Slante Holdings LLC v. fuzion drops
Claim Number: FA2110001970616
Complainant is Slante Holdings LLC (“Complainant”), represented by Matthew A. Homyk and Blake D. Fink of Blank Rome LLP, Pennsylvania, USA. Respondent is fuzion drops (“Respondent”) of Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuziondrops.com>, registered with NICS Telekomunikasyon A.S.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Douglas M. Isenberg and Debrett Gordon Lyons as Panelists, and David P. Miranda as Chair.
Complainant submitted a Complaint to the Forum electronically on October 26, 2021; the Forum received payment on October 26, 2021. The Complaint was received in English.
On October 27, 2021, NICS Telekomunikasyon A.S. confirmed by e-mail to the Forum that the <fuziondrops.com> domain name is registered with NICS Telekomunikasyon A.S. and that Respondent is the current registrant of the name. NICS Telekomunikasyon A.S. has verified that Respondent is bound by the NICS Telekomunikasyon A.S. 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 October 27, 2021, following receipt of an amended complaint, the Forum served the English language Complaint and all Annexes, including a Turkish and English language Written Notice of the Complaint, setting a deadline of November 16, 2021 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@fuziondrops.com. Also on October 27, 2021, the Turkish and English language 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.
A formal Response was not received by the due date but on November 20, 2021, the Forum received an email response on behalf of Respondent indicating the domain is not in use. That email does not contest Complainant's allegations.
On December 1, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Douglas M. Isenberg and Debrett Gordon Lyons as Panelists and David P. Miranda as chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Pursuant to UDRP Rule 11(a) the Panel has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is proficient in the English since Respondent sent an email in English to Complainant’s counsel. Pursuant to UDRP Rule 11(a), the Panel finds persuasive evidence that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is the owner of the brand Global Healing, which began in 1998 and has grown into an international brand that serves as an industry leader in natural health. Under the Global Healing brand, Complainant develops and formulates products that offer the best supplements in the industry, researches and creates superior formulations of vitamins, minerals, and nutritional compounds, and harnesses the raw natural essences of living plants. Complainant, through its predecessors in interest has engaged in the marketing and sale of dietary and nutritional supplements under the mark FUZION, alone and with other terms (the “FUZION Marks”). Complainant contends it has developed widespread public recognition of the FUZION Marks through use that commenced at least as early as 2006.
Respondent registered the domain name on November 15, 2018. The domain name currently resolves to an active website displaying dietary or pharmaceutical supplements called “sex drops.” Respondent’s use and registration of the domain name is an attempt to unjustly capitalize on Complainant’s fame and goodwill.
Complainant contends that except for the addition of the term “drops”, which simply describes the form in which the fraudulent supplement is administered, to Complainant’s FUZION mark, Respondent’s disputed domain name is identical to Complainant’s FUZION Marks. Respondent’s alteration of Complainant’s mark is an insignificant deviation that fails to create a separate and distinct mark, thus rendering Respondent’s domain name confusingly similar to Complainant’s FUZION Marks in sound, appearance, and connotation.
Respondent cannot establish use of, or demonstrable preparations to use, the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services because Respondent is not affiliated with Complainant in any way, is not an authorized agent or licensee of Complainant, and Respondent is using the domain name to make money based on Complainant’s goodwill in its FUZION Marks and to scam actual clients into buying fraudulent products.
Complainant contends Respondent registered and has used the domain name in bad faith for its own commercial gain. Respondent’s use of the domain name here is simply an attempt to attract consumers by creating a likelihood of confusion between the fraudulent products offered on its website, and the legitimate products offered by Complainant.
Because Complainant’s FUZION Marks are registered with the United States Patent and Trademark Office, Respondent was also on “constructive” notice of Complainant’s rights in the FUZION Marks.
Respondent also displays Complainant’s registered FUZION Marks in digitally altered images of product bottles displayed throughout the website in order to create the impression that the products are authorized by, or endorsed by, Complainant.
B. Respondent
Respondent’s response states, in its entirety, as follows:
“The mentioned domain <fuziondrops.com> has been registered to us and is on hold for use in one of our projects. Currently not in use. The specified persons have reached us and requested domain transfer. We stated that we can transfer them to them in return for paying the domain costs.
“Again, we would like to point out that they can reach us and take necessary actions regarding domain transfer.”
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
Paragraph 15(a) of the Rules instructs the 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.
Complainant asserts rights in the FUZION mark based on registration with the USPTO (e.g., Reg. No. 4,823,050, registered Sept. 29, 2015). Although the registration certificates for the FUZION Marks provided by Complainant identify the owner as GHC ND Licensing, Ltd. and Global Healing Center, Inc., the Panel has reviewed the online database of the U.S. Patent and Trademark Office (USPTO) and found that the FUZION Marks apparently have been assigned to Complainant.[i] Registration of a mark with the USPTO is a valid showing of rights in a mark. See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of registration of the FUZION mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <fuziondrops.com> domain name is confusingly similar to Complainant’s FUZION mark as it merely adds the term “drops” to Complainant’s mark. The addition of a generic or descriptive term to a mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also Kohler Co. v. Curley, FA 890812 (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.”). Thus, the Panel finds that the disputed domain name is confusingly similar to the FUZION mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <fuziondrops.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the FUZION mark. Under Policy ¶ 4(c)(ii), WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name and even if the registrant name reflects the domain name additional information is needed. See La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). Additionally, lack of authorization to use a mark constitutes a further showing 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). Here, the WHOIS information of record identifies “fuzion drops” as the registrant; however, Respondent does not provide any additional affirmative evidence that it is commonly known by the disputed domain name. Furthermore, Complainant asserts it has not authorized Respondent to use the FUZION mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to pass off as Complainant and offer fraudulent goods for sale. Using a disputed domain name to pass off as a complainant and to offer counterfeit goods for sale does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides screenshots of the resolving website for the disputed domain name which features Complainant’s FUZION mark, an iteration of its logo, and photoshopped product bottles that resemble those offered by Complainant. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <fuziondrops.com> domain name in bad faith because Respondent uses the domain to pass itself off as Complainant and offer fraudulent goods for sale. Using a disputed domain name to pass itself off as a complainant and offer counterfeit goods for sale indicates bad faith registration and use under Policy ¶ 4(b)(iv). See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Complainant provides screenshots showing Respondent uses Complainant’s FUZION Marks, logo, and digitally altered images on the resolving website for the disputed domain name to sell fraudulent products.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fuziondrops.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg and Debrett Gordon Lyons as Panelists,
and David P. Miranda as Chair
Dated: December 16, 2021
[i] “[I]t has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 4.8.
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