The Better Foundation LLC d/b/a TruthNutra v. Robert Anderson
Claim Number: FA1903001832307
Complainant is The Better Foundation LLC d/b/a TruthNutra (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Robert Anderson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <testrox.net>, <testrox.org>, <testroxultra.net>, and <testroxultra.org> (“Domain Names”), registered with Name.com, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2019; the Forum received payment on March 1, 2019.
On March 4, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <testrox.net>, <testrox.org>, <testroxultra.net>, and <testroxultra.org> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 March 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2019 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@testrox.net, postmaster@testrox.org, postmaster@testroxultra.net, and postmaster@testroxultra.org. Also on March 8, 2019, 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 March 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 is a nutritional supplement company that formulates quality driven, all natural, research backed supplementation for hormonal health. Complainant offers nutritional supplement products that boost testosterone, improve blood flow and circulation, reduce inflammation and joint pain, lower stress and cortisol, and help manage blood sugar and weight loss. Complainant has common law rights in the TESTRO-X mark dating back to at least as early as 2016 which it has used as the name of its testosterone booster product for men. Respondent’s <testrox.net> and <testrox.org> domain names are identical to Complainant’s mark as they each eliminate the hyphen from Complainant’s mark and add a generic top-level domain (“gTLD”), while the <testroxultra.net> and <testroxultra.org> domain names contain the same changes and add the descriptive term “ultra.”
Respondent has no rights or legitimate interests in the <testrox.net>, <testrox.org>, <testroxultra.net>, and <testroxultra.org> domain names. Respondent is not commonly known by the Domain Names, does not have any trademark rights in a similar mark, and Complainant has not licensed or otherwise permitted Respondent to use its TESTRO-X mark for any purpose. Further, Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Names to compete with Complainant by selling similar supplement products under the name “Nitro Ultra Maxx” and/or “Testrox Ultra.”
Respondent registered and uses the <testrox.net>, <testrox.org>, <testroxultra.net>, and <testroxultra.org> domain names in bad faith as Respondent disrupts Complainant’s business as a competitor and further attempts to commercially profit from a likelihood of confusion between Complainant’s TESTRO-X Mark and the Domain Names. Additionally, Respondent had actual knowledge of Complainant’s TESTRO-X mark when it registered the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TESTRO-X mark. Each of the Domain Names is confusingly similar to Complainant’s TESTRO-X mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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:
(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).
Complainant has common law rights in the TESTRO-X mark. Common law rights can be established through secondary meaning per Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant has sold a product under the name TESTRO-X since June 2016. The Panel is satisfied from Complainant’s evidence (including evidence of the public recognition of the TESTRO-X product such as third party reviews, YouTube video views, and page views) that Complainant’s use of the TESTRO-X mark since June 2016 is sufficient to establish secondary meaning in that mark.
The Panel finds that each of the Domain Names are confusingly similar to the Complainant’s TESTRO-X mark. Each of them reproduce the TESTRO-X mark removing the hyphen, adding a generic top-level domain (“gTLD”) and, in the case of <testroxultra.net>, and <testroxultra.org>, adding the descriptive word “ultra”. None of these changes are sufficient to distinguish any of the Domain Names from the TESTRO-X mark. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); 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 Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the TESTRO-X mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain names, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Robert Anderson” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by any of the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive but Complainant’s evidence establishes that between 2018 and the commencement of the proceeding each of the Domain Names resolves to a website (“Respondent’s Websites”) that purported to sell similar supplement products to Complainant’s TESTRO-X products under the names “Nitro Ultra Maxx” and/or “Testrox Ultra”. In circumstances where the goods have no connection to any descriptive meaning inherent in the Domain Names, the use of a domain name to sell competing goods or services is not a bona fide offering or at a legitimate noncommercial or fair use under the Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that at the time the Respondent registered the Domain Names, August 6-7 2018, Respondent had actual knowledge of Complainant’s TESTRO-X mark. There is no obvious explanation, nor has one been provided, for an entity to acquire 4 domain names that almost exactly reproduce the TESTRO-X Mark and redirect them to sites that offer similar products under a similar mark in direct competition with Complainant other than to take advantage of Complainant’s reputation in the TESTRO-X Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses each of the Domain Names in bad faith to create confusion with Complainant’s TESTRO-X Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites that offers competing products under a similar name. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <testrox.net>, <testrox.org>, <testroxultra.net>, and <testroxultra.org> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 1, 2019
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