Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Antonio Rodriguez
Claim Number: FA1305001501947
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 Antonio Rodriguez (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutrition.org>, registered with eNom, Inc. (R39-LROR).
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2013; the National Arbitration Forum received payment on May 28, 2013.
On May 29, 2013, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <universalnutrition.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-LROR) 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 May 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@universalnutrition.org. Also on May 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 June 24, 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 has become one of the leading providers of sports nutrition health products in the world. Complainant registered <universalnutritition.com> on July 22, 1998.
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).
Respondent’s domain name is identical to UNIVERSAL NUTRITION as the use of the generic top-level domain “.org” is without significance under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name. Respondent uses the <universalnutrition.org> domain name to divert users away from Complainant’s website, redirecting them to a landing page where they are confronted with a link farm designed to generate click-through revenue.
The disputed domain name was registered and is being used in bad faith. Respondent’s bad faith is evinced by its use of Complainant’s trademark primarily for the purpose of disrupting and competing with Complainant’s business. Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
Respondent was aware of Complainant’s prior use of the UNIVERSAL NUTRITION mark.
The disputed <universalnutrition.org> domain name was registered in March 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for UNIVERSAL NUTRITION.
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 addresses a landing page offering click-through links designed to create revenue for Respondent.
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.
Complainant’s USPTO 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).”).
Respondent’s domain name is identical to Complainant’s UNIVERSAL NUTRITION mark since the use of the top level domain name “.org” is insignificant under Policy ¶ 4(a)(i) as is Respondent’s deletion of the space separating the terms in Complainant’s mark. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
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 “Antonio Rodriguez” 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 uses the <universalnutrition.org> domain name to divert users away from Complainant’s website, redirecting them to a landing page where they are confronted with a link farm designed to generate click-through revenue. The at-issue domain name resolves to a webpage featuring links titled “Muscle Supplements,” “Body Building Supplements,” and “Looking for Sports Nutrition?” These websites sell Complainant’s goods. Respondent does not offer any noncommercial information through, or make other fair use of, its domain name and uses the domain name solely to earn “click-through” revenues. Respondent’s use of 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 Tercent, Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also 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)
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.
Respondent disrupts Complainant’s business by using a domain name identical to Complainant’s UNIVERSAL NUTRITION mark to sell its products and others goods in direct competition with Complainant’s goods. Respondent’s use of a domain name to provide a hyperlink directory containing links to the complainant’s competitors demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent intentionally attempts to divert Complainant’s customers by creating a likelihood of confusion as to the sponsorship of the <universalnutrition.org> webpage. Respondent uses the confusingly similar at-issue domain name to divert Complainant’s potential customers by capitalizing on their confusion as to the sponsorship of Respondent’s webpage. Respondent benefits when visitors to its webpage navigate using the webpage’s competing pay-per-click links. Respondent’s use of the at-issue domain name in this manner demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (finding that respondent's prior use of the <mailonsunday.com> domain name was evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to complainant's competitors and respondent presumably commercially benefitted from the misleading domain name by receiving ‘click-through-fees).
Finally, considering that the <universalnutrition.org> domain name is identical to the UNIVERSAL NUTRITION mark and that the domain name’s landing webpage is designed to earn Respondent “click-through” advertising revenue, it is clear that Respondent must have had knowledge of Complainant’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 <universalnutrition.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 26, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page