PeroxyChem LLC v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER
Claim Number: FA1407001572587
Complainant is PeroxyChem LLC (“Complainant”), represented by Susan B. Flohr of Blank Rome LLP, Washington D.C., USA. Respondent is PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vigorox.com>, registered with DreamHost, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2014; the National Arbitration Forum received payment on July 30, 2014.
After numerous requests, the Registrar, DreamHost, LLC, has not confirmed to the National Arbitration that the <vigorox.com> domain name is registered with DreamHost, LLC or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2014 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@vigorox.com. Also on August 14, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
1. Complainant has rights in the VIGOROX mark under Policy ¶ 4(a)(i).
a. Complainant is a leading global manufacturer and supplier of chemicals used in a variety of industries. Complainant has used the VIGOROX mark in U.S. commerce since as early as 1993 in connection with hydrogen peroxide and parasitic acid and related compositions.
b. Complainant owns a registration for the VIGOROX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,945,951 registered January 2, 1996). See Complainant’s Exhibit B.
c. Respondent’s <vigorox.com> domain name is identical to Complainant’s mark as it contains Complainant’s VIGOROX mark in its entirety.
2. Respondent has no rights or legitimate interests in the <vigorox.com> domain name.
a. Respondent is not commonly known by the VIGOROX mark. Complainant has not granted Respondent permission to use the mark for any reason, and the WHOIS information for the disputed domain name lists the registrant as “private registrant.”
b. Respondent uses the disputed domain name to provide users with a phone number to call for a “risk free trial” of Respondent’s male enhancement pills. Respondent’s website contains no information on the content or composition of the pills, their medical safety, their price, or how to place an order.
3. Respondent registered and is using the <vigorox.com> domain name in bad faith.
a. Respondent uses the disputed domain name to intentionally attract internet users for commercial gain, by creating a likelihood of confusion with Complainant.
b. Respondent was aware of Complainant and Complainant’s rights in the VIGOROX mark at the time Respondent registered the disputed domain name.
1. Respondent’s <vigorox.com> domain name is confusingly similar to Complainant’s VIGOROX mark.
2. Respondent does not have any rights or legitimate interests in the <vigorox.com> domain name.
3. Respondent registered or used the <vigorox.com> domain name in bad faith.
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."
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.
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.”).
Complainant explains that it is a leading global manufacturer and supplier of chemicals used in a variety of industries. Complainant states that it has used the VIGOROX mark in U.S. commerce since as early as 1993 in connection with hydrogen peroxide and parasitic acid and related compositions. Complainant contends that it has rights in the VIGOROX mark under Policy ¶ 4(a)(i) through its use in commerce as well as through its registration with the USPTO (Reg. No. 1,945,951 registered January 2, 1996). See Complainant’s Exhibit B. Prior panels have concluded that a registration for a mark with the USPTO is sufficient to establish rights in that mark, particularly when the mark is registered prior to the disputed domain name. Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel concludes that Complainant has rights in the VIGOROX mark through its use and ownership of registration with the USPTO.
Complainant next states that Respondent’s <vigorox.com> domain name is identical to Complainant’s mark as it contains Complainant’s VIGOROX mark in its entirety. The Panel notes that the only variation is the addition of the generic top-level domain (“gTLD”) “.com.” Panels have continuously found that gTLDs have no effect on the similarity of the domain name when compared to the registered mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel concludes that Respondent’s <vigorox.com> domain name is identical to Complainant’s mark, as the only difference is the addition of the gTLD “.com.”
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), and then the burden shifts to 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) (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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <vigorox.com> domain name under Policy ¶ 4(c)(ii). In arguing, Complainant contends that Respondent is not commonly known by the VIGOROX mark. Complainant urges that it has not granted Respondent permission to use the mark for any reason, and the WHOIS information for the disputed domain name lists the registrant as “private registrant.” Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further asserts that Respondent previously used the disputed domain name to provide users with a phone number to call for a “risk free trial” of Respondent’s male enhancement pills. Complainant claims that Respondent’s website contained no information on the content or composition of the pills, their medical safety, their price, or how to place an order. The Panel notes Complainant’s Exhibit D to see that Respondent’s previously resolving website featured the heading “Vigorox Get Your Manhood Back.” The panel in Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) stated that, “Diverting 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).” The Panel here therefore concludes that Respondent’s prior use of the disputed domain name to resolve to a website unrelated to Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Complainant additionally argues that Respondent registered and is using the <vigorox.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent uses the disputed domain name to intentionally attract internet users for commercial gain, by creating a likelihood of confusion with Complainant and Complainant’s products. The panel previously held in World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site. The immediate case is similar, in that Respondent previously used the disputed domain name to resolve to a commercial website that advertised its “male enhancement” products and displayed Complainant’s VIGOROX mark. The Panel thus concludes that Respondent’s prior commercial use of the disputed domain name indicates bad faith use and registration because Respondent aims to confuse Internet users and commercially profit from that confusion under Policy ¶ 4(b)(iv).
Additionally, Complainant asserts that Respondent was aware of Complainant and Complainant’s rights in the VIGOROX mark at the time Respondent registered the disputed domain name. Complainant argues that based on the identical nature of the <vigorox.com> domain name and Complainant’s history of use and ownership of the VIGOROX mark, that Respondent registered the disputed domain name in bad faith. The Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark given Respondent’s use of the identical disputed domain name to redirect Internet users to a website displaying Complainant’s mark. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vigorox.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 22, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page