Cognate Nutritionals, Inc. v. Martin Zemitis / Entria.com
Claim Number: FA1602001660055
Complainant is Cognate Nutritionals, Inc. (“Complainant”), represented by Karin A. Gregory, Massachusetts, USA. Respondent is Martin Zemitis / Entria.com (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuelforthought.com>, registered with Fabulous.com Pty Ltd.
The undersigned certify 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.
Kendall C. Reed, Hon. Bruce E. Meyerson (Ret.) and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 8, 2016; the Forum received payment on February 8, 2016.
On February 10, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <fuelforthought.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 February 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2016 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 firstname.lastname@example.org. Also on February 11, 2016, 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.
A timely Response was received and determined to be complete on March 1, 2016.
On March 7, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Kendall C. Reed, Hon. Bruce E. Meyerson (Ret.) and Dennis A. Foster as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant owns a registration with the United States Patent and Trademark Office ("USPTO”) for the trademark FUEL FOR THOUGHT.
- The disputed domain name, <fuelforthought.com>, is identical to Complainant's FUEL FOR THOUGHT mark. Complainant's distributors searching for Complainant's website have become confused with respect to Respondent's website found at the disputed domain name.
- Respondent has no rights or legitimate interests in the disputed domain name. Respondent's website attached to the name offers only sponsored links to third party websites where goods competing with Complainant's products are offered. Such a use is not a bona fide offering of goods or services. Previously, Respondent used the disputed domain name for a simple homepage, and there is no evidence that Respondent was attempting to develop any kind of product brand to go along with the name.
- Respondent is engaged in cybersquatting and is using the disputed domain name in a bad faith attempt to profit from the goodwill associated with the Complainant's trademark. Respondent has the intent to receive commercial gain from confusion with the trademark as to affiliation between it and the website connected with the disputed domain name. Moreover, subsequent to Complainant's extensive marketing efforts relative to its mark and products in 2012, Respondent approached Complainant with an offer to sell the disputed domain name for $10,000. Later on, Respondent placed upon its website notice that the disputed domain name could be bought for $20,000. Such sale offers are further evidence of bad faith.
- Respondent has used the disputed domain name since 2008 in connection with fuels, energy efficiency and alternative energy sources. Complainant's trademark registration lists "first use" for beverages and food products as occurring in 2012.
- Respondent acquired the disputed domain name in 2007 through an auction of abandoned domain names. The phrase, "fuel for thought," is a common expression, capable of reference to many potential commercial uses. Respondent's rights in the disputed domain name are senior in time to Complainant's rights in its trademark, so Respondent's rights are legitimate.
- Respondent has used the disputed domain name for paid search advertising links since 2008. Links found on Respondent's website refer to bio fuels, whereas Complainant markets only nutritional beverages or edible processed food. Respondent has never used the disputed domain name in connection with goods similar to those produced by Complainant.
- Bad faith registration of a disputed domain name under the Policy requires prior knowledge of a mark holder's rights at the time of name registration. That does not apply in this case, because the Complainant's rights in its trademark arose after the acquisition of the disputed domain name by Respondent. Respondent's later offer to sell the name is not relevant to the purpose of its registration, since Respondent was unaware of Complainant's rights.
- Arguably, Complainant engaged in bad faith naming of its products, because it was surely aware that the disputed domain name existed before starting its brand line. Moreover, Complainant waited four years from adoption of its trademark to file the Complaint. Under these circumstances, the Complaint was brought in bad faith, and Complainant should be found to have engaged in reverse domain name hijacking.
Complainant is an American company that operates under the mark FUEL FOR THOUGHT, for which it has obtained a trademark registration with USPTO (Registration No., 4,210,936; registered on Sept. 18, 2012).
Respondent is the owner of the disputed domain name <fuelforthought.com>, which was created on May 22, 2007 and acquired by Respondent later in that year. Respondent has used and is using the disputed domain name for a website that offers sponsored advertising links to the websites of third parties.
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.
By submission of evidence of its trademark registration with the USPTO for FUEL FOR THOUGHT, the Complainant has established its rights in that mark for the purposes of Policy ¶ 4(a)(i). See True Value Co. v. Wetters, FA 1420219 (Nat. Arb. Forum Jan. 17, 2012) (“...the Panel finds that Complainant has established its rights in the TRUE VALUE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.”); see also Space Needle LLC v. Lalji, D2008-1883 (WIPO Feb. 2, 2009) (“The Panel finds that Complainant has established rights in the mark SPACE NEEDLE, by virtue of its registration with the United States Patent and Trademark Office”).
The disputed domain name, <fuelforthought.com>, duplicates exactly Complainant's FUEL FOR THOUGHT trademark, except for spaces between words -- which cannot be placed in a domain name -- so the Panel finds the name to be identical to the mark. See Fashion Design Council of India v. Pawaskar, D2015-2296 (WIPO Feb. 4, 2016) (finding <indiafashionweek.com> to be identical to the INDIA FASHION WEEK mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
As a result, the Panel finds that Complainant has satisfied the first element required under the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Respondent counters that he has made and is making legitimate use of the disputed domain name in providing links to third party websites that offer products that conform to the plain meaning of the descriptive phrase "fuel for thought." Significantly, Respondent provides effective evidence that his use in this manner predates Complainant's use of its trademark in commerce by some four years. Respondent cites UDRP cases where panels have concluded that employment of sponsored links on a website attached to a disputed domain name whose registration predates the corresponding mark's usage constitutes conclusive evidence of a respondent's rights or legitimate interests in that disputed domain name. The Panel is inclined to follow the reasoning in those cases and in other UDRP decisions that have come to the same conclusion. See Webanywhere Ltd. v. Hight, FA 1491617 (Nat. Arb. Forum May 13, 2013); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark). Therefore, the Panel finds that Respondent does have rights and legitimate interests in the disputed domain name.
Consequently, the Panel finds that Complainant has failed to satisfy the second element required under the Policy.
As the Panel has found for Respondent with respect to the second element required under the Policy, the Panel need not analyze the third element.
Reverse Domain Name Hijacking
In accordance with ¶ 15(e) of the Rules, if “the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Reverse Domain Name Hijacking is defined in ¶ 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
In this case, Complainant not only acknowledges that it obtained its trademark registration years after the disputed domain name was registered, but fails to make any argument that it might have secured common law rights in its mark prior to Respondent's acquisition of that name. Moreover, the mark itself is not distinctive, but is composed of a common descriptive phrase. Finally, Complainant has furnished the Panel little evidence bearing upon the scope and prominence of the trademark at issue, effectively negating any basis upon which the Panel might conclude that anyone, including Respondent, is out to infringe upon the mark.
Prior UDRP panels have found a complainant to have acted in bad faith if it knew, or should have known, that its complaint could not reasonably succeed. Included in those cases are circumstances where the complaint’s failure would be a foregone conclusion based upon the fact that the disputed domain name was registered long before the complainant obtained its trademark rights. See Tiny Prints, Inc. v. Oceanside Capital, FA 1337650 (Nat. Arb. Forum Oct. 8, 2010); see also Proto Software, Inc. v. Vertical Axis, Inc, D2006-0905 (WIPO Oct. 10, 2006); see also carsales.com.au Limited v. Flanders, D2004-0047 (WIPO Apr. 8, 2004) ("In the Panel’s view such a finding [reverse domain name hijacking] is particularly appropriate where the Respondent’s registration of the domain name predates the very creation of the Complainant’s trademark.").
Accordingly, the Panel finds that the filing of the Complaint is an abuse of the Policy and that Complainant has engaged in an attempt at reverse domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, and finds that the Complaint was brought in bad faith, and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <fuelforthought.com> domain name REMAIN WITH Respondent.
Kendall C. Reed, Panelist
Hon. Bruce E. Meyerson (Ret.), Panelist
Dennis A. Foster, Chair
Dated: March 17, 2016
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