Nutramax Laboratories, Inc. v. Private Domain8 / Shih Hwang Wu / extreme V, Inc
Claim Number: FA1610001700453
Complainant is Nutramax Laboratories, Inc. (“Complainant”), represented by Brett G. Corbly of Nutramax Laboratories, Inc., Maryland, USA. Respondents are Private Domain8; Shih Hwang Wu; extreme V, Inc , Michigan, USA (collectively “Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <denosyl.com>, <denosylsame.com>, and <denamarinsame.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity. Complainant has shown that Shih Hwang Wu and extreme V, Inc. are the registrants of the <denamarinsame.com> domain name. Further, Complainant has provided evidence that the private registration service associated with the <denosyl.com> and <denosylsame.com> domain names has informed Complainant that Shih Hwang Wu and extreme V, Inc. are the holders of record of these domain names. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Based on the evidence submitted, the Panel concludes that the domain names at issue in this proceeding were registered by the same domain name holder and therefore this Complaint may proceed against all Respondents who shall be designated hereafter as “Respondent.”
Complainant submitted a Complaint to the Forum electronically on October 28, 2016; the Forum received payment on October 28, 2016.
On November 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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 postmaster@denosyl.com, postmaster@denosylsame.com, postmaster@denamarinsame.com. Also on November 4, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant operates in the nutritional and dietary supplement industry. Complainant registered both the DENOSYL and DENAMARIN marks with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,306,373, registered Jan. 4, 2000; Reg. No. 3,288,596, registered Sept. 4, 2007—respectively).
2. Respondent’s <denosyl.com> domain name is identical to the DENOSYL mark because it merely adds the “.com” generic top-level domain (“gTLD”) to the fully incorporated mark. Respondent’s <denosylsame.com> domain name is confusingly similar as it incorporates the DENOSYL mark entirely and merely adds the generic/descriptive term “SAMe”—which is the active ingredient (S-Adenosylmethionine, abbreviated as “SAM-e” or “same”) in the goods Complainant advertises under the DENOSYL mark. Further, <denamarinsame.com> incorporates the same alterations to the DENAMARIN mark (adding “SAMe” and “.com”), creating confusing similarity.[1]
3. Respondent does not have any rights or legitimate interests in the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names. Respondent is not commonly known by any of the domain names. Further, the resolving webpages of the domain names contain prominent advertisements for competitive products.
4. Respondent registered and uses the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names in bad faith. First, there is a clear pattern of domain name registrations as proscribed by Policy ¶ 4(b)(ii). Second, Respondent has engaged in diversionary and disruptive use through the resolving content of the domain names, which offer directly competitive products, and which redirect to a competing website, <azendus.com>, which is owned by Respondent. Third, such diversion and redirection indicates an attempt to commercially gain from Internet user confusion. Further, Respondent’s pattern of behavior and competitive use, and fanciful nature of the marks in question, show Respondent’s actual and/or constructive knowledge of the marks and Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DENOSYL and DENAMARIN marks. Respondent’s domain names are confusingly similar to Complainant’s DENOSYL and DENAMARIN marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names and that Respondent registered and uses the domain names in bad faith.
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.
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 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 (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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have any rights or legitimate interests in or to <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names. According to Complainant Respondent is not commonly known by any of the domain names. The WHOIS lists “Private Domain8 / Shih Hwang Wu / extreme V, Inc” as registrant of the domain names. Panels often look to the WHOIS record in determining whether a respondent is commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (FORUM July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Based on the evidence presented, the Panel concludes Respondent is not commonly known by the <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names per Policy ¶ 4(c)(ii).
Further, Complainant has presented evidence that the resolving webpages of the domain names contain prominent advertisements for competitive products; thus Complainant contends Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use. The Panel agrees. See General Motors LLC v. MIKE LEE, FA 1659965 (FORUM Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied 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 <denosyl.com>, <denosylsame.com>, and <denamarinsame.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 5, 2016
[1] The <denosyl.com> domain name was registered on October 28, 2015, and the <denosylsame.com> and <denamarinsame.com> domain names were registered on October 16, 2015.
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