Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Lease Domains, Inc. / LeaseDomains.com
Claim Number: FA1512001651456
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 Lease Domains, Inc. / LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalflex.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2015; the Forum received payment on December 8, 2015.
On December 8, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <animalflex.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2015 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@animalflex.com. Also on December 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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.
Complainant
Complainant owns the ANIMAL FLEX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,227,943, filed June 23, 2006, registered April 10, 2007). Complainant uses the mark in connection with retail and online sales of nutritional supplements. Respondent’s <animalflex.com> is identical/confusingly similar to the ANIMAL FLEX mark because the domain incorporates the mark entirely, while merely eliminating spaces between words of the mark and adding the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not sponsored or legitimately affiliated with Complainant in any way. The disputed domain name resolves to a website advertising links that compete with Complainant. The hyperlinks divert Internet users from Complainant, which disrupts Complainant’s business while presumably netting Respondent commercial gain. Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain, evincing no bona fide offering of goods or services per Policy ¶ 4(c)(i), or any legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent has registered and used the <animalflex.com> domain name in bad faith. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with competing hyperlinks, which disrupt Complainant’s business, and which generate revenue as a click-through website. Respondent registered the <animalflex.com> domain name with knowledge of Complainant’s right in the Animal Flex mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <animalflex.com> domain name.
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 ANIMAL FLEX mark in connection with its nutrition supplement sales business. Complainant claims to own the ANIMAL FLEX mark through its trademark registration with the USPTO (Reg. No. 3,227,943, filed June 23, 2006, registered April 10, 2007). Complainant argues that such registrations are sufficient to establish rights in its marks pursuant to Policy ¶ 4(a)(i) requirements. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel determined that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). Panels have seen rights in a mark to date back to the filing date of record. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Therefore, the Panel finds Complainant has rights in the ANIMAL FLEX mark which date back to the registered mark’s filing date with the USPTO on June 23, 2006.
Complainant argues that the <animalflex.com> domain is identical or confusingly similar to Complainant’s ANIMAL FLEX mark because Respondent has simply added the gTLD “.com” to the mark. In Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) the panel found that, “Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Therefore, the Panel finds that the <animalflex.com> domain is confusingly similar or identical to the ANIMAL FLEX mark pursuant to an analysis of Policy ¶ 4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts Respondent is not, nor has been, commonly known by the disputed domain name, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. The WHOIS identifies registrant of record as “Lease Domains, Inc. / LeaseDomains.com.” Respondent has not submitted any evidence for the Panel’s consideration. Panels have agreed where such a void exists in the record there is no basis to find Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant claims that the disputed domain name resolves to a website advertising links that compete with Complainant. Such links include “Animal Flex,” “Universal Nutrition,” and “Dietary Food Supplements”. Complainant argues these hyperlinks divert Internet users from Complainant’s website, which disrupts Complainant’s business while presumably netting commercial gain for Respondent. Panels have found such behavior is not a bona fide offering of goods or services per Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
Complainant has proved this element.
Complainant asserts that Respondent has registered and used the <animalflex.com> domain name in bad faith. Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with competing hyperlinks, which disrupt Complainant’s business and which is evidence of bad faith under paragraph 4(b)(iii) of the Policy. Past panels have agreed that a respondent’s inclusion of hyperlinks that compete with a complainant and its business is evidence of Policy ¶ 4(b)(iii) disruption. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent is attempting to disrupt Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s display of competing hyperlinks presumably net Respondent commercial gain via click-through fees. Panels have agreed that use of competing hyperlinks by a respondent for commercial gain is evidence of Policy ¶ 4(b)(iv) bad faith. See, e.g., Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Therefore, the Panel finds Respondent’s use of the disputed domain to display competing hyperlinks is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's ANIMAL FLEX mark, it is inconceivable that Respondent could have registered the <animalflex.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <animalflex.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 6, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page