Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Akihiro Yamashita
Claim Number: FA1406001564432
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 Akihiro Yamashita (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animal-packs.com>, registered with GMO INTERNET, INC. d/b/a ONAMAE.COM.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2014; the National Arbitration Forum received payment on June 13, 2014.
On June 18, 2014, GMO INTERNET, INC. DBA ONAMAE.COM confirmed by e-mail to the National Arbitration Forum that the <animal-packs.com> domain name is registered with GMO INTERNET, INC. DBA ONAMAE.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. DBA ONAMAE.COM has verified that Respondent is bound by the GMO INTERNET, INC. DBA ONAMAE.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 June 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@animal-packs.com. Also on June 27, 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.
A timely Response was received and determined to be complete on July 9, 2014.
On July 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the ANIMAL PAK mark in connection with its enhancement goods. Respondent has registered this ANIMAL PAK mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,437,306 registered Mar. 20, 2001). The domain name here is confusingly similar to the mark because its variations from the mark are not meaningful.
Respondent has never been commonly known by this domain name—indeed, all available information identifies Respondent as “Akihiro Yamashita.” Respondent is using this <animal-packs.com> domain name to offer the product called “Levitra” for sale to public consumers. Further, this domain name typosquats Complainant’s mark.
Respondent’s conduct is tantamount to bad faith use and registration. First, Respondent is disrupting Complainant’s operations. Second, Respondent’s use of this confusingly similar domain name to promote its own endeavors evidences an intent to capitalize on the likelihood of consumer confusion. Finally, Respondent had to have been aware of Complainant’s rights in the ANIMAL PAK mark when registering this domain name.
B. Respondent
Respondent claims it “unconsciously” registered this domain name. Respondent notes it had no idea there was an ANIMAL PAK mark, and further that he has now removed all of the domain name’s content and will no longer use it.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent substantial argument or rebuttal to the Complaint on the merits in the Response written in English from the Respondent, determines that the remainder of the proceedings shall be conducted in English in the interest of fairness to both parties.
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.
Complainant uses the ANIMAL PAK mark in connection with its enhancement goods. Respondent has registered this ANIMAL PAK mark with the USPTO (e.g., Reg. No. 2,437,306 registered March 20, 2001). The Panel agrees this USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights regardless of where Respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims the domain name here is confusingly similar to the mark because its variations from the mark are not meaningful. The Panel notes the <animal-packs.com> domain name adds the letters “c” and “s,” as well as a hyphen and the generic top-level domain ("gTLD") “.com,” to the ANIMAL PAK mark. The Panel finds that these additions are trivial and do nothing to distinguish this domain name from ANIMAL PAK. See, e.g., Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). The Panel concludes there is Policy ¶ 4(a)(i) confusing similarity with respect to the <animal-packs.com> domain name.
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 claims Respondent has never been commonly known by this domain name—indeed, all available information identifies Respondent as “Akihiro Yamashita.” See Annex G to the Complaint. Here the Panel finds that nothing on the records shows that Respondent has ever been known as this <animal-packs.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also claims Respondent is using this <animal-packs.com> domain name to offer the product called “Levitra” for sale to public consumers. See Annex H to the Complaint. The Panel agrees that the use of a domain name to promote these unrelated pharmaceuticals is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Under the circumstance that the Respondent makes no contentions with regards to Policy ¶ 4(a)(ii) and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4 has been established (See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
Complainant claims Respondent is disrupting Complainant’s operations. The Panel again notes the pharmaceuticals sold through the disputed domain name as evidenced by Exhibit H. The Panel believes such a use is disrupting the Complainant’s business in connection with its enhancement goods, and thus the Panel finds Policy ¶ 4(b)(iii) bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant claims Respondent’s use of this confusingly similar domain name to promote its own endeavors evinces an intent to capitalize on the likelihood of consumer confusion. The Panel finds that the use of this website (as shown in Exhibit H) for purposes of promoting various pharmaceuticals evidences an intent to capitalize on the likelihood Internet users will associate this <animal-packs.com> domain name with Complainant’s ANIMAL PAK mark. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant finally claims Respondent had to have been aware of Complainant’s rights in the ANIMAL PAK mark when registering this domain name. Respondent asserts that it had no idea there was an ANIMAL PAK mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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 <animal-packs.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 26, 2014
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