BioPure Healing Products, LLC v. Beth Frank
Claim Number: FA1611001704953
Complainant is BioPure Healing Products, LLC (“Complainant”), represented by Syed Abedi of Seed IP Law Group LLP, Washington, USA. Respondent is Beth Frank (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com>, <bpureproducts.com>, <malebio.com>, <malebiosupport.com>, and <biopurewellness.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.
On November 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com>, <bpureproducts.com>, <malebio.com>, <malebiosupport.com>, and <biopurewellness.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 December 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@biopureca.com, postmaster@biopurecanada.com, postmaster@biopurehealing.com, postmaster@biopuremale.com, postmaster@bpureproducts.com, postmaster@malebio.com, postmaster@malebiosupport.com, and postmaster@biopurewellness.com. Also on December 2, 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 January 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 is a prominent purveyor of high quality nutritional supplements for the management of heavy metal detoxification, chronic fatigue syndrome, autism, lyme disease, chronic pain, osteoporosis and other ailments.
Complainant holds registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the BIOPURE trademark and service mark (Registry No. 4,696,290, registered March 3, 2015) and for the MALE BIOSUPPORT trademark (Registry No. 4,673,072, registered January 13, 2015).
Respondent registered the domain name <bpureproducts.com> on July 7, 2015, and the domain names <biopureca.com>, <biopuremale.com>, <malebio.com>, <biopurecanada.com>, <biopurehealing.com>, <malebiosupport.com> and <biopurewellness.com> on October 23, 2015.
Respondent’s <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com>, <bpureproducts.com> and <biopurewellness.com> are confusingly similar to the BIOPURE mark and <malebio.com> and <malebiosupport.com> are confusingly similar to the MALE BIOSUPPORT mark.
Respondent is not licensed or otherwise authorized by Complainant to use the BIOPURE or MALE BIOSUPPORT marks for any purpose.
Respondent is not using the domain names for any bona fide offering of goods or services or for any legitimate noncommercial or fair use.
Instead, <biopurehealing.com> directs to a website linking to articles pertaining to Lyme disease and to a Facebook page displaying Complainant’s BIOPURE mark and design as the profile picture, while the other domain names resolve to web pages parked by their registrar, and include pay-per-click advertisements from the operation of which Respondent profits financially.
Respondent lacks both rights to and legitimate interests in the domain names.
Respondent has demonstrated a pattern of abusive registration and use of the domain names in the instant dispute.
Respondent knew of Complainant and its rights in the BIOPURE and MALE BIOSUPPORT marks when it registered the domain names.
Respondent has caused false contact information to appear in the WHOIS records for the domain names.
Respondent has caused false contact information to be included in the WHOIS information for the domain names, to wit:
[A]ccording to Whois records, the disputed domain names are owned by ‘Beth Frank.’ Registrant’s phone number is listed as 888-432-1123, and the addresses provided are 100 350 5th Ave. New York, NY and 100 350 5th Ave. Calgary, NY…. First, with regard to New York, NY, ‘350 5th Ave’ is the address of the Empire State Building; however, there is no ‘100 350 5th Ave.’ With regard to Calgary, NY, this address does not exist. Second, the phone number provided is an emergency number for a Canadian property restoration company, Belfor Columbia Fire & Water Damage Restoration.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 BIOPURE and MALE BIOSUPPORT marks for purposes of Policy ¶ 4(a)(i) by reason of its registration of the marks with a national trademark authority, the USPTO. See, for example, AOL LLC v. Interrante, FA 681239 (Forum May 23, 2006) (finding that, where a UDRP complainant submitted evidence of its mark’s registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com>, <bpureproducts.com>, and <biopurewellness.com> domain names are confusingly similar to Complainant’s BIOPURE mark and that its <malebio.com> and <malebiosupport.com> domain names are confusingly similar to Complainant’s MALE BIOSUPPORT mark.
As to the <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com> and <biopurewellness.com> domain names, each of them
incorporates the BIOPURE mark in its entirety, merely adding the generic terms “ca,” “canada,” “healing,” “wellness,” or “male,” which relate to various aspects of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Gannett Co. v. Chan, D2004-0117 (WIPO April 8, 2004):
[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.
See also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding, under Policy ¶ 4(a)(i), that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and a generic Top Level Domain).
See also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016):
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
The <bpureproducts.com> domain name is likewise confusingly similar to Complainant’s BIOPURE mark because it merely omits the “i" and “o” after the “b” from the mark and adds the generic term “products” and the gTLD “.com.” In addition to the support cited immediately above, see, Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (concluding that the domain name <classicmetalroofing.com> was confusingly similar to a UDRP complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration that did not distinguish the domain name from the mark).
As to the <malebio.com>, <malebiosupport.com> domain names, they are confusingly similar to Complainant’s MALE BIOSUPPORT mark. The domain name <malebio.com> contains the salient feature of the mark, merely omitting the space between its terms and the term “support.” For its part, the domain name <malebiosupport.com> incorporates the mark in its entirety while omitting the space between its terms and adding the gTLD “.com”. Specific to this domain name, see Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding a respondent’s <genesvitamine.com> domain name confusingly similar to a UDRP complainant’s GENES VITAMIN E CREME mark). See also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007), finding the domain name <americangenerallifeinsurance.com> confusingly similar to a UDRP complainant’s AMERICAN GENERAL mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We first note that Complainant contends, and Respondent does not deny, that Respondent is not licensed or otherwise authorized to use the BIOPURE and MALE BIOSUPPORT marks for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of each of the disputed domain names only as Beth Frank, which does not resemble any of the domain names. On this record, we conclude that Respondent has failed to demonstrate that it has been commonly known by any of the domain names <bpureproducts.com>, <biopureca.com>, <biopuremale.com>, <biopurewellness.com>, <biopurecanada.com>, <biopurehealing.com>, <malebiosupport.com> and <malebio.com> so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum April 5, 2007) (concluding that a respondent was not commonly known by a contested domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a UDRP complainant asserted that it had not licensed or otherwise authorized that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that the disputed domain names either resolve to a website linking to articles pertaining to Lyme disease and to a Facebook page displaying Complainant’s BIOPURE mark and design or to web pages parked by the registrar that include pay-per-click advertisements from the operation of which sites Respondent profits financially. This employment of the domain names is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii) sufficient to confirm in Respondent rights to or legitimate interests in any of the domain names within the meaning of those provisions. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that a respondent’s redirection of Internet users to websites unrelated to a UDRP complainant by means of a domain name that was confusingly similar to that complainant’s mark, websites from the operation of which that respondent presumably received a referral fee for the appearance of each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <biopurecanada.com> <malebiosupport.com>, <biopurewellness.com>, <bpureproducts.com>, <biopuremale.com>, <biopurehealing.com>, <malebio.com> and <biopureca.com> domain names, as alleged in the Complaint, which domain names are confusingly similar to Complainant’s BIOPURE and MALE BIOSUPPORT marks, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (finding, under Policy ¶ 4(b)(iv), that a respondent acted in bad faith in registering and using a domain name where it used that domain name to host hyperlinks unrelated to a UDRP complainant’s business, through the operation of which links that respondent presumably gained financially).
It is also evident from the record that Respondent knew of Complainant and its rights in the BIOPURE and MALE BIOSUPPORT marks when it registered the disputed domain names. This too is proof of Respondent’s bad faith in registering the domain names. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (finding that where circumstances indicate that a respondent had actual knowledge of a UDRP complainant's mark when it registered a confusingly similar domain name, bad faith registration can be found). See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith where a respondent was "well-aware” of a UDRP complainant's mark at the time of its registration of a confusingly similar domain name).
Finally, under this head of the Policy, the record reflects that Respondent has caused false contact information to appear in the WHOIS records for the contested domain names. As recited in the Complaint:
[A]ccording to Whois records, the disputed domain names are owned by ‘Beth Frank.’ Registrant’s phone number is listed as 888-432-1123, and the addresses provided are 100 350 5th Ave. New York, NY and 100 350 5th Ave. Calgary, NY…. First, with regard to New York, NY, ‘350 5th Ave’ is the address of the Empire State Building; however, there is no ‘100 350 5th Ave.’ With regard to Calgary, NY, this address does not exist. Second, the phone number provided is an emergency number for a Canadian property restoration company, Belfor Columbia Fire & Water Damage Restoration.
Respondent does not deny this. It is well recognized that providing false WHOIS contact information is evidence of bad faith registration of a domain name. See, for example, CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015):
As the Panel sees that Respondent has provided false … WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <biopureca.com>, <biopurecanada.com>, <biopurehealing.com>, <biopuremale.com>, <bpureproducts.com>, <malebio.com>, <malebiosupport.com>, and <biopurewellness.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 9, 2017
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