Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Flavio Moreira Tavares
Claim Number: FA1302001483544
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 Flavio Moreira Tavares (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalpak44.com>, registered with Universo Online S/A (UOL).
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 5, 2013; the National Arbitration Forum received payment February 5, 2013. The Complaint was submitted in both Portuguese and English.
On February 6, 2013, Universo Online S/A (UOL) confirmed by e-mail to the National Arbitration Forum that the <animalpak44.com> domain name is registered with Universo Online S/A (UOL) and that Respondent is the current registrant of the name. Universo Online S/A (UOL) verified that Respondent is bound by the Universo Online S/A (UOL) registration agreement and 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 21, 2013, the Forum served the Portuguese language Complaint and all Annexes, including a Portuguese language Written Notice of the Complaint, setting a deadline of March 13, 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@animalpak44.com. Also on February 21, 2013, the Portuguese language 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 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent is not commonly known by the disputed domain name.
ii. 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’s use of the disputed domain name is not for any legitimate noncommercial or fair use.
i. Respondent’s bad faith is evinced by its use of Complainant’s trademark primarily for the purpose of disrupting Complainant’s competing business.
ii. Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
iii. Respondent was aware of Complainant’s prior use and registration of the ANIMAL PAK mark.
Language of the Proceedings
The Registration Agreement is written in Portuguese, thereby making the language of the proceedings Portuguese. After review of the applicable rules on language of the proceedings under the UDRP, the Panel finds:
Pursuant to Rule 11(a), the language requirement has been satisfied through the Portuguese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no rights to or legitimate interests in the domain name containing in its entirety Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition contends that it has become one of the leading providers of sports nutrition health products in the world. Complainant asserts that it owns numerous trademark registrations for the ANIMAL PAK mark in the United States, the European Union, and elsewhere throughout the world. Complainant argues that its registrations cover the following goods: dietary food supplements and nutritional supplements in International Class 5, and other related goods in International Classes 25 and 29. Complainant claims that it registered <animalpak.com> March 17, 2000. Complainant asserts that it is the owner of trademark registrations with the USPTO for the ANIMAL PAK mark (Reg. No. 2,437,306, registered March 20, 2001). See Complainant’s Group Exhibit B. Complainant contends that it also owns several trademark registrations for the ANIMAL PAK mark in various countries throughout the world. See Complainant’s Group Exhibit B. Although Respondent appears to reside in Brazil, the Panel finds that Complainant does not need to register its mark in the country that Respondent operates in to sufficiently prove that it has rights in the mark under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the ANIMAL PAK mark with various countries throughout the world, including the USPTO, demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant contends that Respondent’s <animalpak44.com> domain name is nearly identical and confusingly similar to Complainant’s ANIMAL PAK mark as the use of the gTLD “.com” is without significance under Policy ¶ 4(a)(i). The . The Panel notes that removing a space in Complainant’s ANIMAL PAK mark does not distinguish Respondent’s disputed domain name from Complainant’s mark under a Policy ¶ 4(a)(i) analysis. See 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)). Complainant also argues that the addition of “44” in the <animalpak44.com> domain name similarly is insignificant. The Panel finds that the addition of numerals does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
Thus, the Panel finds that Respondent’s <animalpak44.com> domain name is confusingly similar to Complainant’s ANIMAL PAK mark under Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof 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 contends that Respondent is not commonly known by the disputed domain name. Complainant asserts the WHOIS listing for the disputed domain name lists Respondent as “Flavio Moreira Tavares.” See Complainant’s Exhibit G. Complainant argues that Respondent will not be able to point to any evidence establishing that it is legally chartered or commonly known by the ANIMAL PAK name. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that 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. Complainant claims that Respondent uses the <animalpak44.com> domain name to divert users away from Complainant’s <animalpak.com> website and toward its own, where it sells nutritional supplements competing with Complainant’s products. See Complainant’s Exhibit H. Complainant contends that Respondent’s use of the disputed domain name is not for any legitimate noncommercial or fair use. Complainant asserts that Respondent’s website to which the disputed domain resolves is a purely commercial enterprise. The Panel finds that Respondent’s use of the disputed domain name to sell competing products is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent’s bad faith is evidenced by its use of Complainant’s trademark primarily for the purpose of disrupting Complainant’s competing business. Complainant contends that Respondent disrupts Complainant’s business by using the disputed domain name to sell goods directly competitive with Complainant’s ANIMAL PAK products. See Complainant’s Exhibit H. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found that respondent was acting in bad faith where respondent was appropriating the complainant’s mark to divert complainant’s customers to respondent’s competing business. Thus, the Panel here finds that Respondent’s disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii).
Complainant argues that Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion. Complainant claims that Respondent is using the disputed domain name to distract potential customers of Complainant’s business by capitalizing on mistaken or confused Internet users. Complainant asserts that Respondent uses the domain name to drive traffic to its online fitness supplements store. See Complainant’s Exhibit H. The Panel finds that Respondent is using the disputed domain name to divert Internet users to its website for its own commercial gain and the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant asserts that Respondent was aware of Complainant’s prior use and registration of the ANIMAL PAK mark. Complainant contends that Respondent did not register the disputed domain name until after Complainant registered its <animalpak.com> domain name. Complainant also argues that Respondent is using the domain name to redirect Internet users to Internet sellers of nutritional supplements similar to Complainant’s business. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").i
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animalpak44.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 9, 2013.
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