McNeil Nutritionals, LLC v. [Registrant]
Claim Number: FA0608000782965
Complainant is McNeil Nutritionals, 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 [Registrant] (“Respondent”), FL 34242.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <splendakills.com>, registered with Netfirms, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin 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 September 8, 2006, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <splendakills.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 September 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@splendakills.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <splendakills.com> domain name is confusingly similar to Complainant’s SPLENDA mark.
2. Respondent does not have any rights or legitimate interests in the <splendakills.com> domain name.
3. Respondent registered and used the <splendakills.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, McNeil Nutritionals, LLC, markets and sells a no-calorie sugar substitute and a low-calorie sweetening ingredient under the SPLENDA mark. Complainant provides information on its SPLENDA products, including recipes and cooking tips for using the products, at the <splenda.com> domain name (registered on October 10, 1996). Through its predecessors in interest, Complainant has continuously used the SPLENDA mark for over 16 years. Complainant’s parent company is Johnson & Johnson.
Complainant has registered the SPLENDA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,544,079 issued June 20, 1989; Reg. No. 2,581,278 issued June 18, 2002).
Respondent’s <splendakills.com> domain name, which it registered on February 15, 2006, currently resolves to a website displaying the following text: “spiritual Preservation & life’s everlasting needs don’t abstain knowing immortal loving lord & savior.” The website at the disputed domain name is blank except for this statement and display of the e-mail address info@splendakills.com. At one time, the disputed domain name resolved to a website with links to articles alleging that Complainant’s SPLENDA products were harmful and also indicating that the <splendakills.com> domain name was for sale. After Complainant sent Respondent a cease and desist letter, Respondent changed the website content to the current use.
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.
For purposes of Policy ¶ 4(a)(i), Complainant’s valid federal trademark registrations for the SPLENDA mark establish its rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The <splendakills.com> domain name contains
Complainant’s entire SPLENDA mark and merely adds the term “kills.” In Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001), the panel found the respondent’s domain names to be
confusingly similar to the complainant’s GOOGLE mark where the respondent
merely added common terms such as “buy” or “gear” to the end. Because Respondent has also merely added a
common term to the end of Complainant’s SPLENDA mark, Respondent has not
sufficiently distinguished the <splendakills.com> domain name from
the mark. Accordingly, the Panel
concludes that the <splendakills.com> domain name is confusingly
similar to Complainant’s SPLENDA mark pursuant to Policy ¶ 4(a)(i). See Disney v. McSherry, FA 154589
(Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com>
domain name to be confusingly similar to Complainant’s DISNEY mark because it
incorporated Complainant’s entire famous mark and merely added two terms to
it).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent has no rights or
legitimate interests in the <splendakills.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see also
Hanna-Barbera
Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <splendakills.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also 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).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
There is no evidence in the record to indicate that
Respondent is commonly known by the <splendakills.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the <splendakills.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum July 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 is currently displaying content at the disputed
domain name, which includes Complainant’s entire SPLENDA mark, wholly unrelated
to Complainant. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the respondent
registered <seiko.net>, which was identical to the complainant’s SEIKO
mark, and was redirecting Internet users to a third-party website unrelated to
the mark. The panel stated that
“[d]iverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).” Because similar circumstances exist in the present case, the
Panel finds that Respondent is not using the <splendakills.com>
domain name in connection with 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 State Farm Mut. Auto. Ins. Co. v. LaFaive,
FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of
information and services under a mark owned by a third party cannot be said to
be the bona fide offering of goods or services.”).
Additionally, Respondent’s prior use of the website to post
a link indicating that the <splendakills.com> domain name was for
sale further illustrates Respondent’s lack of rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where the respondent registered the domain name with the intention of selling
its rights).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
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 <splendakills.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 20, 2006
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