NAC Vitamin Co. v. Glen Rhodes d/b/a
Talking Herbals, Inc.
Claim
Number: FA0401000224966
Complainant is NAC Vitamin Co., Hicksville, NY
(“Complainant”) represented by John G.
Tutunjian, Esq. of Keusey, Tutunjian & Bitetto, P.C., 14 Vanderventer Avenue, Suite 128, Port
Washington, NY 11050. Respondent
is Glen Rhodes d/b/a Talking Herbals, Inc., Reynosa #10, Colonia Condesa, Mexico City,
DF. 06140, Mexico (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <greenteaplus.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding.
Hon.
Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically January 9, 2004; the Forum received a hard copy of the Complaint
January 12, 2004.
On
January 12, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <greenteaplus.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
January 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 5, 2004, by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@greenteaplus.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
February 11, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson 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."
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 makes the following assertions:
1. The domain name registered by Respondent,
<greenteaplus.com>, is identical to Complainant’s GREEN TEA PLUS
mark.
2. Respondent has no rights or legitimate
interests in the <greenteaplus.com> domain name.
3. Respondent registered and used the <greenteaplus.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
filed a trademark application for the GREEN TEA PLUS mark October 12, 2001,
with the United States Patent and Trademark Office (“USPTO”) (Ser. No.
78/088115) and registration was granted June 18, 2002 (Reg. No. 2582447). The GREEN TEA PLUS mark has been used in
commerce since July 1, 1997, in connection with nutritional supplements.
Respondent
registered the disputed domain name July 17, 1999, listing the registrant as
“Talking Herbals, Inc.,” located in the State of New York. On December 17, 2003, weeks after
Complainant’s representative sent correspondence to Respondent offering to
reimburse Respondent for the out-of-pocket expenses related to the domain name
registration, the domain name registrant changed to “Glen Rhodes” of Mexico,
while designating “Talking Herbals, Inc.” as the administrative contact. Respondent refused to accept Complainant’s
proposition of reimbursement alleging that only tens of thousands of dollars
would recompense Respondent for the development and marketing of the domain
name.
Respondent is
using the domain name to direct traffic to a website that sells a product
called “Green Tea Max.”
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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.
Complainant
established by extrinsic proof in this proceeding that it has rights in the
GREEN TEA PLUS mark through registration with the USPTO and continuous use in
commerce since 1997. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption); see also
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”).
The disputed
domain name <greenteaplus.com> is identical to Complainant’s GREEN
TEA PLUS mark because the name incorporates the mark in its entirety. The omission of spaces between the words and
the addition of the generic top-level domain “.com” are irrelevant for purposes
of Policy ¶ 4(a)(i). See Nikon, Inc.
v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson,
D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”); see also Tech. Prop., Inc. v. Burris, FA 94424
(Nat. Arb. Forum May 9, 2000) (finding that the domain name
<radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Therefore,
Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant
established that it had rights in the mark contained in its entirety in the
disputed domain name and filed allegations that Respondent has no such
rights. Having failed to respond to the
Complaint, Respondent has failed to provide evidence that it has rights or
legitimate interests in the disputed domain name. Thus, the Panel may find that Respondent has implicitly admitted
its lack of rights to and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Am.
Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where Respondent fails to respond); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”);
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.”).
In conjunction
with the above, the Panel has no evidence indicating that Respondent is
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Respondent’s use
of the domain name to sell “Green Tea Max” is not a bona fide offering of goods
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use of the name pursuant to Policy ¶ 4(c)(iii) because Respondent has
incorporated Complainant’s trademark, GREEN TEA PLUS, to sell products that
compete with Complainant’s goods offered under Complainant’s protected
mark. See Computerized Sec. Sys.,
Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests in a
domain name that utilized Complainant’s mark for its competing website); see
also Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods).
Therefore,
Complainant has meet the requirements of Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith in registering and
using the disputed domain name that contains in its entirety the Complainant’s
protected mark. Since Respondent and Complainant are competitors, and since
Respondent has utilized Complainant’s registered mark in the disputed domain
name, the Panel makes the reasonable inference that Respondent registered the
name primarily to disrupt the business of Complainant by siphoning potential
customers from Complainant to Respondent’s site. See Surface Protection Indus.,
Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from Complainant's marks suggests that Respondent,
Complainant’s competitor, registered the names primarily for the purpose of
disrupting Complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy 4(b)(iii)).
Moreover, the
disputed domain name was registered and is being used in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent is intentionally attracting Internet users
to its website for commercial gain by creating a likelihood of confusion with
the GREEN TEA PLUS mark. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Therefore,
Complainant has met the requirements of 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 <greenteaplus.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 25, 2004
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