National Arbitration Forum

 

DECISION

 

Monsterops, LLC v. Testosterone LLIC

Claim Number: FA1007001333475

 

PARTIES

 

Complainant is Monsterops, LLC (“Complainant”), represented by Thomas J. Overton, of The Overton Law Firm, Denver, Colorado, USA.  Respondent is Testosterone LLIC (“Respondent”), represented by Andrew Brown, New York, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <testosterone.com>, registered with Network Solutions, LLC.

 

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.

 

FERNANDO TRIANA, Esq., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2010.

 

On July 6, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <testosterone.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 July 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@testosterone.com by e-mail.  Also on July 13, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on August 2, 2010.

 

On August 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Fernando Triana as Panelist.

 

On August 19, 2010, after reviewing all the documents submitted by the parties, the Panel decided to request additional evidence prior to issuing its decision.

 

The Complainant submitted a response to the Panel’s order on August 26, 2010. The Respondent submitted its response on August 20, 2010.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Monsterops, LLC submitted the complaint in July 2, 2010. However, in reviewing the Complaint the Forum identified deficiencies and in consequence required the Complainant to amend them.

 

An amended Complaint was received on July 12, 2010.

 

The Complainant makes the following assertions:

 

1.      Respondent’s <testosterone.com> domain name is identical to Complainant’s TESTOSTERONE trademark.

 

On May 19, 1997, Complainant applied to register the TESTOSTERONE trademark with the United States Patent and Trademark Office –PTO- and on February 24, 2004, the United States Patent and Trademark Office –PTO- approved the application and issued the Certificate of Registration No. 2,817,618.

 

2.      Respondent does not have any right or legitimate interests in the <testosterone.com> domain name.

 

3.      Respondent’s <testosterone.com> domain name is being held, but is not in use. Upon information and belief, Respondent has never used the domain name.

 

4.      Attempts to contact the Respondent have been unsuccessful.

 

B.     Respondent makes the following responses:

 

1.      Respondent’s <testosterone.com> domain name is not identical to Complainant’s TESTOSTERONE trademark.

 

2.      Respondent registered the domain in good faith in 1995, at a time when Complainant was not in business.

 

3.      Respondent’s <testosterone.com> domain name is in use.

 

4.      Respondent should be considered as having rights and legitimate interests in respect to the <testosterone.com> domain name.

 

C.     Additional Submissions

 

Complainant filed the following additional response, following the Panel’s order dated August 19, 2010:

 

1.      The attempts were made by prior counsel for Monsterops, LLC., Mr. Steven Sullivan. Due to the circumstances in which Mr. Sullivan stopped representing the company, Monsterops LLC. is not able to provide written evidence of the attempts made to contact the Respondent.

 

Respondent filed the following additional response, following the Panel’s order dated August 19, 2010:

 

1.         Respondent has not and never had, any services associated with the domain name <testosterone.com>. The Respondent uses the domain for things other than web services.

 

FINDINGS

 

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Likewise, paragraph 10 (d) of  “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

Paragraph 4 (a) of the Policy requires that the 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 the Respondent is identical to a trademark or service mark in which the Complainant has rights;

 

(2)               The Respondent has no rights or legitimate interests in respect of the domain name;

 

(3)               The domain name has been registered and is being used in bad faith.

 

 

DISCUSSION

 

 

A.           Formal Deficiencies of the Response

 

The Response filed by the Respondent, was administratively deficient in a number of respects, taking into account the provisions contained in Paragraph 5(b) of the UDRP Rules in force, including the following:

 

1.                       The response did not provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the domain-name holder and of any representative authorized to act for the Respondent in the administrative proceeding.

 

2.                       The response did not specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information).

 

3.                       The response did not include the statement that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b).

 

4.                       No annexes or documentary or other evidence upon which the Respondent relies was filed with the response.

It is true that there are no specific and uniform rules regarding when a deficient response should be accepted or rejected. Each different panel has decided according to the particularities of each case. Most panelists believe, and that is also this Panel’s belief, that they are entitled to decide whether or not to accept a deficient response.

The sole Panelist stresses the fact that the Respondent’s submissions were filed by Mr. Andrew Brown, who appears to be the Technical Contact for the registered domain and not a Respondent’s representative. Respondent’s representative remains unknown to the Panel.

 

This Panel finds that the deficiencies will not result in the rejection of the Response.  The response will be accepted but will be studied and analyzed in light of the fact that it lacks supportive evidence and/or documents to affirm any of the Respondent’s claims.

 

Identical and/or Confusingly Similar

 

The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant alleges that it holds the trademark Certificate of Registration No. 2,817,618 issued by the United States Patent and Trademark Office –PTO- on February 24, 2004 for its TESTOSTERONE trademark.  Complainant asserts that it applied for this trademark registration on May 19, 1997 and that the Domain Name is identical with and confusingly similar to the referenced trademark pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of generic or merely descriptive terms.^[1]  Complainant also states that the first use of the TESTOSTERONE trademark took place in May 15, 1998.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

In fact, Complainant has provided evidence of a registration for the TESTOSTERONE mark, at least in the United States of America as shown in Exhibit A of Complaint. The prior, gives Complainant legitimate right to file the complaint under examination.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive^[2]. Complainant’s registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Respondent has the burden of refuting this assumption^[3].

 

Respondent, however, argues that the TESTOSTERONE trademark was registered after the domain name <testosterone.com>. According to the Respondent, when the domain name <testosterone.com> was registered, the Complainant was not even in business.

 

The <testosterone.com> domain name was registered before the TESTOSTERONE trademark application was even filed. In fact, the <testosterone.com> domain name was registered in 1995 while the application for the TESTOSTERONE trademark was filed in May 19, 1997 and approved in February 2004.

 

As stated in several WIPO cases[4], Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The date in which the domain name and the trademark were registered and the fact that the domain name was registered prior to the trademark, may only be relevant regarding the assessment of bad faith according to Paragraph 4(a)(iii) of the Policy as it will be analyzed below.

 

Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademark, the sole Panelist wants to point out that the addition of generic top-level domains (gTLD), i.e., .com, .biz, .edu, .org cannot be taken into consideration when studying if the registered domain name is confusingly similar to the registered trademark.

 

As it has been repeatedly accepted by UDRP panels the existence of the “.com” generic top-level domain (gTLD), in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical or confusingly similar to the mark in which the Complainant asserts rights.

 

“In the strictest sense, the domain name lumena.com is not identical to the trademark Lumena. The former includes a top level domain “.com” while the word Lumena stands alone in the latter. However, where the addition of it top-level domain appeared the domain name was the one that most closely described that nature of trademark (i.e.; “com” representing a commercial enterprise). The virtual identically seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy” ^[5]

 

The sole Panelist notes that the entirety of the mark TESTOSTERONE is included in the Respondent´s Domain Name <testosterone.com>. Therefore, the Domain Name is identical and confusingly similar to the TESTOSTERONE mark pursuant to the Policy paragraph 4(a)(i). Actually the addition of .com is not a distinguishing difference.^[6]

 

Therefore the sole Panelist concludes that this evidence establishes Complainant’s rights in the TESTOSTERONE trademark for purposes of Policy ¶ 4(a)(i). This, in addition to the above, because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.

 

Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Complainant asserts that Respondent has no rights or legitimate interests in the <testosterone.com> domain name. Complainant claims that he should be considered as having rights and legitimate interests in respect to the <testosterone.com>domain name.

 

Complainant claims that the Respondent has no rights or legitimate interests over the domain in dispute. At the same time, Complainant proved that he has rights and legitimate interest in the <testosterone.com> domain name, while Respondent failed to provide any evidence that may have contradict Complainant’s assertions.

 

Previous decisions such as ARAG Allgemeine Rechtsschutz-Versicherungs-AG v. Seung Nam Kim, (WIPO Case No. D2006-1001), when referring to Policy ¶ 4(a)(ii), stated that:

 

“The clear consensus of previous decisions under the Policy is that a Complainant establishes this element by making out a prima facie case against the Respondent. (See Overview of WIPO Panel Views on Selected UDRP Questions <http://www.wipo.int/amc/en/domains/search/overview/index.html>, item 2.1 <http://www.wipo.int/amc/en/domains/search/overview/index.html>) The Complainant has done this by indicating that the Respondent is not licensed or authorized by it to use its ARAG mark. The burden then shifts to the Respondent to rebut that case.”

 

Complainant filed evidence regarding its own rights and legitimate interests in the disputed domain. Respondent, on the other hand, failed to rebut Complainant’s assertions.

 

Other previous decisions followed that interpretation. In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”

 

According to the above cited decisions and to other decisions[7] , Complainant met its burden of establishing a prima facie case when alleging that he has rights and interest in the domain name. This shifts the burden to Respondent to articulate rights and legitimate interests in the domain name.  Since Respondent failed to produce either evidence or an argument in support of such rights or interests, the Panel is allowed to assume that Respondent has no such rights or legitimate interests.^{[8] [9]}

 

Even if the Respondent claims that he is using the domain name <testosterone.com>, he does not provide any evidence that may allow the sole Panelist to believe that the domain is being used, even privately.

 

In order to grant the opportunity to the Respondent to prove that he has been using the domain name <testosterone.com>, the Respondent was requested, by Order dated August 19, 2010, to provide evidence regarding the use of the domain name. The Respondent answered on August 20, 2010, stating that: “We do not and have never had any services associated with the DNS name www.testosterone.com. We use the domain for things other than web services.”

 

The sole panelist finds that the Respondent fails to provide evidence of the use of the domain name <testosterone.com>.

 

The evidence filed by the Complainant as Exhibit B whose content was confirmed ex-officio by the Panel by the means of an inspection to the web-site <t-nation.com/previousIssues.jsp> on September 7, 2010, shows that the Complainant is using its TESTOSTERONE trademark. The above mentioned web-site and the print outs filed by the Complainant, claim that the TESTOSTERONE trademark has been in use for several years.

 

Exhibit A (Complainant’s Testosterone Trademark Registered with the United States Patent and Trademark Office) filed by the Complainant, also refers to a first use in commerce of the TESTOSTERONE trademark, taking place on May 15, 1998.

 

On this particular issue, the Panel deems appropriate to mention that Respondent’s failure to provide a response as requested by the Panel, means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii), bearing in mind that Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, making incumbent for Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the Respondent.

 

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <testosterone.com> domain name and thus, Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

To fulfill the third requirement, the Complainant must prove that the domain name was registered and is being used in bad faith.

The sole panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain name as presumptive and circumstantial evidence of Respondent´s bad faith in the registration and use of the <testosterone.com> domain name.

According to paragraph 4 (b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

It must be clarified that the above mentioned circumstances, are merely illustrative and not exclusive. The Panel may appreciate all the circumstances surrounding the case in order to determine whether or not the domain has been used in bad faith.

 

Respondent claims that the <testosterone.com> domain name is being held, but is not in use and that upon information and belief, Respondent has never used the domain name.

 

On the other hand, Respondent asserted that he has not and never had, any services associated with the domain name <testosterone.com>. He also stated that he uses the domain for things other than web services.

The sole Panelist considers that the Complainant has a history in the fitness business, taking into consideration the usage that it has given of its trademark. Moreover, the fact that the Complainant has registered its TESTOSTERONE trademark is sufficient evidence for the sole Panelist that the Complainant is identifiable in the market by its distinctive sign.

Also the domain name <testosterone.com>, is clearly connected to the Complainant’s trademark, as the sole Panelist concluded by the analysis of the evidence provided by the Complainant (See Exhibit B).

 

The Panel confirms that the domain name <testosterone.com> is not in use. On September 7, 2010, the sole Panelist tried to access the disputed domain, finding that the same is not currently in use. At this respect, the Respondent also alleged, when responding to the Order issued by the Panel on August 19, 2010, that:

 

“We do not, and have never had, any services associated with the DNS name www.testosterone.com. We use the domain for things other than web services.”

 

The Respondent, even if he claimed that he is using: “the domain for things other than web services”, failed to prove or even to describe what those: “things other than web services” are.

 

In consequence, the Panel concludes that the Respondent failed to provide any evidence whatsoever  regarding its use of the disputed domain.

 

According to the ICANN Policy, the requirement by which the Complainant must prove that the Respondent is using the disputed domain in bad faith does not oblige him to prove that the Respondent is taking positive action. The fact that the Respondent is not using the domain, does not exclude the possibility of concluding that he acted in bad faith. According to all the particular circumstances of the case, bad faith can be asserted even if the only positive action of the Respondent was to register the domain.

 

Several precedents strengthen the above mentioned position[10]. It has been accepted that holding a disputed domain name can be considered as bad faith registration and use under Policy 4(a)(iii).

 

Respondent had several opportunities to prove that he has been using the disputed domain. However, when required to produce evidence regarding its use of the disputed domain, he failed to deliver them to the Panel.

 

This circumstance when analyzed, especially with Respondent’s failure to prove that he has a legal interest on the domain, is enough to conclude that the Respondent had registered and used the domain in bad faith according to the Policy.

 

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4 (a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <testosterone.com> domain name.

 

DECISION

 

Having established all three elements required under the paragraph 4(a) of the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <testosterone.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Fernando Triana Esq.

Panelist
September 8, 2010

 

 

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