Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Domain Contact (115533) / John Reyes
Claim Number: FA1402001544744
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Tiffany D. Gehrke of Marshall Gerstein & Borun LLP, Illinois, USA. Respondent is Domain Contact (115533) / John Reyes (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalsuperiornutrition.com>, registered with Freeparking Domain Registrars, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2014; the National Arbitration Forum received payment on February 20, 2014.
On March 1, 2014, Freeparking Domain Registrars, Inc. confirmed by e-mail to the National Arbitration Forum that the <universalsuperiornutrition.com> domain name is registered with Freeparking Domain Registrars, Inc. and that Respondent is the current registrant of the name. Freeparking Domain Registrars, Inc. has verified that Respondent is bound by the Freeparking Domain Registrars, Inc. 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 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@universalsuperiornutrition.com. Also on March 3, 2014, 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 March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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’s Business and Website
Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Universal Nutrition” or “Complainant”) incorporated in 1983 in the State of New Jersey, United States. Since 1983, Complainant has become one of the leading providers of sports nutrition health products in the world. Complainant owns at least 100 trademark registrations throughout the world. Of those, Complainant owns more than 70 registrations for UNIVERSAL and/or UNIVERSAL NUTRITION throughout the world. These registrations cover the following or closely related goods and services: dietary food supplements; nutritional supplements comprised of but not limited to vitamins, minerals and training nutrients in International Class 5; and other goods in International Classes 25, 28, 29, 30, 35, 42, 46.
Complainant’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant’s sales volume has been more than $20 million each year since at least 2003. In addition, Complainant spends more than one million dollars each year in advertisements.
Complainant registered <universalnutrition.com> on July 22, 1998. Complainant has used the UNIVERSAL and UNIVERSAL NUTRITION marks on Complainant’s websites since the websites’ inception. In addition, Complainant owns more than thirty (30) domains incorporating its UNIVERSAL and UNIVERSAL NUTRITION marks.
Relationship Between the Parties
No business relationship exists between Complainant and Respondent. Further, Respondent does not have, and never has had, permission to use Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks.
Respondent’s Business and Website
Respondent registered the domain name <universalsuperiornutrition.com> on January 7, 2014. Accordingly, Respondent registered its domain more than fifteen (15) years after Complainant registered its domain and approximately thirty (30) years after Complainant began using its UNIVERSAL and UNIVERSAL NUTRITION marks. Respondent acted without the authorization or knowledge of the Complainant, and with full knowledge of Complainant’s rights. Respondent registered the domain name <universalsuperiornutrition.com> to interfere with Complainant’s business.
Complainant became familiar with Respondent John Reyes under somewhat unconventional circumstances. In March 2013, Complainant sent a letter to a third party, Mr. Danny Nag, regarding that third parties activities with respect to certain domains (<universalsportnutrition.com> and <universalsportnutrition.co.uk>) and website content that Complainant believed were in violation of its trademark rights (involving the same trademarks at issue here, UNIVERSAL and UNIVERSAL NUTRITION). An individual named Mr. Carl Dixon responded to counsel for Complainant and indicated he was responding on behalf of Mr. Nag, and the parties worked towards resolution.
After various interactions with Mr. Nag and his then-representative Mr. Dixon, counsel for Complainant was then informed by Mr. John Reyes that he was now representing Mr. Nag with respect to the <universalsportnutrition.com> and <universalsportnutrition.co.uk> domains. Through these interactions, Mr. Reyes had actual knowledge of Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks at least as early as July 2013. Moreover, Mr. Reyes appears to understand the significance of including Complainant’s marks in a domain name because he states, with respect to <universalsportnutrition.com> and <universalsportnutrition.co.uk>, “The Value (sic) of these two domains is unquestionably beyond any reasonable offer your client is ever likely to agree…” In addition, he states, “These domain names are extremely valuable…” Although Respondent Mr. Reyes was referring to two different domains than the domain at issue here in these statements, those domains, like the one at issue here, also incorporated Complainant’s marks, specifically the domains also included “UNIVERSAL” plus a descriptive word plus “NUTRITION.”
Complainant and third party Mr. Nag, with Mr. Reyes acting as Mr. Nag’s reprehensive, were unable to reach resolution regarding the <universalsportnutrition.com> and <universalsportnutrition.co.uk> domains and accordingly Complainant filed a complaint through Nominet’s dispute resolution service regarding the <universalsportnutrition.co.uk> domain. Mr. Nag, the named registrant of the domain, was served the complaint on January 6, 2014. One day later, on January 7, 2014, Mr. Reyes registered two new domains <universalsuperiornutrition.com> (the domain at issue in the present UDRP Complaint) and <universalsuperiornutrition.co.uk>. On January 8, 2014, Mr. Reyes submitted a response to the Nominet Complaint, in which he states: “. . . additionally we have also obtained www.universalsuperiornutrition.com and universalsuperiornutrition.co.uk which once again bares no reference to universalnutrition . . . I personally now own www.universalsuperiornutrition.com and universalsuperiornutrition.co.uk and will run new business, if universalnutrition complain then I will go beyond Nominet and Icaan.” The Nominet dispute resolution matter is still pending as of February 20, 2014.
Respondent Mr. Reyes adopted a domain name nearly identical to and incorporating Complainant’s marks to interfere with Complainant’s business. Respondent has no rights or legitimate interests in respect to the domain name and Respondent has registered and is using the domain in bad faith.
LEGAL ARGUMENT
FIRST ELEMENT: Respondent’s domain name is either identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant’s multiple federal trademark registrations for UNIVERSAL and UNIVERSAL NUTRITION establish Complainant’s rights in the mark pursuant to ICANN Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
Under U.S. trademark law, registered marks presumptively are inherently distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”). Distinctive trademarks, like Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks, are strong. Strong marks receive the greatest range of protection from another party’s use of a confusingly similar mark. AMF INC. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
Here, Respondent’s domain name is virtually identical to Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks. Respondent’s inclusion of the descriptive word “superior” and “.com” are minor alterations to Complainant’s registered marks and are without significance. See Seiko Epson Corporation and Epson America, Inc. v. bradley mckeown, FA 312058 (Nat. Arb. Forum Apr. 20, 2010)(finding that a domain name that “incorporates the dominant feature of Complainant’s mark, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain . . . are minor alterations to Complainant’s registered mark and, as such” are “confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i).”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Accordingly, Respondent’s mere inclusion of the word “superior” and the gTLD “.com” does not distinguish the domain at issue from Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks.
As defined by the Policy ¶4(a)(i), the disputed domain name is confusingly similar to Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks, because it is virtually identical to Complainant’s marks and only includes a minor alteration – the inclusion of a gTLD and a descriptive term “superior.” Accordingly, Complainant satisfies the “first element” pursuant to Policy ¶4(a)(i), because Respondent’s domain name is virtually identical or confusingly similar to a trademark in which Complainant has rights.
SECOND ELEMENT: Respondent has no rights or legitimate interests in the disputed domain name.
(i) Respondent has never used the disputed domain name or any name associated with it in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use of the domain.
Respondent has no rights or legitimate interests with respect to the domain at issue. Conversely, Complainant’s longstanding use of the UNIVERSAL and UNIVERSAL NUTRITION marks predates any rights Respondent may claim. Respondent’s domain name is confusingly similar to Complainant’s registered UNIVERSAL and UNIVERSAL NUTRITION marks. Such similarity negates any presumption of Respondent’s legitimate use. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the Respondent’s use of the Complainant’s entire mark in the domain name makes it difficult to infer a legitimate use).
Respondent is not currently
making an active use of the <universalsuperiornutrition.com> domain name
and therefore cannot demonstrate that its use of the disputed domain name
constitutes either a bona fide offering of goods or services under Policy ¶4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Citigroup
Inc. and Primerica Financial Services, Inc. v. Marc Gahary and gahary.com,
FA 298515 (Nat. Arb. Forum Feb. 3, 2010)(In finding that Complainant satisfied
the elements of ICANN Policy ¶4(a)(ii), the Panel stated “Respondent is not
currently making an active use of the <primerica.org> domain name and
therefore cannot demonstrate that its use of the disputed domain name
constitutes either a bona fide offering of goods or services under Policy ¶4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Bloomberg
L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept.
2, 2004) (“The Panel finds that the passive holding of a domain name that is
identical to Complainant’s mark is not a bona fide offering of goods or
services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
Respondent’s awareness of Complainant’s mark prior to registration of the disputed domain name evidences Respondent’s lack of rights or legitimate interest in the disputed domain name. See Quinn v. Zournas, FA 610713 (Nat. Arb. Forum Feb. 17, 2006). At the time of Respondent’s registration of the domain in dispute here, Respondent had actual knowledge of Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks. Specifically, Respondent was in communication with Complainant with respect to these very same trademarks (albeit for different but similar domains) and Respondent registered the domain at issue within days after learning that Complainant filed a Complaint through Nominet for other domains.
Respondent cannot satisfy the requirements of Policy ¶4(c)(i) or 4(c)(iii), because Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
(ii) Respondent is not commonly known by the disputed domain name.
No evidence exists to establish that the disputed domain name is the legal name of Respondent. Respondent is known as Mr. John Reyes, and also appears to be associated with the business name “PCSUPERFIX.” Moreover, Complainant is aware of no evidence to suggest that Respondent could have been commonly known by the disputed domain name before Complainant began having federally registered rights for its UNIVERSAL and UNIVERSAL NUTRITION marks. Respondent cannot satisfy the requirements of Policy ¶4(c)(ii) because the disputed domain name is not Respondent’s commonly known name, as evidenced by the WHOIS information for the disputed domain. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant has not authorized Respondent to use Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks. Respondent’s use of the domain is not in connection with a bona fide offering of goods for sale. Complainant’s rights in the UNIVERSAL and UNIVERSAL NUTRITION marks predate any rights Respondent could claim in the disputed domain. Respondent is not commonly known by the disputed domain name. Accordingly, Complainant has satisfied the “second element” pursuant to Policy ¶4(a)(ii) because Respondent has no rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the Respondent was not a licensee of the Complainant; (2) the Complainant’s prior rights in the domain name preceded the Respondent’s registration; (3) the Respondent was not commonly known by the domain in question).
THIRD ELEMENT: The disputed domain name was registered and is being used in bad faith.
“Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶4(a)(iii).” Indymac Bank v. Ebeyer FA 175292 (Nat. Arb. Forum Sept. 19, 2003). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant's YAHOO! mark at the time of registration); see also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding bad faith registration where Respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). Here, Respondent had actual knowledge of the Complainant’s mark because Respondent communicated directly with Complainant about Complainant’s UNIVERSAL and UNIVERSAL NUTRITION marks before Respondent registered the domain in dispute. Accordingly, Respondent’s actual knowledge of Complainant’s marks prior to registration of the domains illustrates Respondent’s bad faith.
Moreover, Respondent’s use of a confusingly similar domain name is in bad faith even when the webpage resolves to a “parking” page. Bad faith registration and use “can be inferred from the totality of the circumstances.” Avenue Stores, LLC v. Brian Edwards, FA 476523 (Nat. Arb. Forum Jan. 31, 2013) (finding that the respondent had registered the domain in bad faith and stating that “[p]revious panels have found that inactively holding a confusingly similar domain name is bad faith pursuant to Policy 4(a)(iii).”). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶4(b)(iv) even though Respondent has not used the domain name because “[I]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Accordingly, pursuant to Policy ¶4(b), Respondent registered and used the domain in bad faith. Accordingly, Complainant has satisfied the “third element” pursuant to Policy ¶4(a) (iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 is one of the leading providers of sports nutrition health products in the world. Complainant owns trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the UNIVERSAL NUTRITION mark (e.g., Reg. No. 3,020,559, registered November 29, 2005). Complainant owns a trademark registration with the Office for Harmonization in the Internal Market (“OHIM”) for the UNIVERSAL NUTRITION mark (Reg. No. 5,913,017, registered April 24, 2008). Respondent resides within the United Kingdom (which is obviously part of the European Market). Complainant’s registration of the UNIVERSAL NUTRITION mark with the OHIM and USPTO adequately demonstrates its rights in the mark pursuant to Policy ¶4(a)(i). See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims Respondent’s <universalsuperiornutrition.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark. Respondent’s addition of the descriptive word “superior” and the gTLD “.com” are minor alterations to Complainant’s registered marks and do not adequately distinguish the disputed domain name. Respondent’s addition of a descriptive or generic term does not adequately differentiate the disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). Adding a gTLD to Complainant’s mark does not adequately distinguish the disputed domain name under Policy ¶4(a)(i) from Complainant’s mark because gTLDs are required by domain name syntax. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Respondent’s <universalsuperiornutrition.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Respondent is not commonly known by the <universalsuperiornutrition.com> domain name. Respondent is known as “John Reyes,” as shown in the WHOIS record. Complainant has not authorized Respondent to use Complainant’s UNIVERSAL NUTRITION mark. There is no evidence Respondent could have been commonly known by the disputed domain name. Under these facts, it seems clear Respondent is not commonly known by the <universalsuperiornutrition.com> domain name pursuant to Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent is not currently making any use of the <universalsuperiornutrition.com> domain name. Respondent’s disputed domain name links to a page saying “UNDER CONSTRUCTION” (commonly called a parking page). The disputed domain name is hosted by <freeparking.co.uk>. Respondent’s (i) failure to make an active use of the disputed domain name or (ii) to simply have a parking page is not a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶4(c)(i) or ¶4(c)(iii)); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s <universalsuperiornutrition.com> domain name resolves to a “parking” page which says “<universalsuperiornutrition.com> UNDER CONSTRUCTION.” The disputed domain name is hosted by <freeparking.co.uk>. Respondent’s use of the disputed domain name may mislead consumers away from Complainant’s website to Respondent’s inactive parked website, for which Respondent may commercially profit (at least to the extent of free parking). It seems fairly clear Respondent’s <universalsuperiornutrition.com> domain name attracts and misleads Internet users for commercial profit, which means Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Complainant claims Respondent had actual knowledge of Complainant’s UNIVERSAL NUTRITION marks because Respondent communicated directly with Complainant about its UNIVERSAL NUTRITION marks before Respondent registered the <universalsuperiornutrition.com> domain name. The undisputed evidence bears this out. The evidence is strong enough for this Panel to conclude Respondent deliberately registered the disputed domain name to test Complainant’s resolve to enforce its trademark rights…and that is being charitable. It is clear Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <universalsuperiornutrition.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, April 24, 2014
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