DECISION

 

Academy of Nutrition and Dietetics v. Surya Kumar / SuryaKumar

Claim Number: FA2001001877896

 

PARTIES

Complainant is Academy of Nutrition and Dietetics (“Complainant”), represented by Caitlin R. Byczko of Barnes & Thornburg LLP, Illinois.  Respondent is Surya Kumar / SuryaKumar (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eattright.org>, registered with GoDaddy.com, 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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 7, 2020; the Forum received payment on January 7, 2020.

 

On January 8, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <eattright.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2020 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@eattright.org.  Also on January 9, 2020, 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 January 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

 

Complainant, the Academy of Nutrition and Dietetics, is the world’s largest organization of food and nutrition professionals and is committed to improving the nation’s health and advancing the profession of dietetics through research, education and advocacy. It has rights in various registered marks through the United States Patent and Trademark Office (“USPTO”). It has rights in the EAT RIGHT design mark (e.g., Reg. No. 3,768,153, registered Mar. 30, 2010). See Compl. Ex. B. Respondent’s <eattright.org> domain name is confusingly similar to Complainant’s EAT RIGHT mark as it incorporates the mark in its entirety, merely removing the space between EAT and RIGHT, adding the letter “t,” and adding a “.org” generic top-level domain (“gTLD”).

 

Respondent has no rights or legitimate interests in the <eattright.org> domain name. Respondent is not licensed or authorized to use Complainant’s EAT RIGHT mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a landing page displaying pay-per-click hyperlinks.

 

Respondent registered and uses the <eattright.org> domain name in bad faith. Respondent has registered the disputed domain name for the purpose of diverting Internet users to a landing page which displays hyperlinks to third-party websites, where Respondent commercially benefits from click-through fees. Additionally, Respondent had actual knowledge of Complainant’s EAT RIGHT marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States entity that is the world’s largest organization of food and nutrition professionals and is committed to improving the nation’s health and advancing the profession of dietetics through research, education and advocacy.

 

2.    Complainant has established its trademark rights in various registered marks through the United States Patent and Trademark Office (“USPTO”). It has rights in the EAT RIGHT design mark (e.g., Reg. No. 3,768,153, registered Mar. 30, 2010).

 

3.    Respondent registered the disputed domain name on June 26, 2019. The domain name is confusingly similar to the EAT RIGHT mark.

 

4.    Respondent has caused the domain name to be used to divert Internet users to a landing page which displays hyperlinks to third-party websites, where Respondent commercially benefits from click-through fees. This establishes that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and used the domain name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Comlainant submits that it has rights in the EAT RIGHT mark through registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). 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). Complainant provides copies of its USPTO registrations for its EAT RIGHT design mark (Reg. No. 3,768,153, registered Mar. 30, 2010). See Compl. Ex. B.  Therefore, the Panel finds Complainant has rights in the EAT RIGHT mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EAT RIGHT mark. Complainant argues that Respondent’s <eattright.org> domain name is confusingly similar to Complainant’s EAT RIGHT design mark as it incorporates the mark in its entirety, merely omitting the space and adding the letter “t” between the word “eat” and the word “right” and adding the “.org” gTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a gTLD may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc. Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”). Additionally, the inclusion of a design element in the mark is not important when conducting the analysis under Policy ¶ 4(a)(i). See Weatherford/Lamb, Inc. v. zhu jie, FA 1448967 (Forum July 21, 2012) (finding that “the lack of the design associated with Complainant’s mark in the domain name does not negate a finding that the <johnsonscreens.org> domain name is identical to the JOHNSONSCREENS & Design mark.”). Therefore, the Panel  finds that the disputed domain name is confusingly similar to the EAT RIGHT mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a)  Respondent has chosen to take Complainant’s EAT RIGHT  mark and to use it in its domain name, omitting the space and adding the letter “t” between the word “eat” and the word “right”  which suggests that the domain name may well be  a domain name of Complainant;

(b)  Respondent registered the disputed domain name on June 26, 2019;

(c)  Respondent has caused the domain name to be used to divert Internet users to a landing page which displays hyperlinks to third-party websites, where Respondent commercially benefits from click-through fees;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant contends Respondent lacks rights or legitimate interests in the <eattright.org> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the <eattright.org> domain name lists the registrant as “Surya Kumar / SuryaKumar,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s EAT RIGHT marks. See Compl. Ex. D. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);

(f)   Complainant also argues Respondent’s lack of rights or legitimate interests in the <eattright.org> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain name resolves to a landing page that is being used to obtain click-through revenue by linking to third-party websites. Use of a domain name to link to third-party websites unrelated to the complainant’s business is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of the disputed domain name’s resolving website, which displays hyperlinks referencing mobile phones and mobile phone plans, showing that Respondent is trading on Complainant’s trademark to make money from the sale and promotion of its own or third parties’ goods. See Compl. Ex. E. The Panel therefore finds that Respondent does not have rights or legitimate interests in the <eattright.org> domain name under Policy ¶¶ 4(c)(i) and (iii).

 

All of these matters go to make out the prima facie case against Respondent.

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant submits that Respondent’s bad faith is indicated by its use of the <eattright.org> domain name to divert Internet users searching for Complainant and promote hyperlinks to third-party websites for its own commercial gain. Use of a domain name to divert Internet users and resolve to a webpage containing third-party pay-per-click hyperlinks can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel recalls that Complainant provides a screenshot of the disputed domain name’s resolving website, which displays hyperlinks referencing mobile phones and mobile phone plans. See Compl. Ex. E. The Panel therefore finds that Respondent has registered and uses the <eattright.org> domain name in bad faith per Policy ¶ 4(b)(iv).

 

Secondly, Complainant contends that in light of the fame and notoriety of Complainant’s EAT RIGHT mark, Respondent registered the <eattright.org> domain name with constructive, if not actual knowledge of Complainant’s rights in the mark. The Panel here notes that arguments of bad faith based on constructive notice are generally held to be not persuasive. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel finds, however that Respondent had actual knowledge of Complainant’s rights in the marks prior to registering the disputed domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends in its complaint that its organization was founded in 1917 and currently represents over 100,000 food and nutrition professionals, and also submits that there is widespread association of the EAT RIGHT mark with Complainant in the minds of the public. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the EAT RIGHT mark and thus registered and used the name in bad faith under Policy ¶ 4(a)(iii).

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel

finds that, in view of Respondent’s registration of the disputed domain name using the EAT RIGHT mark and in view of the conduct that Respondent has

engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated: February 1, 2020

 

 

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