Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition
Claim Number: FA1307001510186
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 Universal Nutrition (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uniprotein.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 17, 2013; the National Arbitration Forum received payment on July 17, 2013.
On July 18, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <uniprotein.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLIC-DOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 July 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@uniprotein.com. Also on July 18, 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 tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2013, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Dating from 1983, Complainant, doing business as “Universal Nutrition,” has acquired rights in the mark UNIVERSAL, used in connection with the sale of nutritional supplements worldwide.
Complainant holds registrations for the UNIVERSAL trademark, on file with the United States Patent and Trademark Office (“USPTO”), (including Registry No. 3,555,885, registered January 6, 2009).
Complainant has maintained an internet presence for over a decade via its websites at <universalnutrition.com> and <universalusa.com>.
Respondent registered the <uniprotein.com> domain name in April of 2011, and renewed the disputed domain name in March of 2013.
The <uniprotein.com> domain name is an amalgamation of the abbreviation for the UNIVERSAL trademark and the descriptive term “protein,” which relates to Complainant’s business, and it is therefore confusingly similar to the mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not authorized Respondent to use its UNIVERSAL mark.
Respondent does not use the <uniprotein.com> domain name in a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name resolves to a website selling Complainant’s goods as well as the goods of its commercial competitors.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Using the domain name, Respondent attempts to obtain commercial gain by creating a likelihood of confusion among Internet users to divert Complainant’s customers to Respondent’s website.
Respondent knew of Complainant and its UNIVERSAL mark at the time of registration of the <uniprotein.com> domain name.
Respondent registered and uses the <uniprotein.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the UNIVERSAL trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in a mark sufficient for purposes of Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here India). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term “protein,” which describes an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” The combination is confusingly similar to Complainant’s mark. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003): (“Notwith-standing the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Micro-soft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the do-main name <ms-office-2000.com> to be confusingly similar to the MICROSOFT mark even though the mark was abbreviated in the domain name).
As to the inclusion of the term “protein” in the domain name, see Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addi-tion of the term “assurance,” to a complainant’s AIG mark failed to differentiate a resulting domain name from the mark under Policy ¶ 4(a)(i) because the append-ed term related directly to that complainant’s business).
Finally, because every domain name requires a gTLD, the addition of a gTLD to Complainant’s mark to complete the domain name is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <uniprotein.com> do-main name and that Complainant has not authorized Respondent to use its UNIVERSAL trademark. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Universal Nutrition,” which is not the same as the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information where there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the <uniprotein.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name resolves to a website selling Complainant’s goods as well as the goods of its commercial competitors. This employment of the domain name 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a UDRP complainant’s mark in a domain name to sell that complain-ant’s perfume, as well as other brands of perfume, was not bona fide use). See also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <uniprotein.com> domain name as alleged in the Complaint disrupts Complain-ant’s business. This demonstrates bad faith in the registration and use of the domain name as provided in Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respond-ent’s registration of a domain name substantially similar to a UDRP complain-ant’s AMERICAN SINGLES mark in order to operate a competing online busi-ness supported a finding that that respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent seeks commercial gain by using a domain name that is confusingly similar to Complainant’s UNIVERSAL mark to create confusion among Internet users as to the possibility of Complain-ant’s association with the resolving website. This shows bad faith in the regis-tration and use of the domain name under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding, under Policy ¶ 4(b)(iv), that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where that respondent was not authorized to sell a UDRP complainant’s goods).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <uniprotein.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 28, 2013
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