Vita-Herbs, Inc. v. Admin Manager
Claim Number: FA0604000676510
Complainant is Vita-Herb, Inc. (“Complainant”), represented by Glenn K. Fobbins, of Spencer Fane Britt & Browne LLp, 1 North Brentwood Blvd., Suite 1000, St. Louis, MO 63105. Respondent is Admin Manager (“Respondent”), PO Box 2014, El Segundo, CA 90245-1114.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vitaherb.com>, registered with Enom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 10, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vitaherb.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 4, 2006 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@vitaherb.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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. Respondent’s <vitaherb.com> domain name is confusingly similar to Complainant’s VITA-HERBS mark.
2. Respondent does not have any rights or legitimate interests in the <vitaherb.com> domain name.
3. Respondent registered and used the <vitaherb.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vita-Herbs, Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VITA-HERBS mark (Reg. No. 1,095,667 issued July 11, 1978), in connection with its dietary supplements business.
Respondent registered the <vitaherb.com> domain name on April 17, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites.
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 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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
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 has provided evidence of its registration of the
VITA-HERBS mark with the USPTO. The
Panel finds such evidence sufficient to establish Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures Inc.,
FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <vitaherb.com>
is confusingly similar to Complainant’s VITA-HERBS
mark because Respondent’s domain name
incorporates the dominant features of Complainant’s mark, omits the hyphen and
the letter “s,” and adds the generic top-level domain “.com.” The Panel finds that such alterations to
Complainant’s registered mark do not negate the confusing similarity between
the disputed domain name and Complainant’s mark. Thus, the Panel finds that the disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Health Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Under Policy ¶ 4(a)(ii), the burden is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <vitaherb.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the 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 interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
Moreover, Respondent is using the <vitaherb.com>
domain name to redirect Internet users to Respondent’s commercial website that
features links to competing third-party websites. Respondent’s use of a domain name that is confusingly similar to
Complainant’s VITA-HERBS mark to redirect Internet users interested in
Complainant’s products and services to a website that offers similar products
and services in competition with Complainant is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9,
2002) (“Respondent is not using the disputed domain name in connection with a
bona fide offering of goods and services because Respondent is using the domain
name to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel infers that Respondent receives click-through fees for diverting Internet users to a website offering links to competing websites. The fact that Respondent’s domain name incorporates the dominant features of Complainant’s mark may create confusion as to Complainant’s affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <vitaherb.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Respondent is using the <vitaherb.com> domain name to redirect Internet users to Respondent’s commercial website that features links to competing third-party websites. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vitaherb.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 24, 2006
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