Universal Protein Supplements Corporation d/b/a Universal Nutrition v. EBUBEKIR OZDOGAN / EB3
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is EBUBEKIR OZDOGAN / EB3 (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutrition.info>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2014; the National Arbitration Forum received payment on May 13, 2014.
On May 14, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <universalnutrition.info> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@universalnutrition.info. Also on May 14, 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 June 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. 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.
ii. Complainant owns a trademark registration with Turkey’s Trademark Office for the UNIVERSAL NUTRITION mark (Reg. No. 200923660, registered March 8, 2011).
iii. Respondent’s <universalnutrition.info> domain name is identical to Complainant’s UNIVERSAL NUTRITION mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent uses the <universalnutrition.info> domain name to divert users away from Complainant’s websites and toward its own, where it links to a site not authorized to sell Complainant’s products.
i. Respondent’s disputed domain name was registered and is being used in bad faith.
ii. Respondent is disrupting and competing with Complainant’s business.
iii. Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
iv. Respondent was aware of Complainant’s prior use of the UNIVERSAL NUTRITION mark.
1. Respondent’s <universalnutrition.info> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark.
2. Respondent does not have any rights or legitimate interests in the <universalnutrition.info > domain name.
3. Respondent registered or used the < universalnutrition.info > domain name 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 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 alleges that it has become one of the leading providers of sports nutrition health products in the world. Complainant contends that it owns a trademark registration with Turkey’s Trademark Office for the UNIVERSAL NUTRITION mark (Reg. No. 200923660, registered March 8, 2011). See Complainant’s Exhibit B. The Panel finds that because Respondent resides in Turkey, Complainant’s registration of the UNIVERSAL NUTRITION mark with Turkey shows that it has rights in the mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).
Complainant asserts that Respondent’s <universalnutrition.info> domain name is identical to Complainant’s UNIVERSAL NUTRITION mark. The Panel observes that Respondent omits the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.info” to the mark, which Complainant claims is without significance under Policy ¶ 4(a)(i). The Panel agrees and holds that Respondent’s deletion of spaces and inclusion of a gTLD is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Consequently, the Panel concludes that Respondent’s <universalnutrition.info> domain name is identical to Complainant’s UNIVERSAL NUTRITION mark under Policy ¶ 4(a)(i).
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); 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.”).
Complainant states that Respondent is not commonly known by the <universalnutrition.info> domain name. Complainant asserts that no evidence shows that Respondent operates under the UNIVERSAL NUTRITION mark or <universalnutrition.info>, but that the WHOIS records show that Respondent’s name is “EBUBEKIR OZDOGAN / EB3.” See Complainant’s Exhibit G. Further, Complainant contends that Respondent is not authorized to use its UNIVERSAL NUTRITION mark. Thus, the Panel finds that Respondent is not commonly known under the <universalnutrition.info> domain name pursuant to 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 argues that Respondent uses the <universalnutrition.info> domain name to divert users away from Complainant’s websites and toward its own, where it links to a site not authorized to sell Complainant’s products. The Panel notes that Respondent’s disputed domain name leads to a webpage purporting to sell fitness and nutrition products. See Complainant’s Exhibit H. The Panel finds that Respondent is using the disputed domain name to make an unauthorized sale of Complainant’s products, and the Panel determines that Respondent is not using the <universalnutrition.info> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Complainant alleges that Respondent is disrupting and competing with Complainant’s business. Complainant contends that Respondent is using the <universalnutrition.info> domain name to sell Complainant’s products and other goods in direct competition with Complainant. See Complainant’s Exhibit H. In G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panel concluded that “Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s attempt to sell Complainant’s products through the disputed domain name shows bad faith disruption under Policy ¶ 4(b)(iii).
Complainant claims that Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion. Complainant argues that Respondent is using a confusingly similar domain name to divert Internet users to a website purporting to sell the products of Complainant. See Complainant’s Exhibit H. Complainant states that Respondent likely profits from the use of the <universalnutrition.info> domain name. Accordingly, the Panel determines that Respondent’s use of the disputed domain name to sell Complainant’s products misleads consumers for Respondent’s profit, establishing bad faith use and registration under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that Respondent was aware of Complainant’s prior use of the UNIVERSAL NUTRITION mark. Complainant contends that Respondent shows knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark through its registration of an identical domain name where Respondent purports to sell Complainant’s products and competing products. Therefore, the Panel holds that Respondent registered the <universalnutrition.info> 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).
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.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 19, 2014
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