Universal Protein Supplements Corporation d/b/a Universal Nutrition v. New Ventures Services, Corp
Claim Number: FA1708001743476
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Michelle Bolos of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is New Ventures Services, Corp (“Respondent”), represented by Peter J. Riebling of RIEBLING IP, PLLC, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animal-pack.com>, registered with EnomEU, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2017; the Forum received payment on August 7, 2017.
On August 8, 2017, EnomEU, Inc. confirmed by e-mail to the Forum that the <animal-pack.com> domain name is registered with EnomEU, Inc. and that Respondent is the current registrant of the name. EnomEU, Inc. has verified that Respondent is bound by the EnomEU, 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, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2017 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@animal-pack.com. Also on August 10, 2017, 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 August 30, 2017.
On August 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
On September 5, 2017 Complainant made an additional submission which was filed in a timely manner according to the Forum's Supplemental Rule #7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ANIMAL PAK and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith and then used the domain name in bad faith.
B. Respondent
Respondent asserts that the domain name is composed of generic terms over which Complainant has no monopoly. Further, that the term “pak” carries connotations such that the domain name would not be confused with the trademark.
Respondent submits that its practice of registering domain names composed of generic terms confers rights and legitimate interests.
Respondent submits that there is no evidence that Respondent intended to sell the domain name to Complainant. Nor has Respondent prevented Complainant from reflecting its trademark in domain names. Nor is there any evidence of Complainant’s business having been disrupted, or its potential customers diverted away from the business, by reason of use of the disputed domain name.
C. Additional Submission – Complainant
These arguments are considered as required in the discussion which follows.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark ANIMAL PAK in connection with the sale of sports nutrition and health supplements principally of interest to body-builders;
2. the trademark ANIMAL PAK is the subject of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 2,437,306, registered March 20, 2001;
3. the disputed domain name was registered on February 25, 2017;
4. the domain name is for sale at <sedo.com> for USD777.00;
5. the domain name resolves to a website which carries links to third party providers of goods which compete with the products sold by Complainant under the trademark; and
6. there is no relationship between the parties and Complainant has not authorised Respondent to use the trademark or to register any domain name incorporating the trademark.
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 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] The USPTO registration noted earlier stands in the name of Complainant. The Panel finds that Complainant has rights in ANIMAL PAK.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded. The disputed domain name then differs from the trademark by other additions, namely, the letter “c” to the term PAK to create “pack”, and by hyphenation of the two terms that constitute the trademark.
Respondent submits that the compared expressions are not identical and that there is no risk of confusion since they are visually and aurally distinguishable. The Panel does not agree. The compared expressions are aurally identical. The additions are trivial. The hyphenation only accentuates the similarity of the domain name with the trademark. Further, the Panel finds that nothing of any overall conceptual significance is created by the addition of the letter “c”. The Panel is unmoved by Respondent’s submission that the element PAK of the trademark would be publicly perceived as a shorthand for “Pakistan” or “Pakistani” and would be differentiated from the domain name. Instead, the Panel considers that Internet users might very easily confuse PAK and “pack”. The Panel finds the domain name confusingly similar to the trademark. [ii]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The WhoIs listed name of the domain name holder, New Ventures Services, Corp., carries no suggestion that Respondent might be commonly known by the disputed domain name and there is no submission or evidence that Respondent has ever been known as the domain name.
There is no evidence of any association between the parties and Complainant denies any such relationship. Indeed, the only noteworthy matter that should be mentioned here is that in 2012 the parties were involved in earlier UDRP proceedings concerned with another of Complainant’s trademarks, from which an order for transfer of the relevant domain name resulted.[iv]
The domain name is for sale, listed at <sedo.com> for $777.00. The evidence is that it resolves to a webpage hosting links which include “Discount Dietary Supplements” and “High Vitamin Foods”. Such competitive use of the domain name is not in connection with a bona fide offering of goods or services. The Panel finds that a prima facie case has been made.[v]
The onus shifts to Respondent. Respondent argues that the domain name is composed of common, generic words over which Complainant does not have a monopoly. The argument is ill-conceived since the combination of the terms is what is important. The trademark is akin to “RAY BAN” rather than “ALL AMERICAN”.[1] There is no suggestion by Complainant of a monopoly in the separate terms “animal” and “pak” and Respondent has not demonstrated a bona fide right to the free use of the combination of those terms.
The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds registration and use of the domain name in bad faith pursuant to paragraph 4(b)(iv) above. The Panel accepts Complainant’s submission that it is more likely than not that Respondent is benefitting from the links at the resolving website by way of referral fees or some similar benefit. The Panel finds that in terms of paragraph 4(b)(iv), Respondent has used the domain name to intentionally attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.[vi]
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animal-pack.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 14, 2017
[1][1] Indeed, unlike “RAY BAN” where an oblique relationship exists between the mark and the relevant goods, the expression “ANIMAL PAK” has no obvious connection with Complainant’s goods on interest.
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (FORUM Sept. 25, 2003).
[ii] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Chegg Inc. v. Company CEO / Quality Programming, FA 1610061 (FORUM Apr. 20, 2015), by analogy, finding confusing similarity where “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. New Ventures Services, Corp., Claim Number: FA 1458721 (FORUM Oct 23, 2012).
[v] See, for example, Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (FORUM May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also Enterprise Holdings, Inc. v. Tulip Trading Company, FA1707001739558 (FORUM Aug 13, 2017)
[vi] See, for example, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (FORUM June 4, 2015) holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
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