Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Daniel Cabreira
Claim Number: FA0912001299478
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Christopher W. Schneider, of Davis McGrath, LLC, Illinois, USA. Respondent is Daniel Cabreira (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nutricaouniversal.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2009.
On December 17, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <nutricaouniversal.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nutricaouniversal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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 makes the following assertions:
1. Respondent’s <nutricaouniversal.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark.
2. Respondent does not have any rights or legitimate interests in the <nutricaouniversal.com> domain name.
3. Respondent registered and used the <nutricaouniversal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition, provides a variety of nutritional supplements under its UNIVERSAL NUTRITION mark. Complainant has registered its UNIVERSAL NUTRITION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,020,559 issued September 11, 2007).
Respondent, Daniel Cabriera, registered the disputed domain name on February 2, 2009. The disputed domain name resolves to a website that offers goods and services which compete with Complainant’s nutritional supplements.
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."
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.”).
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.
Complainant submits evidence it has
registered the UNIVERSAL NUTRITION mark with the USPTO (Reg. No. 3,020,559 issued September 11, 2007). The Panel
finds Complainant has established rights in the UNIVERSTAL NUTRITION mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v.
Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see also
Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(finding that the complainant had established rights in the GOOGLE mark through
its holding of numerous trademark registrations around the world).
Complainant contends Respondent’s disputed
domain name contains Complainant’s UNIVERSAL NUTRITION mark translated into
Portuguese and with the addition of the generic top-level domain “.com.” The Panel finds translating a mark into
another language and adding a top-level domain does not negate a finding of
confusing similarity. Therefore, the
Panel finds Respondent’s disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Register.com, Inc. v. Int’l Languages Inc., FA 558106 (Nat.
Arb. Forum Nov. 9, 2005) (“Since Respondent chose
<registro.com> as a Spanish match for Complainant’s REGISTER and
REGISTER.COM marks, it seems appropriate to apply the doctrine of foreign
equivalents in this case, as permitted under the Rules which allow a Panel to
apply any law or precedent it finds applicable to a particular case.”); see also Disney Enters., Inc. v.
Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Nat. Arb. Forum
Jan. 16, 2006) (“The term “disneylandia” is the Portuguese translation of the
DISNEYLAND mark, and Complainant holds such a trademark for this term in
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent lacks rights and legitimate
interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate
its rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c). The Panel finds
that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the
allegations against it, the Panel may assume that Respondent lacks any rights
or legitimate interests in the disputed domain name. The Panel, however, elects to consider the
evidence in record in light of the Policy ¶ 4(c) factors to determine if
Respondent has any rights or legitimate interest in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”).
The WHOIS
information lists the registrant of the disputed domain name as “Daniel
Cabreira.” Complainant contends that
Respondent has never been known by the disputed domain name or authorized to
use Complainant’s mark. Thus the Panel
finds Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007)(concluding a respondent has no rights or
legitimate interests in a disputed domain name where there was no evidence in
the record indicating that the respondent was commonly known by the disputed
domain name); see also 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 has provided evidence the disputed domain name resolves to a website selling Complainant’s products without Complainant’s permission. Therefore, Respondent is profiting by redirecting Internet users interested in Complainant to Respondent’s competing website featuring Complainant’s goods. The Panel finds this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant’s product and under the same name”); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant’s used parts without a license from Complainant to do so.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <universalnutritionsupply.com>
domain name resolves to a website selling Complainant’s products without
Complainant’s permission. Although
Respondent claims it purchases these goods from a distributor, such use by
Respondent may well disrupt sports nutrition health products business by
redirecting Internet users to Respondent’s website and away from Complainant’s
business. The Panel therefore concludes
that such use by Respondent of the disputed domain name disrupts Complainant’s
business and that such use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See G.D. Searle &
Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16,
2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s
products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(transferring the <fossilwatch.com> domain name from the respondent, a
watch dealer not otherwise authorized to sell the complainant’s goods, to the
complainant).
By selling
Complainant’s products and through the redirection of Internet users interested
in Complainant to Respondent’s website, the Panel agrees with the Complainant’s
contention that such use by Respondent of a domain name that is confusingly
similar to Complainant’s UNIVERSAL NUTRITION mark constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by
registering the <fossilwatch.com> domain name and using it to sell
various watch brands where the respondent was not authorized to sell the
complainant’s goods); see also Fanuc Ltd v. Mach. Control Servs., FA
93667 (Nat. Arb. Forum March 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant’s
mark by using a domain name identical to the complainant’s mark to sell the
complainant’s products).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nutricaouniversal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 10, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum