national arbitration forum

 

DECISION

 

Universal Protein Supplments Corporation d/b/a Universal Nutrition v. Above.com Domain Privacy

Claim Number: FA1301001482538

 

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 Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <universalnutrtion.com>, registered with Above.Com Pty Ltd.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2013; the National Arbitration Forum received payment on January 29, 2013.

 

On January 29, 2013, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <universalnutrtion.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name.  Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 January 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 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@universalnutrtion.com.  Also on January 30, 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 March 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

  1. Complainant
    1. 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’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant registered <universalnutrition.com> domain name on July 22, 1998.
    2. 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).
    3. Respondent’s <universalnutrtion.com> domain name is nearly identical and confusingly similar to a trademark or service mark in which Complainant has rights because it omits only a single letters and adds the generic top-level domain (“gTLD”) “.com.”
    4. Respondent has no rights or legitimate interests in the disputed domain name.

                                          i.    Respondent is not commonly known by the disputed domain name.

                                         ii.    Respondent uses the <universalnutrtion.com> domain name to divert users away from Complainant’s website and toward its own.

                                        iii.    Respondent intends to sell the disputed domain name for profit as evidenced by auction-style listings at Sedo.

                                       iv.    Respondent uses the disputed domain name to divert users away from Complainant’s website and toward its own, which hosts a “link farm” designed to earn Respondent click-through advertising revenue. This is not a bona fide offering of goods or services or a legitimate non-commercial or fair use.

    1. Respondent’s disputed domain name was registered and is being used in bad faith.

                                          i.    Respondent intends to sell the disputed domain name for profit.

                                         ii.    Respondent is using the disputed domain name primarily for the purpose of disrupting Complainant’s competing business.

                                        iii.    Respondent intentionally attempts to divert Complainant’s customers by creating a likelihood of confusion.

                                       iv.    Respondent was aware of Complainant’s prior use and registration of the UNIVERSAL NUTRITION mark.

    1. Respondent created the <universalnutrtion.com> domain name on May 8, 2012.

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its UNIVERSAL NUTRITION mark.

2.    Respondent’s <universalnutrtion.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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

 

Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition, asserts that it is one of the leading providers of sports nutrition health products in the world. Complainant argues that its sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant claims that it registered <universalnutrition.com> on July 22, 1998. Complainant contends that it is the owner of trademark registrations with the USPTO for the UNIVERSAL NUTRITION mark (e.g., Reg. No. 3,020,559, registered November 29, 2005). Complainant also contends that it owns a trademark registration with OHIM for the UNIVERSAL NUTRITION mark (Reg. No. 5,913,017, registered April 24, 2008). The Panel notes that although Respondent appears to reside within Australia, prior panels have found that it is irrelevant whether complainant registers its trademark in the country of respondent’s residence under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel holds that, due to Complainant’s registration of the UNIVERSAL NUTRITION mark with multiple trademark agencies, Complainant has sufficiently demonstrated its rights in the mark pursuant to Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant asserts that Respondent’s <universalnutrtion.com> domain name is nearly identical and confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Respondent’s disputed domain name eliminates the first “i” in the word “nutrition” in Complainant’s UNIVERSAL NUTRITION mark. The Panel finds that Respondent’s removal of the letter “i” does not differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel notes that Respondent omits the space between “UNIVERSAL” and “NUTRITION” in Complainant’s mark. Complainant also contends that the use of the generic top-level domain (“gTLD”) “.com” is without significance under Policy ¶ 4(a)(i). In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel determined that the elimination of the space between words of the complainant’s mark, as well as the addition of a gTLD, does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). Accordingly, the Panel holds that Respondent’s <universalnutrtion.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant contends that no evidence shows that Respondent’s name is “Universal Nutrition.” Complainant claims that according to the WHOIS listing for the disputed domain name, Respondent’s name is apparently “Above.com Domain Privacy.” See Complainant’s Exhibit G. Complainant contends that Respondent will not be able to point to any evidence establishing that it is legally chartered or commonly known by the UNIVERSAL NUTRITION name. The Panel finds that Respondent does not provide evidence that it is  commonly known by the disputed domain name, and therefore, Respondent is not commonly known by the domain name under 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).

 

Complainant argues that Respondent uses the <universalnutrtion.com> domain name to divert users away from Complainant’s website and toward its own. Complainant asserts that at Respondent’s domain name, users are confronted with a “link farm” designed to earn Respondent “click-through” advertising revenue. Complainant asserts that linking to third-party websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel  notesss that Respondent’s domain name resolves to a website that features competing links such as “WANT TO LOSE BELLY FAT?” and “LOW CARB SHAKE.” See Complainant’s Exhibit H. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the respondent’s disputed domain names resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under the complainant’s mark, the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Thus, the Panel  holds that Respondent’s linking to third-party websites is not a use in connection with a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant claims that Respondent intends to sell the disputed domain name for profit. The Panel notes that Respondent’s domain name is listed for sale with Sedo. Complainant asserts that the auction price for the disputed domain name as of December 14, 2012, is a 60 USD minimum. See Complainant’s Exhibit I. Therefore, the Panel concludes that Respondent’s offer to sell the domain name demonstrates that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the disputed domain name primarily for the purpose of disrupting Complainant’s competing business. Complainant contends that Respondent’s disruption of Complainant’s business is evidenced by using a domain name that was confusingly similar to Complainant’s UNIVERSAL NUTRTION mark and by linking to websites that offer competing goods for sale. The Panel notes that Respondent’s disputed domain name resolves to a web page that links to websites titled “HARD CORE WORKOUT VIDEOS,” “WEIGHT LOSS PROGRAM,” “JENNY CRAIG OFFICIAL SITE,” and others. See Complainant’s Exhibit H. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that the disputed domain names resolved to websites that listed links to competitors of complainant, which is evidence that respondent intends to disrupt complainant’s business. Therefore, the Panel determines that Respondent’s disruption of Complainant’s business indicates bad faith use and registration pursuant to Policy ¶ 4(b)(iii).

 

Complainant contends that Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion. Complainant claims that Respondent uses a confusingly similar domain name so that consumers who mistype Complainant’s domain name will incorrectly assume an affiliation between the resolving website and Complainant. Complainant argues that Respondent profits from pay-per-click links through the domain name. Prior panels have held that a respondent’s use of a domain name to provide links to complainant’s competitors, where respondent presumably commercially benefits from the misleading domain name by receiving click-through fees, demonstrates 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.’”).

 

Complainant asserts that Respondent was aware of Complainant’s prior use and registration of the UNIVERSAL NUTRITION mark. Complainant argues that Respondent’s actual knowledge of Complainant’s mark is demonstrated by Respondent’s registration of a nearly identical domain name and Respondent’s use of the domain name to redirect users to Internet sellers of nutritional supplements competitive with Complainant. The Panel holds that Respondent’s actual knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark proves that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).

 

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 <universalnutrtion.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr, Panelist

Dated:  March 13, 2013

 

 

 

 

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