Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Nutrisaver LLC
Claim Number: FA1610001699115
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 Nutrisaver LLC (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gouniversalnutrition.com> and <universalnutritionanimal.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2016; the Forum received payment on October 20, 2016.
On Oct 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gouniversalnutrition.com> and <universalnutritionanimal.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@gouniversalnutrition.com, postmaster@universalnutritionanimal.com. Also on October 21, 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 November 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition, is a leading provider of sports nutrition and health products. In connection with this business, Complainant uses the UNIVERSAL NUTRITION and ANIMAL marks to market and sell its products around the world. Complainant has rights in the UNIVERSAL NUTRITION and ANIMAL marks based on registration with the United States Patent and Trademark Office (“USPTO”) as well as other trademark agencies throughout the world. (e.g., UNIVERSAL NUTRITION—Reg. No. 3,020,559, registered Nov. 29, 2005; ANIMAL—Reg. No. 3,439,799, registered June 3, 2008). Respondent’s <gouniversalnutrition.com> domain name is confusingly similar, as it incorporates Complainant’s UNIVERSAL NUTRITION mark in its entirety, differing only through the deletion of the space, and addition of the generic word “go” and the common generic top-level domain (“gTLD”) “.com.” Respondent’s <universalnutritionanimal.com> domain name is identical to Complainant’s registered marks as it merely combines two of Complainant’s marks, omits the space in UNIVERSAL NUTRITION, and adds the gTLD “.com.”
Respondent, Nutrisaver LLC, has no rights or legitimate interests in the domain names. Respondent is not commonly known by either domain name, nor is Respondent authorized to use the marks in the disputed domain names. Respondent has not actively used the disputed domain names and therefore cannot demonstrate they are being used in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent’s non-use of the disputed domain names for more than a year demonstrates bad faith. Further, Respondent’s agreement to transfer domain names and subsequent failure to do so underscores its bad faith. Respondent’s registration of domain names wholly incorporating the UNIVERSAL NUTRITION and ANIMAL marks demonstrates actual or constructive knowledge of Complainant’s marks, and supports a finding of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a leading provider of sports nutrition and health products. Complainant uses the UNIVERSAL NUTRITION and ANIMAL marks to market and sell its products around the world. Complainant has rights in the UNIVERSAL NUTRITION and ANIMAL marks based on registration with the USPTO as well as other trademark agencies throughout the world. (e.g., UNIVERSAL NUTRITION—Reg. No. 3,020,559, registered Nov. 29, 2005; ANIMAL—Reg. No. 3,439,799, registered June 3, 2008). Respondent’s <gouniversalnutrition.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark. Respondent’s <universalnutritionanimal.com> domain name is confusingly similar to Complainant’s UNIVERSAL NUTRITION and ANIMAL marks.
Respondent registered the <gouniversalnutrition.com> domain name on July 22, 2015; and the <universalnutritionanimal.com>, on July 23, 2015.
Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by either domain name, nor is Respondent authorized to use the marks in the disputed domain names. Respondent has not actively used the disputed domain names.
Respondent’s non-use of the disputed domain names for more than a year demonstrates bad faith. Further, Respondent’s agreement to transfer domain names and subsequent failure to do so underscores its bad faith. Respondent’s registration of domain names wholly incorporating the UNIVERSAL NUTRITION and ANIMAL marks demonstrates actual knowledge of Complainant’s marks, and supports a finding of bad faith registration.
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.”).
Complainant has rights in the UNIVERSAL NUTRITION and ANIMAL marks based on registration with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <gouniversalnutrition.com> domain name is confusingly similar to the UNIVERSAL NUTRITION mark under Policy ¶ 4(a)(i) as it incorporates the mark in its entirety and differs only by omitting the space, adding the generic word “go,” and the common gTLD “.com.”
Respondent’s <universalnutritionanimal.com> domain name is confusingly similar under Policy ¶ 4(a)(i) because it wholly incorporates both the UNIVERSAL NUTRITION (minus the space) and ANIMAL marks, and adds only the gTLD “.com.” Mere combination of two of complainant’s marks to create one domain name supports a finding that the domain name is confusingly similar. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”).
Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the UNIVERSAL NUTRITION or ANIMAL marks. The WHOIS information lists the registrant as “Nutrisaver LLC.” See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s inactive use of the disputed domain names is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain names resolve to generic websites parked by the registrar of the disputed domain names. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii) because Respondent fails to make active use of the domain names. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Respondent’s agreement to transfer the disputed domain names and subsequent failure to do so shows Respondent’s bad faith. Complainant and Respondent engaged in correspondence in which the parties agreed to a transfer of the disputed domain names but the transfer was not carried out by Respondent. Panels have held that promising to transfer a domain name and then failing to carry out the transfer can be a factor supporting a finding of bad faith under Policy ¶ 4(a)(iii). See John Middleton Co. v. Middleton, FA 649564 (Forum Dec. 30, 2015) (panel found bad faith registration, in part, because respondent agreed to cancel his registration of the domain name, but failed to do so).
Respondent’s use of Complainant’s entire UNIVERSAL NUTRITION and ANIMAL marks, or a combination thereof, in the disputed domain names shows that Respondent had actual knowledge of Complainant’s marks at the time of registration. Therefore, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <gouniversalnutrition.com> and <universalnutritionanimal.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 29, 2016
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