James Jamieson d/b/a Nutraceutics
Corporation v. BargainName.com c/o Domain Admin
Claim
Number: FA0501000408156
Complainant is James Jamieson d/b/a Nutraceutics
Corporation (“Complainant”), represented by Nelson D. Nolte,
12412 Powerscourt Dr., Ste. 200, St. Louis, MO 63131. Respondent is BargainName.com
c/o Domain Admin (“Respondent”), General Delivery, Georgetown, Grand
Cayman GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <symbiotropin.com>, registered with Nom
Infinitum, Incorporated.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
24, 2005; the National Arbitration Forum received a hard copy of the Complaint January
24, 2005.
On
January 25, 2005, Nom Infinitum, Incorporated confirmed by e-mail to the
National Arbitration Forum that the domain name <symbiotropin.com>
is registered with Nom Infinitum, Incorporated and that Respondent is the
current registrant of the name. Nom Infinitum, Incorporated verified that
Respondent is bound by the Nom Infinitum, Incorporated registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005, by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@symbiotropin.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <symbiotropin.com>, is identical to Complainant’s
SYMBIOTROPIN mark.
2. Respondent has no rights to or legitimate
interests in the <symbiotropin.com> domain name.
3. Respondent registered and used the <symbiotropin.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, James
Jamieson d/b/a Nutraceutics Corporation, registered its SYMBIOTROPIN mark with
the United States Patent and Trademark Office June 15, 1999 (Reg. No.
2,252,787). Complainant first made use
of its mark in January 1973 and has used the mark continuous and exclusively
since that time in association with food supplements. Complainant’s SYMBIOTROPIN mark is an arbitrary term which has no
dictionary or scientific meaning.
Respondent
registered the <symbiotropin.com> domain name August 6, 2004, five
years after Complainant’s registration of the SYMBIOTROPIN mark and over
thirty-one years following Complainant’s first use of the mark. Respondent is using the disputed domain name
to divert Internet users to a website that features a generic search engine and
links to numerous products and services, including some that compete with
Complainant, gambling websites, and websites including sexually oriented
material. Complainant profits from this
website through click-through revenues.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that its SYMBIOTROPIN mark
is registered with the United States Patent and Trademark Office. The Panel finds that Complainant’s
registration of the mark is prima facie evidence of Complainant’s rights
in the mark and that Respondent did not refute these rights in this
proceeding. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <symbiotropin.com>
domain name registered by Respondent is identical to Complainant’s SYMBIOTROPIN
mark because the disputed domain name includes Complainant’s exact mark in its
entirety, adding only the generic top-level domain (gTLD) “.com.” The Panel concludes that it has been
established that the addition of a gTLD is irrelevant to a finding under Policy
¶ 4(a)(i) and, therefore, does not distinguish the identical domain name from
Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to Complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights to or legitimate interests in the <symbiotropin.com>
domain name, containing in its entirety Complainant’s SYMBIOTROPIN
mark. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights to or legitimate interests in the domain
name. Thus, due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent lacks rights and
legitimate interests in the disputed domain name. See Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that under certain circumstances the mere assertion by Complainant
that Respondent has no rights or legitimate interests is sufficient to shift
the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Moreover,
Complainant made the required prima facie showing and Respondent has
failed to respond. Therefore, the Panel
is entitled to accept as true all reasonable allegations and inferences in the
Complaint. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of the Complaint to be deemed
true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response
the Panel is free to make inferences from the very failure to respond and
assign greater weight to certain circumstances than it might otherwise do).
Complainant
alleges that Respondent is using the <symbiotropin.com> domain
name to divert Internet users searching for Complainant’s products and services
to a website that features a generic search engine and displays links to
various products and services, including some that compete with
Complainant. Additionally, some of the
links are to gambling and adult oriented websites. The Panel finds that Respondent’s use of a domain name identical
to Complainant’s registered SYMBIOTROPIN mark to redirect Internet users to a
website where Respondent presumably benefits from click-through fees for
redirecting Internet users to a variety of products and services, some of which
are in competition with Complainant, is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to websites
unrelated to Complainant’s mark, websites where Respondent presumably receives
a referral fee for each misdirected Internet user, was not a bona fide offering
of goods or services as contemplated by the Policy); see also Disney Enters.,
Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that
Respondent’s diversionary use of Complainant’s mark to attract Internet users
to its own website, which contained a series of hyperlinks to unrelated
websites, was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that Respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name).
Furthermore,
Complainant has asserted that Respondent is not commonly known by the <symbiotropin.com>
domain name. Furthermore, nothing in
Respondent’s WHOIS contact information indicates that it is known by the
disputed domain name, and there is nothing further in the record to refute
Complainant’s assertions. Therefore,
the Panel determines that Respondent has not established rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <symbiotropin.com> domain name in an attempt to
intentionally attract Internet users interested in locating Complainant’s
SYMBIOTROPIN products and services.
Internet users searching for Complainant’s products and services are
likely to type in Complainant’s mark followed by the common gTLD “.com.” Additionally, Respondent presumably derives
commercial benefit from these intentional diversions through click-through fees
from redirecting Internet users to other commercial websites, some of which offer
products and services that compete with those of Complainant. In light of these facts, the Panel concludes
that Respondent’s attempts to divert Internet users for commercial gain by
attracting Internet users to Respondent’s website through a likelihood of
confusion with Complainant’s mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site).
Although
evidence of bad faith registration and use may be shown by proving the
existence of any of the four circumstances listed under Policy ¶ 4(b), the
Panel is entitled to consider other factors in support of its finding of bad
faith registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Complainant
contends that its SYMBIOTROPIN mark is a coined term having no dictionary or
scientific meaning aside from its use as a registered trademark for food
supplements. Thus, Respondent’s
registration of a domain name that includes an identical version of
Complainant’s coined and registered mark suggests that Respondent knew of Complainant’s
rights in the mark. Furthermore,
Respondent is using the <symbiotropin.com> domain name to link to
websites that compete with Complainant.
Additionally,
Complainant’s registration of its mark with the United States Patent and
Trademark Office confers constructive knowledge on anyone attempting to use the
mark. Therefore, the Panel finds that
Respondent chose the <symbiotropin.com> domain name based on the
distinctive qualities of Complainant’s mark, and thus registered and used the
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 1428 (D. Minn.
1989) ("Fanciful marks, if adopted in a bona fide first use, are
considered the strongest of marks because their inherent novelty creates a
substantial impact on the buyer's mind.") (citing 2 McCarthy, Trademarks and Unfair Competition 2d § 11:3); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <symbiotropin.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 15, 2005.
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