NAC Marketing Company, LLC
v. Chen Bao Shui
Claim Number: FA0704000957159
PARTIES
Complainant is NAC Marketing Company, LLC (“Complainant”), represented by Rocco
S. Barrese, of Dilworth & Barrese, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapvitamin.com>, registered with Enom, Inc.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 10, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 10, 2007.
On April 10, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <cheapvitamin.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 18, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 8, 2007 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@cheapvitamin.com by e-mail.
A Response was received on May 8, 2007,
and was considered deficient by the National Arbitration Forum pursuant to
ICANN Rule 5(a) because it was only received in electronic form. A hard copy of the Response was later
received on May 9, 2007. The Panel
decides to consider the deficient e-mail of May 8, 2007 together with the hard
copy of May 9, 2007 as Respondent’s Response.
On considerations of natural justice, a delay of only one day after the deadline
is not enough for this Panel to decide that Respondent is in default.
A timely Additional Submission from Complainant was received on May 10,
2007 in accordance with the Forum’s Supplemental Rule 7. An Additional Submission was made by
Respondent on May 15, 2007, and sent to the Panel on May 16, 2007. The Panel agrees with the Forum that
Respondent’s Additional Submission was received after the deadline for
submissions, and is therefore not in compliance with the Forum’s Supplemental
Rules. In any case, most if not all
allegations contained in Respondent’s late submission are already contained in
his Response of May 8-9, 2007.
On May 16, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Roberto A. Bianchi as Panelist.
On May 18, 2007, the Forum received a Letter from Complainant
requesting the Panel not to consider Respondent’s late submissions - allegedly
non-compliant with the Forum’s Rules - and to reprimand Respondent for some –
quoting Complainant – “abusive remarks, accusations and intimidations”
allegedly made by Respondent in several e-mails to the Forum and in his late
reply of May 15, 2007. On May 25, 2007, Respondent sent a “Respondent’s Reply to Complainant 's Second Reply” to the
Forum. Without condoning any improper remark from any Party in these
proceedings, the Panel finds that neither Complainant’s Letter nor Respondent’s
Reply thereto are in compliance with the Forum’s Rules, and decides not to
consider them.
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complaint, Complainant contends as follows:
Respondent's domain name is identical to Complainant's registered U.S. Trademark and registered domain name.
Respondent should be considered as having no rights or legitimate interests in the domain name <cheapvitamin.com>. Respondent's domain name <cheapvitamin.com> is not associated with any bona fide offering of goods and services. The domain is used as a directory to other web pages offering a multitude of goods and services other than the sale of vitamins. Respondent is not commonly known by domain name <cheapvitamin.com>. Respondent has no legitimate use of the domain name other than to divert consumers from Complainant's website and to mislead consumers into believing that Respondent is somehow associated with Complainant's business and trademark.
Respondent
has, in bad faith, registered the domain name <cheapvitamin.com>
for no other purpose other than to intentionally attract business to
Respondent's website by creating a likelihood of confusion with Complainant's
U.S. registered trademark and registered domain name. It is apparent that consumers may believe
that Complainant's trademark is CHEAPVITAMIN.COM rather than CHEAPVITAMINS.COM
and by inadvertently omitting the letter "S" after
"VITAMIN" will come across Respondent's website page and will be
offered links to other websites that offer airline tickets, mortgages, hotels
and numerous other products unrelated to vitamins and other nutritional
supplements. This diversion is an
attempt to disrupt the business of Complainant for commercial gain and in
effect may force Complainant to offer to buy the domain name from Respondent as
to alleviate confusion for legitimate consumers looking to buy vitamins from
CHEAPVITAMINS.COM. Respondent's
registration of <cheapvitamin.com>
is therefore an attempt to deter, in bad faith, consumers from a Complainant's
legitimate business.
B. Respondent
In its Response, Respondent contends the following:
Respondent's <cheapvitamin.com> has been registered on December 7, 1999. Complainant's <cheapvitamins.com> has been registered on August 30, 2001.
According to Complainant’s exhibit No. 1, the trademark CHEAPVITAMINS.COM is allegedly in commercial use since August 31, 2001. This is almost two years after the domain name <cheapvitamin.com> has been registered. The trademark CHEAPVITAMINS.COM has been filed on January 4, 2005, that is five years after <cheapvitamin.com> has been registered. The registration date of the trademark, August 8, 2006, is almost six years after the <cheapvitamin.com> domain name has been registered.
"Cheap vitamin" are two common generic words. That is why Complainant chose to use it for his business in the first place. Should <cheapvitamin.com> be available for registration at the time Complainant was starting his business, he would very likely register it. But it was not free at that time anymore, of course, and now Complainant is trying to take the domain name in an unfair, dirty way.
Recently a federal court in
Respondent has a legitimate interest in the <cheapvitamin.com> domain name - it is an asset (two-word generic domain) for possible future use - development, vitamin sales.
The domain has recently been parked at Domainsponsor, and it shows advertisements most of which are for sales of vitamins, which is a "bona fide offering" for a domain <cheapvitamin.com>, methinks.
But even if Respondent would use the domain name for selling cars, credit cards or would not have made it available via http at all - it is Respondent’s, not Complainant’s business. There are no rules how and if a ".com" domain name must be used.
There is no proof whatsoever that people typing <cheapvitamin.com> are looking for <cheapvitamins.com> rather than simply for buying "cheap vitamin."
The <cheapvitamin.com> domain name has been registered in 1999 when no <cheapvitamins.com> existed yet, therefore the domain could NOT have been registered in bad faith.
Complainant has NOT sent the Complaint via email, maybe hoping that Respondent's address is not real, and that Respondent will not file a response. Which could be yet another proof of Complainant’s bad intentions and Complainant’s knowledge that his arguments do not have any grounds.
If this is not a domain name hijacking attempt, I wonder what one looks like...
The domain hijacking schema according to Complainant should work this way -find a domain which is not in use (parked etc.) -register or buy a similar domain -create some business on it -register a TM on this similar domain -file a UDRP complaint and try to steal the original domain.
Searching for “cheap vitamin” on
<google.com> does list <cheapvitamins.com> practically nowhere to
find (94th result of search results). Respondent's <cheapvitamin.com>
has been registered 7.12.1999. Complainant's
<cheapvitamins.com> has been registered 30.8. 2001. Trademark cheapvitamins.com is allegedly
"first time in commercial use” since August 31st 2001 according
to "evidence No 1.," which is almost two years after the domain name <cheapvitamin.com>
has been registered. Therefore <cheapvitamin.com>
could not have been registered in "bad faith" as registrant could not
have contemplated Complainant's non-existent rights at that time. Also, trademark CHEAPVITAMINS.COM has a
Filing Date January 4, 2005 which is five years after <cheapvitamin.com>
has been registered. According to
<web.archive.com> as of September 22, 2001, <cheapvitamins.com> was
obviously not in “commercial use.”
C. Additional Submissions
In its Additional Submission of May 9, 2007 Complainant replies to Respondent’s Response as follows:
Respondent's Responses to the Complaint are not in compliance with ICANN UDRP or Forum requirements. Complainant therefore requests that the panel treat Respondent's documents as non‑compliant and issue a decision in Complainant's favor.
The domain name <cheapvitamin.com> was first registered (by a third party) on November 3, 1999. This registration was prior to Respondent's registration of <cheapvitamin.com> on December 7, 1999. In all likelihood, this is why it was necessary for Respondent to register the less desirable form (improper English form) <cheapvitamin.com> over the more desirable form (proper English form) <cheapvitamins.com>.
Respondent's website <cheapvitamin.com> had no bona fide commercial purpose and did not offer any goods or services (and even these offerings are of a dubious nature), until November 23, 2003, well after Complainant's domain name registration of <cheapvitamins.com> on August 30, 2001 and also well after Complainant's first date of use in commerce (August 31, 2001), as recited in Complainant's U.S. Reg. No. 3,128,227, of the trademark CHEAPVITAMINS.COM. This chronology of events clearly evidences Respondent's bad faith in attempting to play off Complainant's well known and active domain name and trademark CHEAPVITAMINS.COM.
Regarding Respondent's remarks relating to "generic words," Complainant submits that its trademark has become distinctive of Complainant's goods and has achieved secondary meaning.
Respondent admits that its domain name is parked and merely shows advertisements directing traffic to other websites clearly unassociated with the sale of vitamins. Most of the advertisements are not for the sale of vitamins but rather are for airline tickets, hotels, car rentals, car insurance, mortgages, real estate, etc. Since Complainant filed its Complaint, Respondent has been amending its website to emphasize the sale of vitamins in an obvious attempt to remedy its bad faith and in an apparent attempt to deceive the panel into believing Respondent has a legitimate interest in the domain name.
Respondent's website advertises mortgages, real estate, airline tickets, hotels, car rentals, credit reports, etc. Why would a consumer looking for these goods or services go to a website entitled <cheapvitamin.com>? Why not use a domain name, such as, for example, <cheapgoodsandservices.com>? Clearly, Respondent has no legitimate interest in the domain name other than to play off Complainant's well known website and direct traffic to its website.
Respondent's domain name <cheapvitamin.com>
was registered (December 7, 1999) after the domain name
<cheapvitamins.com> was registered (November 3, 1999). Respondent's
website only became active well after Complainant's website became well known
clearly evidencing Respondent's bad faith attempt to play off Complainant's
reputation and to divert Complainant's customers to Respondent's website which
offers goods and services totally unrelated to vitamins. Respondent's typosquatting and cybersquatting
scheme goes like this:
- Register a domain name one letter away from a desirable previously registered domain name;
- Wait until the previously registered domain name becomes very well known to the public;
- Then begin playing off the notoriety of the earlier registered domain name and divert customers to Respondent's website; and possibly
- Wait for an offer to purchase Respondent's domain name.
Notwithstanding the dates of domain registration, Complainant submits that ICANN Policy paragraph 4(a)(i) does not state and therefore does not require and should not require that trademark rights need to be in existence when a domain name is registered to evidence bad faith but rather that trademark rights need only be existent at the time of filing the Complaint and that bad faith can be shown subsequent thereto. Otherwise, paragraph 4(a)(i) would allow for activity such as that of Respondent herein.
Regarding Respondent's statement that Complainant did not e‑mail its Complaint to Respondent, the initial information available to Complainant (WHOIS page dated March 26, 2007) appears to recite a bogus e‑mail address and therefore Complainant chose not to use it.
Complainant has not brought this action in bad faith and is not attempting to "hijack" Respondent's domain name but rather has brought this action because Complainant believes it has been harmed by Respondent and will continue to be harmed by Respondent unless Respondent's domain name is transferred to Complainant.
In reply to Respondent's reference to search results on <google.com>, it should be noted that Respondent's conclusions are irrelevant since the Complainant's position in this matter is that consumers looking for Complainant's website by making a simple typographical error (omitting the "s") are directed to Respondent's website, which is more than likely what Respondent is hoping to happen.
In reply to Respondent's statement
that Complainant is not the owner of U.S. Reg. No. 3,128,227,
CHEAPVITAMINS.COM, the panel's attention is directed to item No. 2 on the
schedule of documents submitted with its Complaint evidencing the assignment of
the U.S. Trademark Registration from JJC Marketing Inc. to NAC Marketing
Company LLC.
FINDINGS
The Panel finds that the <cheapvitamin.com>
domain name is almost identical or
confusingly similar to the CHEAPVITAMINS.COM mark, in which Complainant has
rights. The domain name in dispute, made
of two generic terms forming the also generic compound “cheap vitamin,” appears
to have been selected by Respondent for registration precisely because of its
generic nature. Thus, Respondent appears
to have legitimate rights in such generic expression on a “first come, first
served” basis. As the domain name was
registered twenty months before Complainant’s mark was first used, and five
years and eight months before Complainant’s trademark was applied for,
Respondent cannot be held to have registered the <cheapvitamin.com>
domain name in bad faith, i.e. with
Complainant’s future or potential mark in mind.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
According to the registration certificate and the Trademark Assignment
Abstract of Title exhibited as Annexes 1 and 2 to the Complaint, respectively,
on January 4, 2005 JJC Marketing, Inc. applied for the CHEAPVITAMINS.COM
trademark before the U.S.P.T.O, for on-line ordering services featuring
nutritional supplements in class 35. On
August 4, 2005 the U.S.P.T.O. recorded the assignment of the mark to Complainant
NAC Marketing Company, LL, as assignee. On August 8, 2006 the trademark
registration was granted under Reg. No. 3128227. Complainant has thus evidenced that it has
rights in the CHEAPVITAMINS.COM mark.
The trademark application for CHEAPVITAMINS.COM was made on January 4,
2005, well after Respondent had registered the domain name. Contrary to Respondent’s claim, this
chronology has no consequence as to the first requirement of the Policy,
because the UDRP makes no specific reference
to the date of which the owner of the trademark acquired rights. See Walsh Bishop Assocs., Inc. v. Honggi, Honggi Kim, FA 907521
(Nat. Arb. Forum Mar. 6, 2007); see also Document
Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Significantly, the Policy does not require the Complainant to prove that it
had rights in a trademark "as of the date of the domain name
registration"”); see also Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001); see
also Motorola, Inc. v. R3 Media, D2006-1393 (WIPO Feb. 15, 2007) (“According to established precedent, Complainant need only
have the rights at the time the Complaint was filed.”)
The domain name at issue is almost identical or
confusingly similar to Complainant’s mark.
The former only lacks the final “s” in “vitamin.” Such a minor difference is not sufficient to
distinguish Respondent’s domain name from Complainant’s registered mark. See State Farm Mut. Auto.
Ins. Co. v. Try Harder &
Accordingly, the Panel finds that the first element of the Policy is
met.
Respondent registered <cheapvitamin.com>, a second-level domain name made of two
generic terms (“cheap” and “vitamin”), composing the also generic phrase “cheap
vitamin”, on December 7, 1999, one year and eight months before Complainant
registered and began using its <cheapvitamins.com> domain name, or could have acquired rights in
its CHEAPVITAMINS.COM U.S. registered mark. See Exhibit 3 to the complaint,
showing that the record of the <cheapvitamins.com> domain name registration was created on
August 30, 2001.
In its submission of May 10, 2007,
Complainant contends that the registration of the <cheapvitamins.com> domain name by a third party predated the
registration of the domain name at issue.
On May 28, 2007, following the suggestion of Complainant, the Panel
visited the web page at <web.archive.org/web/19991103083119/http://www.cheapvitamins.com>. However, the Panel found no evidence that the
<cheapvitamins.com> domain name was used in relation to
vitamins, or cheap vitamins by November 3, 1999 or before Respondent registered
its domain name. There is also no
evidence that the registrant or any other party had any trademark rights on the
<cheapvitamins.com> domain name at the time of the registration
of the <cheapvitamin.com> generic domain name.
In sum, the Panel
believes that Complainant has failed in demonstrating that Respondent lacks
rights or legitimate interests in such a generic domain name. See Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that a respondent has rights
and legitimate interests in the domain name where “Respondent has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively associated with Complainant’s business”);
see also Coming Attractions, Ltd.
v. Comingattractions.com, FA 94341 (Nat. Arb. Forum May 11, 2000) (finding
a respondent had the right to register the subject domain name, <comingattractions.com>, based
upon the generic use of the term "coming attractions").
It is not contested that Respondent registered the <cheapvitamin.com> domain name on December 7, 1999, one year and eight months before Complainant registered its <cheapvitamins.com> domain name, or that Complainant first used its CHEAPVITAMINS.COM trademark in commerce, and five years and eight months before Complainant applied for this trademark before the U.S.P.T.O. This chronology is certainly relevant to assess the bad faith requirement. See Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001) (holding that the fact that complainant’s marks postdated the domain name registration may be relevant in assessing the bad faith element pursuant to Paragraph 4(a)(iii)).
Registration
in bad faith requires that the registrant has registered the domain name with the
intent of extracting a profit from a mark known to belong to a third party, or
otherwise aiming at causing prejudice to the mark owner. Thus, “bad faith registration generally cannot be found if
the disputed domain name was registered before trademark rights were
established by the complainant.” See
Primal Quest, LLC v. Salas, D2005-1083 (WIPO Dec.
15, 2005). It would be
difficult for the Panel to conceive of how Respondent could have known of
Complainant’s future or potential CHEAPVITAMINS.COM mark at the time of the
domain name registration, and therefore to have registered the domain name in
bad faith. See Diamond Shamrock Refining and Mktg. Co. v. CES Mktg. Group Inc, FA 96766 (Nat. Arb. Forum Apr. 20, 2001) (finding that there
was no evidence that respondent had any knowledge of the complainant when it
registered the domain name prior to the issuance of the complainant’s
registered trademark); see also Grow.net, Inc. v. Long, D2001-0902
(WIPO Oct. 22, 2001) (as the disputed domain name was registered in May
1997 and the complainant had not began using its trademark in its business
until April 2000, the panel found that it was inconceivable that the respondent
knew of the complainant at the time of the domain name registration, and
therefore registered the domain name in bad faith).
The Panel concludes that Respondent cannot
have registered the domain name in bad faith.
This finding makes it unnecessary for the Panel to consider the issue of
use in bad faith.
In sum, Complainant failed to evidence the
third requirement of the Policy i.e. that the domain name was registered and is
being used in bad faith.
Reverse Domain Name
Hijacking
In his Response, Respondent wonders somewhat
rhetorically whether Complainant has not committed reverse domain name
hijacking i.e. that Complainant brought this Complaint in bad faith, in order
to obtain an order that the domain name registration be transferred from
Respondent to Complainant.
It is clear that a summary research would
have shown that the present Complaint had few chances to succeed. See Dreamgirls, Inc. v. Dreamgirls
Entm’t, D2006-0609 (WIPO, Aug. 10, 2006) (stating that numerous precedents have established that where
the domain name was registered prior to the establishment of trademark rights,
bad faith registration usually will not be found and the complaint usually will
fail). Although the Panel agrees with
the Dreamgirls panel that such precedents can hardly be ignored, it is
also true that counsel for Complainant has not cited to any decision in support
of its claims, which would allow a panel to infer that he is sufficiently
familiar with UDRP precedent – as counsel for the complainant certainly was in Dreamgirls. Therefore, the Panel is not satisfied that
the Complaint was brought in bad faith.
DECISION
As Complainant has not succeeded in proving
the second and third requirements under the ICANN Policy, the Panel concludes
that relief shall be DENIED.
Roberto A. Bianchi, Panelist
Dated: May 28, 2007.
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