McCord Research, Inc. v. Robert Anderson
Claim Number: FA1805001785623
Complainant is McCord Research, Inc. (“Complainant”), represented by Christine Lebron-Dykeman of McKee, Voorhees & Sease PLC, Iowa, USA. Respondent is Robert Anderson (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMEs
The domain names at issue are <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net>, registered with Name.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2018; the Forum received payment on May 8, 2018.
On May 9, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 May 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2018 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@pinnaclelifegarcinia.com and postmaster@pinnaclelifelabs.net. Also on May 16, 2018, 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 June 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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, McCord Research, Inc. is a well-known manufacturer of skin and wound care as well as nutritional products. Complainant has rights in the PINNACLIFE and multiple related marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,771,168, registered Apr. 6, 2010). Respondent’s <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names are confusingly similar to Complainant’s marks and domain name.
Respondent has no rights or legitimate interests in the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the PINNACLIFE mark in any way. Further, Respondents use of the domain name at issue does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to divert Internet users to its websites for commercial gain.
Respondent registered and uses the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent registered the domain name in order to sell, rent, or otherwise transfer the domain name registrations to the Complainant for an amount that far exceeds Respondent’s out-of-pocket costs related to the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is McCord Research, Inc., of Coralville, Iowa, USA. Complainant is the owner of domestic registrations for the mark PINNACLIFE, and related marks and designs constituting the collection of PINNACLIFE marks. Complainant has used these marks continuously since at least as early as 2010, in connection with its provision of goods and services in the business of dietary supplements, skin care preparations, and related products for humans and animals.
Respondent is Robert Anderson of Brooklyn Park, Minnesota, USA. Respondent’s registrar’s address is not listed in the complaint. The Panel notes that Respondent registered both the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names together, or separately, on or about the dates of July 24, 2017 and October 17, 2017.
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 (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 claims rights in the PINNACLIFE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,771,168, registered April 6, 2010). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the PINNACLIFE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names are confusingly similar to the PINNACLIFE mark. While Complainant does not further substantiate this claim, the Panel notes both domain names contain the mark in its entirety merely adding a generic term and two different generic top-level domains (“gTLD”). Similar changes to a mark have been found insufficient to defeat a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Here, Respondent’s domain names incorporate Complainant’s mark in its entirety, add the generic terms “labs” and “garcina” and adds the “.com” and “.net” gTLDs. The Panel here finds that Respondent’s disputed domain names are confusingly similar to the Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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 (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). Complainant here has set forth the requisite prima facie case.
Complainant alleges that Respondent lacks rights and legitimate interests in the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names. Specifically Complainant argues that Respondent is not permitted to use Complainant’s mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, a lack of permission from a complainant to use its’ mark may indicate that a respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant provides WHOIS information for the disputed domain name, which identifies the registrant as “Robert Anderson”, and Respondent has not provided a response to refute Complainant’s contentions. The Panel here finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent is using the disputed domain names to confuse Complainant’s customers in order to sell competing weight loss products. Use of a domain name to confuse users in order to promote respondent’s competing goods or services may not be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots from the disputed domain names resolving websites, both of which display weight loss products that are in direct competition with those of Complainant. The Panel here finds that Respondent has failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith because Respondent intentionally attempts to attract internet users to the disputed domain names resolving websites for commercial gain. Specifically, Complainant argues the Respondent uses the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names to offer products that compete with Complainant’s business. Use of a domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website may be evidence of bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots which show the disputed domain names resolving websites, both of which promote weight loss products that compete with the products offered by Complainant. The Panel here finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <pinnaclelifegarcinia.com> and <pinnaclelifelabs.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 22, 2018
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