Klein-Becker IP Holdings, LLC v. muscledrive c/o Bill Warehouse
Claim Number: FA0603000654468
Complainant is Klein-Becker IP Holdings, LLC (“Complainant”), represented by Joel B. Rothman, of Rutherford Mulhall, P.A., 2600 North Military Trail, Fourth Floor, Boca Raton, FL 33431-6348. Respondent is muscledrive c/o Bill Warehouse (“Respondent”), 11921 Montgomery Rd, Symmes Twnship, OH 45249.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <anorex-leptoprin-zantrex-strivectin.com>, registered with Dotster.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2006.
On March 8, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <anorex-leptoprin-zantrex-strivectin.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 March 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 3, 2006 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@anorex-leptoprin-zantrex-strivectin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On <<April 11, 2006>>, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed <<James A. Crary>> as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <anorex-leptoprin-zantrex-strivectin.com> domain name is confusingly similar to Complainant’s STRIVECTIN-SD mark.
2. Respondent does not have any rights or legitimate interests in the <anorex-leptoprin-zantrex-strivectin.com> domain name.
3. Respondent registered and used the <anorex-leptoprin-zantrex-strivectin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a licensor of the STRIVECTIN-SD trademark (Reg. No. 2,760,414 issued September 2, 2003, filed June 27, 2002). Complainant licenses this mark to Klein-Becker USA, LLC for the manufacture, distribution, and sale of various “cosmeceutical” products. Specifically, Complainant licenses the STRIVECTIN-SD mark in connection with the sale of cosmetic products for use in repairing stretch marks. Complainant has registered the STRIVECTIN-SD mark with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <anorex-leptoprin-zantrex-strivectin.com> domain name on September 22, 2003. Respondent’s disputed domain name resolves to a website that sells drug testing products and “detox products” enabling an individual to pass a drug test.
Respondent’s <anorex-leptoprin-zantrex-strivectin.com> domain name incorporates numerous parties’ marks and interests. In particular, Respondent’s domain name implicates the owners of Complainant’s STRIVECTIN-SD mark, the ANOREX mark, the LEPTOPRIN mark, and the ZANTREX mark. Due to practical difficulties inherent in the Policy, cooperative complaint initiation is unlikely and unfeasible. Because Complainant initiated this dispute prior to any other interested party, it has the opportunity to acquire the domain name, while seeking to protect its STRIVECTIN-SD mark from an infringing use. However, due to the procedural complexities presented by the current dispute, the following issue must be addressed: that Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented marks are infringed upon following a transfer of the domain name registration to Complainant. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Complainant’s continuing control of the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name is contingent upon good faith possession, and Complainant will forfeit its interest in the domain name if it infringes on the other represented marks); see also G.D. Searle v. Dunham, FA 123901 (Nat. Arb. Forum Oct. 9, 2002) (“Complainant seeks acquisition of the subject domain name in good faith, and will forfeit its interest in the contested domain name if the other represented marks are infringed upon following a transfer of the domain name registration to Complainant”).
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 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 (Nat. Arb. 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.”).
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.
The Panel finds that Complainant has sufficiently demonstrated its rights in the STRIVECTIN-SD mark pursuant to Policy ¶ 4(a)(i) through Complainant’s registration of its mark with the USPTO. See VICORP Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant has also established that Respondent’s <anorex-leptoprin-zantrex-strivectin.com> domain name is confusingly similar to Complainant’s STRIVECTIN-SD mark. Respondent’s disputed domain name consists of Complainant’s STRIVECTIN-SD mark with the omission of “-SD” and several additional components. In particular, Respondent’s disputed domain name is comprised of Complainant’s altered mark with the addition of the marks of three pharmaceutical products separated by hyphens, and the generic top-level domain “.com.” The alteration of Complainant’s mark, combined with the addition of multiple marks, hyphens, and a generic top-level domain does not negate the confusing similarity between Respondent’s domain name and Complainant’s registered STRIVECTIN-SD mark. See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden of demonstrating that Respondent lacks any rights and legitimate interests in the disputed domain name. However, once Complainant establishes a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name in accord with Policy ¶ 4(c).
Respondent is using the disputed domain name, which includes a confusingly similar variation of Complainant’s STRIVECTIN-SD mark, to operate a website offering drug testing products and products that attempt to assist an individual in passing a drug test. Consequently, Respondent’s use of the disputed domain name does not constitute either 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). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Additionally, there is no evidence on record suggesting that Respondent is commonly known by the <anorex-leptoprin-zantrex-strivectin.com> domain name. Complainant asserts that Respondent has no affiliation with Complainant, and Complainant does not endorse Respondent’s domain name. Moreover, the WHOIS information indicates that Respondent is known as “muscledrive.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the <anorex-leptoprin-zantrex-strivectin.com>
domain name in connection with a website selling products unrelated to
Complainant’s business. Due to the
confusing similarity between Respondent’s domain name and Complainant’s mark,
Internet users could easily confuse Respondent’s website with a website related
to Complainant. Therefore, the Panel
finds that the evidence on record indicates that Respondent has attempted to
attract Internet users to its website for commercial gain by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
or affiliation of its website under Policy ¶ 4(b)(iv). See Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
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 <anorex-leptoprin-zantrex-strivectin.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: April 25, 2006
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