Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Stephanie Behrends
Claim Number: FA1601001655348
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, United States. Respondent is Stephanie Behrends (“Respondent”), California, United States
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalfitness.net>, 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.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on 6 January 2016; the Forum received payment on 6 January 2016.
On 6 January 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <animalfitness.net> 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 7 January 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of 27 January 2016 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 firstname.lastname@example.org. Also on 7 January 2016, 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 17 January 2016.
On 21 January 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
Complainant Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Universal Nutrition”) was incorporated in 1983 in the State of New Jersey. Since 1983, Universal Nutrition has become one of the leading providers of sports nutrition health products in the world. Universal Nutrition first used the ANIMAL mark in connection with nutritional supplements at least as early as 1983. Since that time, Universal Nutrition has adopted and continuously used a family of well-known ANIMAL marks in connection with various nutrition and fitness-related goods and services, including nutritional supplements and related food products, apparel, headwear, exercise products, bags, bottles and coffee mugs, posters and other printed materials, fitness DVDs, retail and online retail store services for the aforementioned goods, and entertainment and social club services, namely, a sports nutrition and exercise club.
Universal Nutrition also owns over 800 trademark registrations and applications throughout the world. Of those, Universal Nutrition owns more than 200 registrations for its ANIMAL family of marks, including ANIMAL, A ANIMAL, ANIMAL PAK, and ANIMAL BARBELL CLUB in various countries, including the United States. Universal Nutrition’s registrations, applications, and common law rights are hereinafter collectively referred to as the “ANIMAL Marks.” Universal Nutrition’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market.
Universal Nutrition, directly or through an affiliated entity, registered <universalnutrition.com> on 22 July 1998 and <animalpak.com> on 17 March 2000 (collectively, “Universal Nutrition’s Websites”). Universal Nutrition has used and continues to use its ANIMAL Marks prominently on its Websites.
No business relationship exists between Universal Nutrition and Respondent.
Respondent does not have, and never has had, permission to use Universal Nutrition’s ANIMAL Marks.
Respondent registered the disputed <animalfitness.net> domain name on 23 April 2014, 30 years after Universal Nutrition began using its ANIMAL Marks and without the authorization or knowledge of Complainant.
Through the website at <animalfitness.net>, Respondent, without authorization, uses Complainant’s ANIMAL Marks to offer fitness classes, personal training, nutritional coaching, yoga, and Zumba classes as “Animal Fitness” or “Animal Fitness and Nutrition.” The “About Us” page of <animalfitness.net> states: “Animal Fitness and Nutrition is a way for you to have fun while achieving your fitness goals. With guided nutritional coaching and flexible training hours, you can achieve those goals and become an overall healthier you!” In addition, Respondent previously advertised a “24-Day Transformation Challenge” on its website at <animalfitness.net>. When users clicked on the link, they were redirected to Respondent’s AdvoCare Distributor page where Respondent sells nutrition products. Respondent removed the link after Universal Nutrition advised Respondent of its rights in the ANIMAL Marks.
Respondent’s actions indicate that Respondent is using a domain name that wholly incorporates Complainant’s ANIMAL mark to lure traffic from Complainant’s Websites, thereby preventing Complainant’s rightful registration and use of the domain name at issue and profiting from the unauthorized use of the ANIMAL Marks to sell competing goods and services.
The substantive section of the Response recites, in full, as follows:
Respondent disputes any allegation that she knowingly used any ANIMAL mark to in any way draw business from Complainant. Respondent had no intent of confusing the market place or in any way relating itself to Complainant. As such, Respondent has taken down its website and without dispute agrees to the remedy of relinquishing the requested domain name.
The Panel notes that Respondent has expressly consented in her Response to the transfer the disputed domain name to Complainant. It is additionally noted, however, that Respondent consented to the transfer the disputed domain name to Complainant only after Complainant went to the trouble and expense of instituting these administrative proceedings.
Complainant’s counsel sent a cease and desist letter to Respondent on 29 July 2015, which was followed by telephone calls and email communications, requesting that Respondent relinquish voluntarily the domain name. On her part, Respondent delayed and obfuscated, averring over a period of months that she needed time to obtain legal advice.
Under the circumstances, the Panel considers that Complainant is entitled to the benefit of this Panel’s formal findings in accordance with the Policy, rather than a bare-bones decision reciting, “domain name transferred”.
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.
The general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO October 12, 2000).
The disputed domain name wholly incorporates Complainant’s ANIMAL
Marks. Respondent’s inclusion of the descriptive word “fitness” in the domain name serves only to highlight Complainant’s core competency and renown in the health and fitness industry and to increase the likelihood of confusion among the general public that Respondent is authorized to use Complainant’s registered Marks, when she is not. The use of the generic top-level domain “.net” also is without significance under Policy ¶ 4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
The Panel finds that Complainant has satisfied the first element of Policy ¶ 4(a).
The Panel finds that Complainant did not authorized Respondent to use its ANIMAL Marks and that Respondent’s use of the domain name <animalfitness.net> is not in connection with a bona fide offering of goods or services, but rather, goods and services that directly compete with those offered by Complainant. Complainant’s rights in the ANIMAL Marks predate any rights Respondent could claim in the disputed domain name. Respondent is not commonly known as “Animal Fitness” or <animalfitness.net>.
Complainant has satisfied the second prong of Policy ¶ 4(a) by establishing that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant’s ANIMAL Marks are of a strong and distinctive nature. When weighed against Complainant’s evidence, this Panel finds Respondent’s evidence that she “had no intent of confusing the market place” by relating herself to Complainant and her denial that she “knowingly used any ANIMAL mark to in any way draw business from Complainant” inherently implausible and unworthy of belief.
The greater weight of the evidence proves, and the Panel finds, that Respondent registered and used the disputed domain name in bad faith, for the purpose of competing with Complainant in the business of providing fitness and nutrition supplements and services and free-riding on Complainants ANIMAL Marks for her own financial gain.
Complainant has satisfied the third prong of Policy ¶ 4(a).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animalfitness.net> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: 22 January 2016
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