Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Maria C Campos
Claim Number: FA1303001488456
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 Maria C Campos (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalsuplementos.com>, registered with UNIVERSO ONLINE S/A (UOL).
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2013; the National Arbitration Forum received payment on March 4, 2013. The Complaint was submitted in both Portuguese and English.
On March 4, 2013, UNIVERSO ONLINE S/A (UOL) confirmed by e-mail to the National Arbitration Forum that the <universalsuplementos.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) has verified that Respondent is bound by the UNIVERSO ONLINE S/A (UOL) 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 March 8, 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 28, 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@universalsuplementos.com. Also on March 8, 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 April 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Pursuant to Rule 11(a), the Panel determines that 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 will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s business and website
a. Respondent registered the <universalsuplementos.com> domain name on June 17, 2010.
b. Through its website housed at the disputed domain name, Respondent uses Complainant’s marks to sell nutritional supplements and fitness products that are purportedly made by Complainant and others, in direct competition with the legitimate manufacturers of those products.
c. Respondent’s website displays several products made by Complainant, including ANIMAL Rage, UNIVERSAL Creatine Chews, and various sizes of UNIVERSAL Creatine Powder.
2. Policy ¶ 4(a)(i)
a. Complainant has used the UNIVERSAL and UNIVERSAL NUTRITION trademarks continuously since at least 1983 in connection with the sale of nutritional supplements.
b. Complainant holds trademark registrations with numerous trademark authorities, including the United States Patent and Trademark Office (“USPTO”), for the UNIVERSAL & Design (e.g., Reg. No. 3,555,885 registered January 6, 2009) and UNIVERSAL NUTRITION (e.g., Reg. No. 3,020,559 registered November 29, 2005) marks.
c. Respondent’s <universalsuplementos.com> domain name is confusingly similar to Complainant’s marks.
3. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <universalsuplementos.com> domain name.
b. Respondent does not have, and never has had, permission to use Complainant’s trademarks.
c. The disputed domain name was registered without Complainant’s knowledge or authorization.
d. Respondent uses the disputed domain name to divert users away from Complainant’s websites and toward its own, where it sells nutritional supplements competing with Complainant’s products.
4. Policy ¶ 4(a)(iii)
a. By using a domain name confusingly similar to Complainant’s marks to sell Complainant’s products and other goods in direct competition, Respondent has intentionally attempted to disrupt, and is currently disrupting, Complainant’s business.
b. Respondent has intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
c. At the time of registry, Respondent was aware of Complainant’s rights in its UNIVERSAL and UNIVERSAL NUTRITION marks.
i. At the very least, Respondent had constructive knowledge of Complainant’s rights, given that Complainant’s European Union and U.S. federal registrations for the UNIVERSAL and UNIVERSAL NUTRITION marks predate Respondent’s registry of the <universalsuplementos.com> domain name.
ii. Further, Respondent’s domain registration date came years after Complainant registered its <universalnutrition.com> and <universalusa.com> domains.
iii. Respondent’s website displays several products made by Complainant, including ANIMAL Rage, UNIVERSAL Creatine Chews, and various sizes of UNIVERSAL Creatine Powder.
iv. Respondent uses the domain to sell Complainant’s products, as well as nutritional supplements competitive with those offered by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.”).
Complainant claims rights in the UNIVERSAL and UNIVERSAL NUTRITION trademarks under Policy ¶ 4(a)(i). The Panel notes that Complainant has provided evidence to show that it holds trademark registrations with numerous trademark authorities, including the USPTO, for the UNIVERSAL & Design (e.g., Reg. No. 3,555,885 registered January 6, 2009) and UNIVERSAL NUTRITION (e.g., Reg. No. 3,020,559 registered November 29, 2005) marks. The Panel determines that Complainant’s registration of the marks with various trademark authorities is sufficient to confer rights in the marks under Policy ¶ 4(a)(i), despite the fact that Complainant has not specifically demonstrated registration in Respondent’s home country. 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’)”); see also 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).
Complainant further claims that Respondent’s <universalsuplementos.com> domain name is confusingly similar to Complainant’s marks. Complainant notes that the disputed domain name adds only the term “suplementos,” the Spanish and Portuguese word for “supplements,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s UNIVERSAL mark. The Panel finds that neither alteration is sufficient to distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel finds that Respondent’s <universalsuplementos.com> domain name is confusingly similar to Complainant’s UNIVERSAL mark for the purposes of Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that Respondent is not commonly known by the <universalsuplementos.com> domain name within the meaning of Policy ¶ 4(a)(ii). Complainant asserts that the disputed domain name was registered without Complainant’s knowledge or authorization, and that Respondent does not have, and never has had, permission to use Complainant’s trademarks. Complainant also notes that according to the WHOIS listing for the disputed domain, Respondent’s name is apparently “Maria C Campos.” Given the foregoing evidence, coupled with Respondent’s failure to provide a Response, the Panel determines that Respondent is not commonly known by the <universalsuplementos.com> domain name within the meaning of Policy ¶ 4(a)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent is not using the <universalsuplementos.com> domain name in connection with 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). Complainant claims that Respondent uses the disputed domain name to divert users away from Complainant’s websites and toward its own, where Respondent sells nutritional supplements and fitness products that are purportedly made by Complainant and others, in direct competition with the legitimate manufacturers of those products. Previous panels have agreed that the use of a disputed domain name for the purpose of selling counterfeit versions of a complainant’s products, as well as other products which directly compete with the complainant’s products, comports with neither a bona fide offering of goods or services nor a noncommercial or fair use. See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business); see also 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).”). Consequently, the Panel concludes that Respondent has not used the <universalsuplementos.com> domain name in connection with 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).
Complainant has proven this element.
Complainant contends that by using a domain name confusingly similar to Complainant’s marks to sell Complainant’s products and other goods in direct competition, Respondent has intentionally attempted to disrupt, and is currently disrupting, Complainant’s business in bad faith. Previous panels have found bad faith registration and use where a respondent uses a disputed domain to offer products competing with those offered by Complainant, including what appear to be counterfeit versions of Complainant’s own products. See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use). The Panel determines that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by improperly disrupting Complainant’s business.
Complainant also contends that Respondent has intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion, which contravenes Policy ¶ 4(b)(iv). Complainant posits that Respondent uses a confusingly similar domain name to misdirect consumers who incorrectly assume an affiliation with Complainant to Respondent’s competing online fitness supplements store, where Respondent profits through the misappropriation of Complainant’s goodwill. The Panel agrees and finds that Respondent’s choice of the <universalsuplementos.com> domain name was likely motivated by the domain’s similarity to Complainant’s marks, which Respondent hoped to exploit for the purpose of selling competing nutritional supplements. The Panel finds and holds that Respondent has registered and used the <universalsuplementos.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Complainant argues that at the time Respondent registered the <universalsuplementos.com> domain name, Respondent was aware of Complainant’s rights in its UNIVERSAL and UNIVERSAL NUTRITION marks. Complainant claims that at the very least, Respondent had constructive knowledge of Complainant’s rights, given that Complainant’s European Union and U.S. federal registrations for the UNIVERSAL and UNIVERSAL NUTRITION marks predate Respondent’s registry of the disputed domain name. Complainant further notes that Respondent’s domain registration date came years after Complainant registered its <universalnutrition.com> and <universalusa.com> domains. Moreover, Complainant claims that Respondent’s actual knowledge of Complainant and its rights is illustrated by the fact that Respondent uses the disputed domain to sell what purport to be Complainant’s products, as well as nutritional supplements competitive with those offered by Complainant. Complainant also alleges that Respondent’s website displays several products made by Complainant, including ANIMAL Rage, UNIVERSAL Creatine Chews, and various sizes of UNIVERSAL Creatine Powder. The Panel disregards Complainant's arguments concerning constructive knowledge, as previous panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge and therefore concludes that Respondent registered the <universalsuplementos.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalsuplementos.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 9, 2013
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