Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Faezeh Pazouki / Taavoni Maskan Honarmandan Pakdasht
Claim Number: FA1608001687509
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 Faezeh Pazouki / Taavoni Maskan Honarmandan Pakdasht (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutritionir.com>, registered with OnlineNIC, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2016; the Forum received payment on August 9, 2016.
On August 9, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <universalnutritionir.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 August 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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 postmaster@universalnutritionir.com. Also on August 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, Universal Protein Supplements Corporation, is a New Jersey corporation with sales that equal or exceed 7% of the global sports nutrition health market.
Complainant has registered the UNIVERSAL NUTRITION mark with the United States Patent and Trademark Office (“USPTO”) for use in connection with its business providing sports nutrition health products.
Respondent’s domain <universalnutritionir.com> is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark as the domain includes the mark in its entirety and merely differs through the addition of the geographic indicator, “ir,” likely meaning Iran, and 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’s failing to make an active use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent’s domain was registered and is being used in bad faith. Respondent failing to make an active use of the disputed domain name demonstrates bad faith. Additionally, Respondent’s registration of a domain that includes Complainant’s whole UNIVERSAL NUTRITION mark and the fame of the mark itself indicate Respondent’s actual or constructive knowledge of the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the UNIVERSAL NUTRITION mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its UNIVERSAL NUTRITION trademark.
Respondent’s <universalnutritionir.com> domain name is inactive.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the UNIVERSAL NUTRITION trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name contains Complainant’s trademark less its space, suffixed by the generic geographic identifier “ir” (meaning Iran), and appended with the top level domain name “.com.” The slight differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <universalnutritionir.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION trademark under Policy ¶ 4(a)(i). See InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect to the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the <universalnutritionir.com> domain name lists “Faezeh Pazouki / Taavoni Maskan Honarmandan Pakdasht” as the domain name’s registrant and there is nothing in the record that otherwise suggests that Respondent is commonly known by the <universalnutritionir.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <universalnutritionir.com> domain name has never been fully active. Respondent’s domain addresses a website displaying the message, “SITE IS UNDER CONSTRUCTION PROCESS PLEASE VISIT US LATER.” The inactivity of a confusingly similar domain name suggests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that respondent had no rights or legitimate interests where it failed to make any active use of the domain name); see also Charles Jourdan holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where the respondent was not a license of the complainant, the complainant’s prior rights in the domain name preceded the respondent’s registration, and the respondent was not commonly known by the domain in question).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Although Complainant does not make any contentions that fall within the provisions of Policy ¶ 4(b), such provisions are meant to be merely illustrative of bad faith and not all inclusive. Therefore, Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
As mentioned above regarding Policy ¶ 4(a)(ii), Respondent has not used the at-issue domain name since registering it in September 2015. Failing to use a domain name suggests bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Citigroup Inc. v. Renner a/k/a Inter-Mark Corp. a/k/a Cash Cards Int’l f/r/a CitiLynks.com, FA 1329486 (Forum July 22, 2010) (finding that respondent’s failure to make active use of domain name permitted inference of registration and use in bad faith).
Additionally, Respondent had knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark prior to its registration of the confusingly similar at-issue domain name. This is evident from of the notoriety of Complainant’s trademark and from Respondent’s use of the entire mark in the at-issue domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <universalnutritionir.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutritionir.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 13, 2016
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