyperlinks demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, considering that the <universalnutrion.com> domain name is nearly identical to the UNIVERSAL NUTRITION mark and that the domain name’s landing website is designed to target markets and products similar to those sold under the UNIVERSAL NUTRITION mark, it is undeniable that Respondent must have had knowledge of Respondent’s rights in the UNIVERSAL NUTRITION mark before it registered the at-issue domain name. Registering the trademark of another with prior knowledge thereof shows bad faith under Policy ¶4(a)(iii) See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutrion.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 28, 2013
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