Universal Protein Supplements Corporation d/b/a Universal Nutrition v. FABIO DE FARIA BARBOSA
Claim Number: FA1602001661334
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Craig A. Beaker of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is FABIO DE FARIA BARBOSA (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lojauniversalnutrition.com> and <lojauniversalnutrition.net>, registered with eNom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2016; the Forum received payment on February 17, 2016.
On February 17, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 February 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2016 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@lojauniversalnutrition.com, and postmaster@lojauniversalnutrition.net. Also on February 18, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the UNIVERSAL NUTRITION mark in connection with its sport nutrition health business. Complainant has registered the UNIVERSAL NUTRITION mark with the USPTO (e.g., Reg. No. 3,020,559, registered November 29, 2005), which demonstrates rights in the mark.
Respondent is in the retail nutrition supplement business and sells Complainant’s products as well as products offered by Complainant’s competitors.
Respondent’s <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names are confusingly similar to the UNIVERSAL NUTRITION mark as they both incorporate the mark in its entirety, add the “.com” and “.net” gTLD respectively, and the descriptive word “loja”, meaning “store” in Portuguese.
Respondent has no rights or legitimate interests in the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names. Respondent is not commonly known by the disputed domain names. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names. Rather, the domain names resolve to inactive websites.
Respondent is using the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names in bad faith. Respondent has not actively used the domain names since their registration in 2013. Additionally, Respondent had actual and constructive notice of the UNIVERSAL NUTRITION mark because it sold Complainant’s products through a different website (<sosuplementos.com.br>) for three years prior to the disputed domain names registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the UNIVERSAL NUTRITION mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its UNIVERSAL NUTRITION trademark.
Respondent’s at-issue domain names are inactive.
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(f), 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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registration for the UNIVERSAL NUTRITION trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. 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, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain names each contain Complainant’s trademark less its space, prefixed by the generic Portuguese term “loja” (meaning “store” in English), and appended with either the top level domain name “.com” or “.net.” The resulting difference between Complainant’s trademark and each of Respondent’s domain names is insufficient to distinguish either domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names are each confusingly similar to Complainant’s UNIVERSAL NUTRITION trademark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also, Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
WHOIS information for the at-issue domain names lists “FABIO DE FARIA BARBOSA” as the domain names’ registrant and there is nothing in the record that otherwise suggests that Respondent is commonly known by either the <lojauniversalnutrition.com> or the <lojauniversalnutrition.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by either at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names have never been active. The inactively of a confusingly similar domain name suggests neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum April 25, 2007) (finding that respondent had no rights or legitimate interests where it failed to make any active use of the domain name); see also Charles Jourdan holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where the respondent was not a license of the complainant, the complainant’s prior rights in the domain name preceded the respondent’s registration, and the respondent was not commonly known by the domain in question).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names.
As discussed below, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), Respondent has not used either at-issue domain names since registering them in 2013. Failing to use a domain name suggests bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Citigroup Inc. v. Renner a/k/a Inter-Mark Corp. a/k/a Cash Cards Int’l f/r/a CitiLynks.com, FA 1329486 (Nat.Arb. Forum July 22, 2010) (finding that respondent’s failure to make active use of domain name permitted inference of registration and use in bad faith).
Additionally, Respondent sold Complainant’s products for three years prior to the registration of the at-issue domain names and therefore at that time must have also had knowledge of Complainant’s rights in the UNIVERSAL NUTRITION trademark. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lojauniversalnutrition.com> and <lojauniversalnutrition.net> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 15, 2016
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