DECISION

 

Nutramax Laboratories, Inc. v. Ben McDonald / Furever Products

Claim Number: FA2412002129778

PARTIES

Complainant is Nutramax Laboratories, Inc. ("Complainant"), represented by Mary Grace Gallagher of Alston & Bird, LLP, Georgia, USA. Respondent is Ben McDonald / Furever Products ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nutramaxuk.com>, 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 Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 17, 2024; Forum received payment on December 17, 2024.

 

On December 17, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <nutramaxuk.com> 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 December 23, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2025 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@nutramaxuk.com. Also on December 23, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 14, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.

1.       The Complainant is a United States and internationally operating company engaged in the provision of high-quality pet and human supplements and related goods and services and it has been so engaged since at least 1992.

2.       The Complainant provides its goods and services under the trademark for NUTRAMAX. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the NUTRAMAX trademark by virtue of its registration of that mark with the United Kingdom Intellectual Property Office ("the UKIPO"), registration number number 00917670233, registered on May 7, 2018 and other trademarks registrations for NUTRAMAX, NUTRAMAX LABORATORIES and derivatives registered with the UKIPO and the United States Patent and Trademark Office ("the USPTO") (collectively "the NUTRAMAX trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The NUTRAMAX trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.        As well as its trademark, Complainant has registered the domain name <nutramaxlabs.com> that it uses in its business and in particular for its website at www.nutramaxlabs.com where it markets its products under the NUTRAMAX trademark and brand.

5.       The Respondent registered the <nutramaxuk.com> domain name on November 24, 2024 ("the disputed domain name").

6.       The disputed domain name embodies, without the consent of the Complainant, the NUTRAMAX trademark with the addition of the letters "uk" and the generic Top Level Domain ".com".

7.       The disputed domain name is confusingly similar to the NUTRAMAX trademark.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)        the Respondent has caused the domain name to resolve to the website at www.fureverproducts.co.uk that offers pet supplement products that are in competition with the products of the Complainant; 

(b)        the Respondent registered the domain name after the Complainant had acquired its aforesaid trademark rights;

(c)       the Complainant has never given any licence, permission or authority to the Respondent to use the NUTRAMAX trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent;

(d)       the Respondent has no trademark or intellectual property rights in the disputed domain name;

(e)       the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i);

(f)       the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain;

(g)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); and

(h)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

9.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)                      the Respondent's aforesaid conduct was calculated to disrupt the Complainant's business withing the meaning of Policy ¶ 4(b)(iii);

(b)                      the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv), as the intention of the Respondent is patently to capture internet traffic looking for the official Nutramax website and to redirect that traffic to the aforesaid www.fureverproducts.co.uk website for the Respondent's commercial gain and to the detriment of the Complainant and that of the public;

(c)                      the Respondent has sought to trade on the consumer recognition and goodwill associated with the Complainant and its NUTRAMAX trademark;

(d)                       the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name;

(e)                       the Respondent has used the domain name to purport to sell products that directly compete with authentic NUTRAMAX products and for commercial gain; and

(f)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith; 

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States and internationally operating company engaged in the provision of high-quality pet and human supplements and related goods and services and it has been so engaged since at least 1992.

2.       The Complainant provides its goods and services under the trademark for NUTRAMAX. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the NUTRAMAX trademark by virtue of its registration of that mark with the United Kingdom Intellectual Property Office ("the UKIPO"), registration number number 00917670233, registered on May 7, 2018 and other trademarks registrations for NUTRAMAX, NUTRAMAX LABORATORIES and derivatives registered with the UKIPO and the United States Patent and Trademark Office ("the USPTO") (collectively "the NUTRAMAX trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The Respondent registered the <nutramaxuk.com> domain name on November 24, 2024 ("the disputed domain name").

4.       The disputed domain name embodies, without the consent of the Complainant, the NUTRAMAX trademark with the addition of the letters "uk" signifying the United Kingdom and the generic Top Level Domain ".com".

5.       The Respondent has caused the domain name to resolve to the website at www.fureverproducts.co.uk that offers pet supplement products that are in competition with the products of the Complainant; misled internet users, utilized and infringed the Complainant's trademark, traded on the goodwill of the Complainant, its trademark and products, generated confusion with the Complainant and disrupted the business of the Complainant.

6.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the NUTRAMAX trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

7.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 the Complainant has rights in a trademark or service mark on which it may rely. The evidence has shown that the Complainant provides its goods and services under the trademark for NUTRAMAX and that it has done so for many years. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the NUTRAMAX trademark by virtue of its registration of that mark with the United Kingdom Intellectual Property Office ("the UKIPO"), registration number number 00917670233, registered on May 7, 2018 and other trademark registrations for NUTRAMAX, NUTRAMAX LABORATORIES and derivatives registered with the UKIPO and the United States Patent and Trademark Office ("the USPTO") (collectively "the NUTRAMAX trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's NUTRAMAX trademark.

The Panel finds that the disputed domain name is confusingly similar to the NUTRAMAX trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the NUTRAMAX trademark with the addition of the letters "uk" standing for the United Kingdom and the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the trademark and as dealing with the Complainant's goods and services offered under the trademark and as being either a domain name of the Complainant itself or one that has been registered with its consent. The addition of the letters "uk" for the United Kingdon has the result that the domain name would be interpreted by internet users as signifying the goods and services of the Complainant offered under the trademark in the United Kingdom. That is because the addition of a generic word or abbreviation such as "uk" will not negate a finding of confusing similarity that is otherwise present on the evidence, which in the present case it is.

The addition of the generic Top Level Domain ".com" is ignored in making the comparison, because all domain names must have such an extension.

Thus, internet users would read the domain name as invoking the NUTRAMAX trademark, as dealing with the Complainant's well-known goods and services offered under the trademark and in particular in the United Kingdom and as being a domain name of the Complainant itself or a domain name that has been registered with its consent.

The Panel therefore finds that the disputed domain name is confusingly similar to the NUTRAMAX trademark under Policy ¶ 4(a)(i).

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

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. Several of these considerations overlap, but the substance of them in combination is as follows. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant:

(a)                      the first and most significant of them is that the Respondent has caused the domain name to resolve to the website at www.fureverproducts.co.uk that offers pet supplement products that are in competition with the products of the Complainant as those products are the same as or similar to the products of the Complainant; that is an infringement of the Complainant's trademark and is illegal; thus the Respondent could not acquire a right or legitimate interest in the very domain name used to perpetrate this illegality;

(b)                      the Respondent registered the domain name after the Complainant had acquired its aforesaid trademark rights; thus the Respondent did not make any of the inquiries it could reasonably be expected to make before registering the domain name to see if any other party had trademark rights in the principal portion of the domain name the Respondent was about to register; thus, either it did not make any such inquiries or, if it did make such inquiries, it ignored the result as it would have appeared that the Respondent then had no rights to register the domain name;

(c)                      the Complainant has never given any licence, permission or authority to the Respondent to use the NUTRAMAX trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, it could not be said that the domain name had been registered and used with any form of consent or agreement by the Complainant;

(d)                      the Respondent has no trademark or intellectual property rights in the disputed domain name; thus, it was not entitled to use the NUTRAMAX trademark in its domain name;

(e)                      the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); this ground has been made out because of the aforesaid use to which the Respondent has put the domain name; the Complainant's Exhibit H which the Panel has examined shows that the Respondent has caused the domain name to resolve to a third party website at www.fureverproducts.co.uk; this website advertises pet supplements for sale that the evidence shows are the same as or similar to those of the Complainant; it shows products that are clearly pet supplements and related goods and services; there is nothing wrong in the Respondent advertising such products but it is not permitted and it is illegal to use the Complainant's trademark to do so; internet users would naturally think that the products were being endorsed by the Complainant as it is the Complainant's trademark that is being used to promote them; moreover, as the Complainant points out, if there are complaints about the products or deleterious consequences of using them, purchasers would naturally blame the Complainant as they are promoted under the imprimatur of the Complainant's trademark; in any event, the Complainant may not want its trademark to be used in this way and it is entitled to have its trademark used as it thinks fit; thus, the domain name has not been used for a bona fide offering of goods or services, particularly as the use demonstrated is deceptive and thus is more akin to being mala fide than bona fide; such conduct could not possibly give rise to a right or legitimate interest in the very domain name used to perpetrate this illegal and infringing use;

(f)                      the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; the use made of the domain name is not legitimate for the reasons already given; it is not noncommercial as it must surely be being used for profit and is therefore commercial and it is not fair, either to the Complainant or to the general public and internet users generally;

(g)                      the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name, either commonly or in any other way and there is no evidence that the Respondent is or might be known by any name other than its own; and

(h)                      there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name; this is because the entire conduct of the Respondent as shown by the evidence is illegitimate.

The Complainant has therefore made out a persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration and Use in Bad Faith

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

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception of potential buyers and internet users in which the Respondent has engaged, amply demonstrated by Exhibit H, discussed above. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the Respondent's aforesaid conduct was calculated to disrupt the Complainant's business withing the meaning of Policy ¶ 4(b)(iii); clearly, the modus operandi of the Respondent was to diminish the potential sales of the Complainant and to increase the sales of the Respondent; this must have the potential to disrupt the business of the Complainant;

(b)                      the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv), as the intention of the Respondent was patently to capture internet traffic looking for the official Nutramax website and to redirect that traffic to the aforesaid www.fureverproducts.co.uk  website for the Respondent's commercial gain and to the detriment of the Complainant and that of the public; this has been well-established by the evidence, particularly the evidence in Exhibit H;

(c)                      the Respondent has sought to trade on the consumer recognition and goodwill associated with the Complainant and its NUTRAMAX trademark; it must have been only the fame of the Complainant and its established products that motivated the Respondent to engage in the underhand conduct in which it has engaged; the Respondent has clearly traded on this and it can only be described as bad faith, both in the registration and use of the domain name;

(d)                       the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name; the Respondent could not conceivably have concocted its subterfuge but for its actual knowledge of the Complainant, its trademarked products and its goodwill and fame;

(e)                       the Respondent has used the domain name to purport to sell products that directly compete with authentic NUTRAMAX products and for commercial gain; this has already been established by the evidence; and

(f)                      all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith; this is an accurate way of describing the entire conduct of the Respondent on the evidence. 

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the NUTRAMAX trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, tried to set up an alleged rival source of products in the same field as the Complainant and actively set about misleading potential buyers to make money.

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

The Complainant has also correctly cited numerous prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks.

 

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 <nutramaxuk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: January 15, 2025