McNeil Nutritionals, LLC v. Troy Ellison
Claim Number: FA0608000782892
Complainant is McNeil Nutrionals, LLC (“Complainant”), represented by Norm D. St. Landau, of Drinker Biddle & Reath LLP, 1500 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is Troy Ellison (“Respondent”), 3113 44th Street, Lubbock, TX 79413.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sweetenedwithsplenda.com> and <madewithsplenda.com>, registered with Network Solutions, Inc.
The undersigned certifies that he acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 23, 2006.
On August 23, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has 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 August 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 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@sweetenedwithsplenda.com and postmaster@madewithsplenda.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names are confusingly similar to Complainant’s SPLENDA mark.
2. Respondent does not have any rights or legitimate interests in the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names.
3. Respondent registered and used the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McNeil Nutritionals, LLC, produces, markets and distributes a non-caloric sugar substitute under the SPLENDA mark. In conjunction with its predecessors-in-interest, Complainant has continuously used the SPLENDA mark in reference to no- and low-calorie sweeteners since 1988. Complainant’s parent corporation, Johnson & Johnson, maintains a website for Complainant at the <splenda.com> domain name (registered on October 10, 1996).
Complainant has registered the SPLENDA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,581,278 issued June 18, 2002; Reg. No. 1,544,079 issued June 20, 1989).
Respondent registered the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names on November 8, 2003. Respondent does not have active websites at the disputed domain names. Each domain name resolves to a Network Solutions default web page displaying sponsored links to various third-party content. At the top of this page is the text “This Site is Under Construction and Coming Soon.”
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. See 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 established rights in the SPLENDA mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The <sweetenedwithsplenda.com> and <madewithsplenda.com>
domain names both feature Complainant’s registered SPLENDA mark combined with
common terms. In Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001),
the panel found that the respondent’s domain names, all of which contained the
complainant’s entire GUINNESS mark but merely added common terms to the end,
such as “irish stout,” “guide,” “tours” and “jazz festival,” were confusingly
similar to the mark because each featured the complainant’s GUINNESS mark
“prominently.” Because Respondent’s
domain names also prominently feature Complainant’s SPLENDA mark, the Panel finds
that the mere addition of these common terms does not sufficiently
differentiate the disputed domain names from the mark. Therefore, the <sweetenedwithsplenda.com>
and <madewithsplenda.com> domain names are confusingly similar to
the mark under Policy ¶ 4(a)(i). See
PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that
“Respondent does not by adding the common descriptive or generic terms ‘corp’,
‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in
which it has rights or legitimate interests, nor does it alter the underlying
[PG&E] mark held by Complainant”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests in the contested domain names pursuant to Policy ¶ 4(a)(ii). See 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights to or legitimate interests in the contested
domain names. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent has registered the disputed domain names under the name “Troy Ellison,” and there is no other evidence in the record suggesting that Respondent is commonly known by the contested domain names. As a result, Respondent has not established rights or legitimate interests in the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain names each resolve to a default web page
displaying links to various content unrelated to Complainant. Because Respondent has not made any
demonstrable preparations to use the disputed domain names for any purpose
since registering them in 2003, the Panel concludes that Respondent is not
using the disputed domain names in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interests can be found when the
respondent fails to use disputed domain names in any way).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Although Respondent’s registration and use of the disputed domain names does not fall within any of the elements listed in Policy ¶ 4(b), the Panel still finds that, based on the totality of the circumstances, Respondent’s registration and use of the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names is indicative of bad faith registration and use under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Respondent registered the <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names on November 8, 2003 and Respondent has not made any active use of the disputed domain names for almost three years. The disputed domain names resolve to a default web page featuring links to various content unrelated to Complainant. The panel in Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), stated, “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Due to Complainant’s federal registration of the SPLENDA mark and Respondent’s addition of terms logically related to Complainant’s SPLENDA mark in the domain names, the Panel concludes that any use Respondent could make of the disputed domain names would be in bad faith. Therefore, Respondent’s failure to make use of either domain name suggests bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel concludes that 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 <sweetenedwithsplenda.com> and <madewithsplenda.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 3, 2006
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