NAC Marketing Company, LLC v. Western Holdings, LLC
Claim Number: FA1303001490481
Complainant is NAC Marketing Company, LLC (“Complainant”), represented by Britt L. Anderson of K&L Gates LLP, California, USA. Respondent is Western Holdings, LLC (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <betaprostin.com> and <betaprostinate.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2013; the National Arbitration Forum received payment on March 20, 2013.
On March 19, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <betaprostin.com> and <betaprostinate.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 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@betaprostin.com, and postmaster@betaprostinate.com. Also on March 21, 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 April 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
i. There is no evidence to show that Respondent is known by or operates a business under the “Betaprostin” or “Betaprostinate” name or has any trademark rights in that name.
ii. The domain names resolve to a website which sells products that compete directly with Complainant’s products.
i. Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor.
ii. Respondent has intentionally intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
iii. Respondent registered the domain names despite the abundant actual and constructive notice that Respondent has of the BETA PROSTATE marks.
iv. Respondent has engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is NAC Marketing Company, LLC c/o K&L Gates LLP who list its address as Palo Alto, CA, USA. Complainant markets and sells a wide range of vitamins, health supplements and personal care products directly to consumers and through a range of online and traditional retail channels. In addition to owning USA trademark registrations for BETA PROSTATE and SUPER BETA PROSTATE, Complainant maintains several websites which include their marks such as <betaprostate.com> and <buysuperbeta.com>.
Respondent is Western Holdings LLC who list its address as Carson City, NV, USA. Respondent’s registrar list its address as Scottsdale, AZ, USA. Respondent registered the <betaprostin.com> and <betaprostinate.com> domain names on July 24, 2012 and November 1, 2012, respectively.
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, NAC Marketing Company, LLC, argues that it markets and sells a wide range of vitamins, health supplements, and personal care products directly to consumers and through a range of online and traditional retail channels. Complainant claims that it is the owner of trademark registrations with the USPTO for the BETA PROSTATE mark (Reg. No. 2,287,219, registered October 19, 1999) and for the SUPER BETA PROSTATE mark (Reg. No. 4,209,153, registered September 18, 2012). See Complainant’s Annex C, Exhibit A. The Panel notes that Respondent appears to reside within the United States. The Panel finds that Complainant’s registration of the BETA PROSTATE and SUPER BETA PROSTATE marks with the USPTO demonstrates its rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <betaprostin.com> and <betaprostinate.com> domain names are confusingly similar to Complainant’s BETA PROSTATE marks as they incorporate the BETA and PROST portions of the mark, with the only difference being the substitution of the letters “in” for “ate” for the <betaprostin.com> domain name and the addition of the letters “in” for the <betaprostinate.com> domain name. The Panel finds that adding the letters “in” to Complainant’s mark does not differentiate the domain names from the marks under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). The Panel further notes that Respondent removes the spaces between the words “BETA” and “PROSTATE” in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to the domain names. The Panel finds that the removal of a space and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of 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).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that there is no evidence to show that Respondent is known by or operates a business under the “Betaprostin” or “Betaprostinate” name or has any trademark rights in that name. Complainant argues that the WHOIS contact information for the disputed domain names indicates Respondent is known as “Western Holdings LLC.” See Complainant’s Annex B. Complainant also asserts that it has not licensed or otherwise permitted Respondent’s use of any of Complainant’s marks or to register any domain name incorporating those marks. The Panel notes that Respondent fails to provide additional evidence showing that it is known by either of the disputed domain names. The Panel finds that Respondent is not commonly known by the <betaprostin.com> or <betaprostinate.com> 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 contends that the domain names resolve to a website which sells products that compete directly with Complainant’s products. The Panel notes that Respondent uses the site to sell a competing product called “Super Prostinate.” See Complainant’s Annex J. The Panel finds that Respondent’s use of the disputed domain names 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 Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor. Complainant argues that Respondent registered the domain names for the purpose of selling a product that competes directly with Complainant, and Respondent’s <betaprostin.com> and <betaprostinate.com> domains now resolve to a website featuring this competitive product. Complainant asserts that Respondent sells a male dietary supplement product that competes directly with Complainant’s BETA PROSTATE product. The Panel again notes that Respondent uses the site to sell a competing product called “Super Prostinate.” See Complainant’s Annex J. The Panel finds Respondent’s competing use of the disputed domain name disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent has intentionally intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent has consistently sought to take commercial advantage of the goodwill associated with Complainant’s BETA PROSTATE marks. Complainant alleges that Respondent seeks to create confusion with Complainant through Respondent’s registration of confusingly similar domain names, Respondent’s sale of nearly identical products, and Respondent’s attempts to mimic the appearance of Complainant’s <betaprostate.com> site at Respondent’s own domains. For example, Complainant claims that Respondent’s homepage features a graphic of a men’s urinal, which is almost identical to the one used on Complainant’s site, that Respondent’s website places features such as its telephone number and the text entry box to sign up to the mailing list in locations that are identical to their placement on Complainant’s site, and that Respondent’s website features a callout box with the words SUPER PROSTATE in large font, which represents an attempt to create confusion with Complainant’s SUPER BETA PROSTATE mark. Complainant asserts that Respondent sells a male dietary supplement product that competes directly with Complainant’s BETA PROSTATE product. The Panel finds that Respondent’s use of the disputed domain names to intentionally attract Internet users to its website for its own commercial gain shows bad faith use and registration 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 also asserts that Respondent has engaged in typosquatting. Complainant argues that Respondent’s registration of the <betaprostin.com> and <betaprostinate.com> domain names reflects an attempt to capitalize on accidental misspellings or mistakes by Internet users who are searching for Complainant’s products. The Panel finds that Respondent’s registration of the disputed domains does in fact demonstrate typosquatting. The Panel further finds that such typosquatting activity is evidence of Policy ¶ 4(a)(iii) bad faith registration and use in and of itself. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <betaprostin.com> and <betaprostinate.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 6, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page