Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Pham Dinh Nhut
Claim Number: FA1408001575330
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 Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutritionsupply.com>, registered with April Sea Information Technology Company Limited.
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 August 15, 2014; the National Arbitration Forum received payment on August 15, 2014. The Complaint was submitted in both English and Vietnamese.
On August 18, 2014, April Sea Information Technology Company Limited confirmed by e-mail to the National Arbitration Forum that the <universalnutritionsupply.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 August 21, 2014, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of September 10, 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@universalnutritionsupply.com. Also on August 21, 2014, the Vietnamese language 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 September 16, 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. 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
Policy ¶ 4(a)(i). Complainant owns the UNIVERSAL NUTRITION mark in various countries including the United States and Vietnam. Complainant uses the mark in connection with sports nutrition health products. The <universalnutritionsupply.com> domain name is confusingly similar to the UNIVERSAL NUTRITION mark as the additions of the generic top-level domain and descriptive term “supply” are insignificant alterations.
Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <universalnutritionsupply.com> name. Further, Respondent has failed to make a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the domain name. Respondent uses the disputed domain name to promote links of third-party sites that market and sell both Complainant’s products and competing products. Respondent generates click-through revenue from the resolving pages.
Policy ¶ 4(a)(iii). Respondent has engaged in Policy ¶ 4(b)(iii) bad faith by using the <universalnutritionsupply.com> domain name to intentionally disrupt Complainant’s business. Respondent is also in violation of Policy ¶ 4(b)(iv), as Respondent has attempted to divert Complainant’s customers by creating a likelihood of confusion. Finally, Respondent’s knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark at the time the disputed domain name was registered further demonstrates Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 15, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. 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 the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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 uses the UNIVERSAL NUTRITION mark in connection with sports nutrition health products. Complainant claims to own the UNIVERSAL NUTRITION mark in various trademark agencies worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,020,559 registered November 29, 2005), and the Copyright Office of Vietnam (“COV”) (e.g., Reg. No. 143,065 registered March 3, 2010). The Panel agrees that Complainant’s numerous trademark registrations of the UNIVERSAL NUTRITION mark satisfy the initial requirements of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
Complainant contends the <universalnutritionsupply.com> is confusingly similar to the UNIVERSAL NUTRITION mark. Complainant argues that the additions of the generic top-level domain and descriptive term “supply” are insignificant alterations. The Panel also notes that the disputed domain name eliminates the spacing from the mark. Prior panels have held that such alternations are insufficient where the mark is fully incorporated, as it is here. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). The Panel finds that the disputed domain name <universalnutritionsupply.com> is confusingly similar to the Complainant’s UNIVERSAL NUTRITION mark pursuant to 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.”).
In making it prima facie case, Complainant points to the WHOIS record to show Respondent is not commonly known by the <universalnutritionsupply.com> name. The Panel observes that after the privacy shield was removed, the WHOIS record identifies “Pham Dinh Nhut” as registrant. Complainant adds that it has not authorized Respondent’s use of the mark. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Here, as Respondent has failed to respond to the allegations, the Panel agrees that there is insufficient evidence to find any Policy ¶ 4(c)(ii) association.
Further, Complainant argues that Respondent has failed to make a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the domain name. Complainant claims that Respondent uses the disputed domain name to promote links of third-party sites that market and sell both Complainant’s products and competing products. See Compl., at Attached Ex. H. Complainant alleges that Respondent generates click-through revenue from the resolving pages. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel wrote, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).” The Panel agrees that Respondent’s use of the disputed domain name to promote links offering Complainant’s and competing products does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith by using the <universalnutritionsupply.com> domain name to intentionally disrupt Complainant’s business. The Panel recalls that the disputed domain name resolves to a page promoting links related to nutrition and health supplements, such as “Nutritional Supplements,” “Vitamins,” and “Herbal Supplements.” See Compl., at Attached Ex. H. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008), the panel held, “Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Here, the Panel concludes that Respondent’s efforts to promote competing links evinces bad faith disruption pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent is also in violation of Policy ¶ 4(b)(iv), as Respondent has attempted to divert Complainant’s customers by creating a likelihood of confusion. Complainant claims Respondent benefits from the referral fees associated with the links. See Compl., at Attached Ex. H. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel reasoned, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” In line with such precedent, the Panel agrees that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent knew of Complainant’s rights in the UNIVERSAL NUTRITION mark at the time the disputed domain name was registered, which further demonstrates Respondent’s bad faith. Prior panels have concluded that actual knowledge, but not constructive knowledge, is sufficient to support a finding of bad faith. Specifically, the panel in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), wrote, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Here, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark, and therefore find evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutritionsupply.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 25, 2014
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