SuperNutrition Life-Extension Research, Inc. v. Philippe Serra c/o Smart City SA
Claim Number: FA1406001566931
Complainant is SuperNutrition Life-Extension Research, Inc. (“the Complainant”), represented by Mari-Elise Taube of Stites & Harbison, PLLC, Virginia, USA. Respondent is Philippe Serra c/o Smart City SA (“the Respondent”), represented by Jane Chuang of Lee Anav Chung White & Kim LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <super-nutrition.com> (“the disputed domain name”), registered with NETWORK SOLUTIONS, LLC.
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.
Jonas Gulliksson (chair), Honorable Karl V. Fink (Ret.) and Mr. Henrik af Ursin as Panelists.
The Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2014; the National Arbitration Forum received payment on June 26, 2014.
On June 27, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <super-nutrition.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 the Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2014 by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@super-nutrition.com. Also on June 27, 2014, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 17, 2014.
Complainant submitted an Additional Submission, which was found to be compliant on July 22, 2014.
Respondent submitted an Additional Submission, which was deemed compliant on July 28, 2014.
On July 31, 2014, pursuant to the Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jonas Gulliksson (chair), Honorable Karl V. Fink (Ret.) and Mr. Henrik af Ursin as Panelists.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
i. The Complainant, SuperNutrition Life-Extension Research, Inc., has been using the SUPERNUTRITION mark in commerce since 1978 in connection with the sale of dietary supplements.
ii. The Complainant has a valid trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SUPERNUTRITION mark (Reg. No. 1,389,652, registered on the principal register April 15, 1986, in class 5).
iii. The disputed domain name is confusingly similar to the mark in which the Complainant has rights.
i. The Respondent is using the disputed domain name with intent to confuse the Complainant’s customers and to benefit from the Complainant’s goodwill.
i. The Respondent had actual or constructive knowledge of the Complainant’s trademark when it registered the disputed domain name.
ii. The disputed domain name is disrupting the business of the Complainant.
iii. The Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by using a domain name that is confusingly similar to the Complainant’s to sell products that compete with the Complainant.
i. The Respondent, Philippe Serra c/o Smart City SA, has been using the disputed domain name since 2011 in connection with the sale of hormonal supplements.
i. The Respondent is commonly known by the disputed domain name.
ii. The Respondent is using the disputed domain name for a bona fide offering of goods as the Respondent chose the disputed domain name as an extension of its SUPER-SMART products.
i. Because the Respondent has rights or legitimate interests in the <super-nutrition.com> domain name pursuant to Policy ¶ 4(a)(ii), the Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)
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."
Policy 4(a) requires that a 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.
The Complainant is the holder of a U.S. registered trademark SUPERNUTRITION (Reg. No. 1,389,652, registered April 15, 1986). The Complainant has no validly registered trademark in the Respondent’s country, in this case Luxembourg, or in the European Union. Firstly, the Panel notes that the Policy does not require the Complainant’s mark to be protected in the Respondent’s country. Therefore, the aforementioned mark is sufficient to initiate an action under the Policy against the Respondent. See Kansas City Life Insurance Company v. Bryan Winstanley / Winstanley Internet Sales, FA 1560359 (Nat. Arb. Forum., June 27, 2014); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum., August 24, 2010).
The disputed domain name consists of the words “super” and “nutrition” with the addition of a hyphen between them and with the addition of the generic Top Level Domain (“gTLD”) “.com”. According to well-established consensus among panels, the mere addition of the gTLD “.com” is insufficient to differentiate a disputed domain name from a mark. The Panel finds that the combination of the words “super” and “nutrition” directly relates to the Complainant’s SUPERNUTRITION mark. Further, the Panel finds that the addition of a punctuation mark such as a hyphen is insufficient in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003).
In accordance with the findings above the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s SUPERNUTRITION mark in the meaning of Policy ¶ 4(a)(i) and the first element of the Policy is thus fulfilled.
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), and then the burden shifts to the Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The Complainant has asserted that no permission has been granted to the Respondent to register the disputed domain name and that the Respondent has no rights of its own or legitimate interests to the disputed domain name. Moreover, the Complainant argues that the disputed domain entirely incorporates the Complainant’s SUPERNUTRITION mark with the only difference consisting of a hyphen and the generic Top Level domain (“gTLD”) “com”. Furthermore, the Complainant argues that the Respondent is using the disputed domain name with intent to confuse the Complainant’s customers and to benefit from the Complainant’s goodwill.
The Respondent claims that it is commonly known by the disputed domain name and is using the disputed domain name for a bona fide offering of goods as the Respondent chose the disputed domain name as an extension of its “SUPER-SMART” products.
The Panel notes that the Respondent appears to have been using the SUPER-SMART mark since 1997 and the disputed domain name resolves to the webpage of a legitimate business. The Panel also finds that the Respondent has been using brands consisting of the mark “super”, both in “SUPER-SMART” and “SUPER-NUTRITION” prior to the registration of the mark.
In addition the Panel finds that the Complainant’s allegation concerning international use does not constitute sufficient evidence to prove a right of user neither internationally nor in the European Union. In this connection it should be noted, that the words “super” and “nutrition” are highly descriptive in relation to food products or food additives. Without any evidence of existing registration or user right, third parties outside the U.S. may rightly believe that they could freely use the words descriptively in relation to food products or other nutritional products.
In accordance with the findings above the Panel concludes that the Complainant has failed to meet the burden of proof to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
In consideration of the complexity of the case, the Panel has decided to analyze the remaining element of the Policy, namely registration and use in bad faith under Policy ¶ 4(a)(iii).
The Complainant asserts that the Respondent’s registration and use of the disputed domain name disrupts the Complainant’s business due to widespread use of the SUPERNUTRITION mark. The Complainant accuses the Respondent of redirecting Internet users to a commercial website that sells products that compete directly with the Complainant. According to the Complainant, the Respondent is also attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion regarding the Complainant’s affiliation with the disputed domain name. The Complainant argues that since the Respondent is in the same industry combined with the fact that the registration date of the SUPERNUTRITION mark predates the disputed domain name registration by approximately 25 years, the Respondent had notice of the SUPERNUTRITION mark prior the registration of the disputed domain name. The Complainant argues that since the disputed domain name is almost identical to the Complainant’s SUPERNUTRITION mark that is evidence of the Respondent’s attempt to create confusion with the Complainant’s mark. The Complainant alleges that the Respondent had actual knowledge of the Complainant’s rights in SUPERNUTRITION mark due to the notoriety of the Complainant’s trademark. The Complainant accuses the Respondent’s business of targeting the United States, which indicates the Respondent’s knowledge of the Complainant’s SUPERNUTRITION mark.
The Respondent claims that it registered the disputed domain name for the purpose of rebranding its hormonal supplement line and related website from “Super Hormones” to “Super-nutrition.” The Respondent was not aware of the Complainant’s mark and has not been until this dispute. The Respondent contends that it did not intend to disrupt the Complainant’s business because they sell different products even though they are within the industry and consumers of dietary supplements are unlikely to accidently purchase one type of supplement instead of another. The Respondent claims that it has not redirected any Internet users. The Respondent and the Complainant are not competitors since they operate in different markets. The Respondent also claims that the SUPERNUTRITION mark was not commonly known in Europe at the time of registration of the disputed domain name. The Respondent contends that the disputed domain name is targeting the European market, since it is offered in seven European languages and lists prices in Euro.
The Panel notes that trademark registration in the U.S. provides for national constructive notice. However, the Respondent is not located in the U.S., and has therefore no constructive notice of the trademark registration. The Panel finds no evidence showing that the Respondent is using the disputed domain name to redirect Internet users.
The Panel finds that the Complainant has not established that its SUPERNUTRITION mark was commonly known in the European Union and/or Luxembourg prior to the Respondent’s registration of the disputed domain name. The Panel finds no evidence regarding the Respondent’s actual notice of the Complainant’s SUPERNUTRITION mark nor that the Respondent intentionally sells or market its products to U.S. customers. Furthermore, the Complainant has not presented evidence showing any rights in Luxembourg or the European Union.
Regardless of above, the Panel finds that the Complainant and the Respondent are within the same industry (an industry related to food products or other nutritional products). This finding cannot by itself be enough to establish actual notice of the Complainant’s trademark rights and therefore establish bad faith use with the Respondent. Furthermore, the Respondent has registered a domain name which is almost identical to the Complainant’s U.S. registered trademark. However, the disputed domain name incorporates the words “super” and “nutrition”, with the addition of a hyphen in between them. As concluded above, these words are highly descriptive particularly in relation to food products or food additives. Even though the disputed domain name is almost identical to the Complainant’s registered trademark in the U.S., it cannot solely, or combined with above findings, constitute evidence of bad faith, as the Respondent is located in another country. Regarding the contentions of the parties concerning confusing similarity or competitiveness between the products, this issue has no relevance in view of the fact that the basic requirements for transfer have not been considered as fulfilled.
In conclusion, the Panel finds that mere assertions of bad faith are not enough for a Complainant to establish bad faith with both registration and use of the disputed domain name. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Therefore, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <super-nutrition.com> domain name REMAIN WITH the Respondent.
Jonas Gulliksson acting as Chair, Honorable Karl V. Fink (Ret.) and Mr. Henrik af Ursin as Panelists
Dated: August 14, 2014
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