Apothecary Products, LLC v. WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC.
Claim Number: FA1512001651630
Complainant is Apothecary Products, LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC. (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flents.com>, 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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2015; the Forum received payment on December 9, 2015.
On December 10, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <flents.com> 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 December 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@flents.com. Also on December 11, 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.
A timely Response was received and determined to be complete on December 24, 2015.
Complainant’s additional submissions were received on December 29, 2015. The additional submissions were considered by the Administrative Panel along with the other materials, as they were filed in a timely manner according to the Forum's Supplemental Rule #7.
On January 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
Complainant is a leading manufacturer and distributor of consumer healthcare products and pharmacy supplies. Complainant’s rights in the FLENTS trademark stem from registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 230,234, registered July 19, 1927).
Respondent’s disputed <flents.com> domain name is confusingly similar to the FLENTS trademark as the domain name includes the trademark in its entirety and only differs through the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not received permission to use the FLENTS trademark in any manner, nor has Respondent been commonly known by the disputed domain name. Further, Respondent’s use of the domain, to resolve to a website displaying links to Complainant’s competitors’ products, and Respondent’s willingness to sell the domain, indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed <flents.com> domain name in bad faith. First, Respondent’s willingness to sell the disputed domain demonstrates bad faith. Second, Respondent disrupts Complainant’s business through using Complainant’s mark to advertise the goods of Complainant’s competitors. Third, Respondent is using the similarity between the <flents.com> domain and the FLENTS mark to attract and profit from internet users who believe the domain to be affiliated with Complainant.
B. Respondent
The Respondent’s contentions can be summarized as follows:
Respondent makes no contentions as to Policy ¶ 4(a)(i).
Respondent registers generic, descriptive, and non-infringing domains for the purposes of deriving advertising income from the use of the domains.
Respondent’s <flents.com> domain was registered for reasons unrelated to Complainant such as the domain’s short length and the “.com” gTLD. Additionally, use of a domain name to host click-through links is a common business practice and constitutes a legitimate use of a domain name. Complainant has not shown that Respondent’s use of the domain is illegitimate.
Respondent’s registration of the domain was not in bad faith because Respondent was motivated to register the domain through factors unrelated to Complainant. Further, the advertisements on the <flents.com> domain are automatically generated and Respondent is not responsible for whether or not the advertisements compete with Complainant’s goods. Respondent did not register the domain primarily to sell the disputed domain and therefore a finding of bad faith under Policy ¶ 4(b)(i) is unfounded.
C. Additional Submissions
The Complainant’s Additional Submissions can be summarized as follows:
Respondent’s use of the disputed domain name is illegitimate. The case Respondent cites to support the contention that its use is legitimate was based on a domain that was registered years before the complainant had established rights in the trademark. Respondent’s links on the disputed domain are based on the trademark value of the FLENTS mark.
Respondent’s modification of the advertisements at the disputed domain name after Complainant sent a cease and desist letter shows that Respondent has control of the advertisements that are displayed at the domain.
Respondent targeted the FLENTS brand when registering the domain by including advertisements that compete with Complainant’s products and services.
Complainant’s FLENTS mark has no other meaning outside of association with Complainant and therefore Respondent must have registered the disputed domain name with knowledge of the mark.
Complainant owns various trademarks involving FLENTS and uses them to market its
products (including ear plugs, ear care solutions, hearing protectors, eye
masks, foot care products, etc.) in various countries, including the U.S.
Complainant’s oldest registration of its mark dates back to 1927.
The disputed domain name was registered by Respondent in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that offers sponsored links and that mentions that the domain name Flents.com may be for sale.
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.
Legal Findings regarding Policy Paragraph 4(a)(i): finding for Complainant
Respondent made no contentions with regards to Policy paragraph 4(a)(i).
Complainant claims that its rights in the FLENTS trademark stem from registration of the mark with the USPTO (e.g., Reg. No. 230,234, registered July 19, 1927). See Compl., at Attached Ex. 1C. Panels have routinely held, and this Panel also holds, that a complainant has established rights in a mark based on registration of a mark with the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next contends that Respondent’s disputed <flents.com> domain name is confusingly similar to the FLENTS mark as the domain includes the mark in its entirety and only differs through the addition of the gTLD “.com.” Panels have consistently found, and this Panel also finds, that a domain is identical to a mark when the domain only differs through the addition of a gTLD. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”).
The Panel concludes that the disputed <flents.com> domain name is identical or at least confusingly similar to the FLENTS mark of the Complainant under Policy Paragraph 4(a)(i).
Legal Findings regarding Policy Paragraph 4(a)(ii): finding for Complainant
Complainant contends that Respondent has not received permission to use the FLENTS mark in any manner, nor has Respondent been commonly known by the disputed domain name. Complainant’s assertions that (i) it did not authorize the Respondent’s use of its mark in the disputed domain name and (ii) that the Respondent has not been commonly known by the disputed domain name, are not contested by the Respondent. WHOIS information associated with the disputed domain name indicates that Respondent used a privacy service when registering the domain. See Compl., at Attached Ex. 9. Prior panels have found, and this Panel also holds, that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of contradictory information in the record. 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). The Panel concludes that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Respondent has not evinced a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Complainant contends that Respondent’s use of the domain, to resolve to a website displaying links to Complainant’s competitors’ products, and Respondent’s willingness to sell the domain, indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed <flents.com> domain, as resolved for Complainant on October 15, 2015, appears to display various click-through advertisements with titles such as, “Flents Ear Plugs,” “Good Sleeping Pillow,” and “Mack’S e-ar.” See Compl., at Attached Ex. 14. Prior panels have held, and this Panel also holds, that using a domain to sell a complainant’s or a complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“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).”).
Respondent claims that its use of the disputed domain name to host click-through links, is a common business practice and constitutes a legitimate use of a domain name. In limited circumstances, particularly where a domain is comprised of generic terms, the use of a domain to host click-through advertisements has been seen as a bona fide offering of goods or services. See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)). However, in the light of the specific circumstances of the case at hand, in particular the fact that the domain is not comprised of generic, descriptive or otherwise non-infringing terms, and the fact that Respondent is displaying pay-per-click advertisements for products of competitors of Complainant (who owns trademark rights in the term FLENTS) (See Compl., at Attached Ex. 14: links include, “Flents Ear,” “Flents,” and “Ear Plugs for Snoring”), this Panel determines that Respondent has not made a bona fide offering of goods or services using the disputed <flents.com> domain name.
The Panel finds that Complainant successfully submitted prima facie evidence that Respondent has made no use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, nor is making a legitimate noncommercial or fair use of the domain name, nor is commonly known under the domain name. The Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Legal Findings regarding Policy Paragraph 4(a)(iii): finding for Complainant
Complainant argues that Respondent uses the disputed domain name to redirect Internet users to its own website, through which Respondent hosts hyperlinks to businesses that compete with Complainant. See Compl., at Attached Ex. 14 (links include, “Flents Ear,” “Flents,” and “Ear Plugs for Snoring”). Prior panels have treated such behavior as an indication of a respondent’s bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“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).”). Given the fact that Respondent used the disputed domain name to redirect Internet users to its own website where Respondent hosts hyperlinks to businesses that compete with Complainant, the Panel finds that Respondent has engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Additionally, Complainant alleges that Respondent’s use of the confusingly similar disputed domain name to attract confused Internet users to its own website at which Respondent offers competitive hyperlinks, demonstrates Respondent’s bad faith according to Policy ¶ 4(b)(iv). The Panel refers to Complainant’s Attached Ex. 14, which demonstrates this use. Prior panels have agreed with similar arguments. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has capitalized on the goodwill associated with the FLENTS mark in attracting Internet users to its own website for commercial gain, demonstrating bad faith under Policy ¶ 4(b)(iv). The Panel concludes that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Respondent claimed that it did not have control over the content of the advertisements published on the domain. The Panel does not agree. First, from the evidence submitted by Complainant, it follows that Respondent changed the content of the domain after Complainant sent a letter detailing its rights in the FLENTS mark and requesting transfer. Respondent’s domain, as resolved for Complainant on October 15, 2015 displayed advertisements for Complainant’s products. See Compl., at Attached Ex. 14. Complainant sent an email to Respondent detailing its rights in the FLENTS mark and requesting transfer of the disputed domain on October 29, 2015. See Compl., at Attached Ex. 12. On December 7, 2015 the disputed domain name was identical to how it resolved on October 15, 2015 except the advertisements were for products and services unrelated to Complainant. Second, the Panel considers that, in the absence of evidence to the contrary (of which there is none in the present case), a party in the position of Respondent is to be considered responsible for the sponsored links appearing on its website.
Complainant further argues that Respondent’s bad faith is evident from Respondent attempting to sell the disputed <flents.com> domain. See Compl., at Attached Ex. 16 (“FLents.Com is available for purchase!”); see also Compl., at Attached Ex. 14 (“The domain flents.com may be for sale. Click here to make an offer or call 877-588-1085 to speak with one of our domain experts.”). Prior panels have found bad faith where a respondent offered a domain for sale. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). The Panel notes that the combination of the various factors listed above demonstrate Respondent’s bad faith under Policy ¶ 4(b) (in particular the fact that the domain name redirects to a website that is a parking page displaying links to products that compete with the products of Complainant and the fact that the website displays a message that the website is for sale or may be for sale).
Finally, Respondent claims that its registration of the domain was not in bad faith because Respondent was motivated to register the domain through factors unrelated to Complainant. Respondent claims that it registered the domain name because the domain is short, and therefore valuable. Respondent claims that the domain name in itself is non-infringing and that there are numerous fair uses that one could make of the domain name (Respondent claims that the domain name could for instance refer to a site directed to Florida (“FL”) enterprises (“ENT”). The Panel considers that the term “FLENTS” is neither a generic term nor a known acronym. When Respondent registered the domain name, the trademark FLENTS was a registered trademark in the United States. The Respondent should have considered the possibility of a conflicting trademark having been registered, especially in absence of the Respondent having any rights or legitimate interests in the (not-generic) domain name, and given the fact that Complainant’s trademark rights date back to 1927. Consequently, Respondent should have considered the Complainant’s prior rights.
Therefore, the Panel considers the registration and the use of the disputed domain name made in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <flents.com> domain name be TRANSFERRED from Respondent to Complainant.
Bart Van Besien, Panelist
Dated: January 19, 2016
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