DECISION

 

Nutramax Laboratories, Inc. v. Host Master / Transure Enterprise Ltd

Claim Number: FA2309002062754

PARTIES

Complainant is Nutramax Laboratories, Inc. ("Complainant"), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia, USA. Respondent is Host Master / Transure Enterprise Ltd ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <denamrin.com>, registered with Above.com Pty Ltd..

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 21, 2023; Forum received payment on September 21, 2023.

 

On September 25, 2023, Above.com Pty Ltd. confirmed by e-mail to Forum that the <denamrin.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.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 September 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 2023 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@denamrin.com.

 

Also on September 26, 2023, 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 October 17 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims interest in the DENAMARIN trademark established by its ownership of the trademark registration described below and extensive use of the mark by itself and its affiliates since at least as early as 2007, in the manufacture, marketing, distribution and sale of pet food and human food supplements to its clients throughout the United States.

 

In an exhibit annexed to the Complaint, Complainant has provided a screen capture of its own website at <www.denamarin.com> which prominently displays the DENAMARIN mark, and Complainant asserts that its website is an important part of Complainant's marketing program.

 

Complainant submits that over the years, it has devoted significant financial resources each year – in the form of marketing, advertising, and other initiatives—building its DENAMARIN brand as a source of high-quality, safe, and effective animal supplement.

 

Complainant adds that in a recent survey of small animal veterinarians, DENAMARIN was ranked the #1 vet recommended liver support brand for dogs and cats and by virtue of Complainant's commitment to the development and testing, and through such extensive use on its products its DENAMARIN mark is recognized by the consuming public as being associated with Complainant alone and represents valuable goodwill owned by Complainant.

 

Complainant alleges that the disputed domain name <denamrin.com> is identical or confusingly similar to its DENAMARIN mark as the only difference is the omission of the second letter "a" from the mark.

 

Complainant argues that such a minor misspelling does not remove the confusing similarity between the DENAMARIN mark and the disputed domain name. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> disputed domain name was confusingly similar to the complainant's MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity);

 

Further, Complainant argues that the generic Top-Level Domain ("gTLD") extension <.com> is irrelevant when establishing whether or not the disputed domain name mark is identical or confusingly similar because a top-level domain is a required element of every domain name. See Trip Network Inc. v. Alviera, FA914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be ".com," ".net," ".biz," or ".org," is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the registration and use of the disputed domain name is a transparent attempt to trade on Complainant's goodwill in the DENAMARIN mark by misleading Internet users into visiting third-party websites when they are looking for Complainant's website or products.

        

Complainant adds that by registering and using the disputed domain name that is confusingly similar to Complainant's well-known mark to make money through pay-per-click links (whether related and unrelated to Complainant's business) is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Vance Int'l, Inc. v. Abend, FA 970871 (Forum, June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).

 

Complainant adds that Respondent registered the disputed domain name more than fifteen years after the first use of the DENAMARIN mark, at which time Respondent was on notice of Complainant's exclusive rights in the DENAMARIN mark as a result of Complainant's federal registrations in the US.

 

Complainant asserts that Respondent has no connection or affiliation with Complainant, nor has it at any time received from Complainant a license or consent, express or implied, to use any of the DENAMARIN mark in a domain name or in any other manner and therefore Respondent's use of the nearly identical "denamrin" in the disputed domain name is not a legitimate use. The Caravan Club v. Mrgsale, FA0095314 (Forum Aug. 30, 2000) (finding that no rights or legitimate interest existed where Respondent had no connection with the Complainant and had no authorization to use the Complainant's registered mark).

 

Complainant submits that Respondent does not refer to itself as "Denamrin" in the WHOIS record for the disputed domain name and does not appear to have any legitimate rights in "Denamrin" as a trademark, service mark, or trade name.

 

Furthermore, it is argued that because the disputed domain name is being used to misdirect consumers to third-party sites, it therefore may be presumed that Respondent has no rights or legitimate interests in <denamrin.com> as a domain name. See AutoZone Parts, Inc. and ALLDATA LLC v. Above.com Domain Privacy, FA 1522850 (Forum, Dec. 2, 2013) (finding Respondent was not commonly known by a domain name "where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized respondent to register a domain name containing its registered mark").

 

Complainant adds that upon information and belief, Respondent has never used, nor even made preparation to use, the disputed domain name in connection with any bona fide offering of goods and services, nor has it made a legitimate non-commercial or fair use of the disputed domain name.

 

Because there is no evidence that Respondent has any trademark rights in DENAMRIN, no evidence that Complainant has authorized Respondent to use the trademark and no evidence that Respondent might be commonly known by the disputed domain name, Complainant contends that it has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See Invesco Ltd. v. George Huzum, FA 1621589 (Forum July 5, 2015).

 

Complainant refers to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint. The exhibit shows that Respondent is using the disputed domain name as the address for a website with links to a variety of third-party websites, although the links change every visit.

 

Complainant submits that upon information and belief, the links on Respondent's website are pay-per-click links, and Respondent makes money each time a visitor to its site clicks through to the linked third-party websites, and argues that Respondent is therefore trading off Complainant's valuable mark and goodwill and profiting from internet users who mistakenly visit the website believing it to be associated or affiliated with Complainant.

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith.

 

In light of the substantial fame and notoriety of the DENAMARIN mark as well as Complainant's long-standing use and promotion of its distinctive and unique DENAMARIN mark, there is no plausible good-faith reason for Respondent to have registered the disputed domain name other than to trade on the consumer recognition and goodwill of the DENAMARIN mark. See Clearwater Systems, Inc. v. Glenn Johnson/Clear Water Systems of Remington Inc., WIPO Case D2014-0878 (holding that knowledge and targeting of a trademark may be proven inferentially).

 

Complainant adds that such knowledge, evidences registration and use of the disputed domain name in bad faith in violation of the Policy. See Invesco Ltd. v. Singh S, FA 1703001721736 (Forum April 29, 2017) (finding that the fame associated with the INVESCO mark evinces actual or constructive knowledge and "Respondent's registration of the disputed domain name with actual or constructive knowledge of Complainant's rights is evidence of bad faith registration and use with regard to policy ¶ 4(b)(iii)").

 

Furthermore Complainant argues that by registering what is clearly intended to be a misspelling of the <denamarin.com> domain name, Respondent is engaging in typosquatting, which is further evidence of bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) ("Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).").

 

In conclusion Complainant contends that upon information and belief, Respondent selected the disputed domain name to unfairly benefit from consumer confusion and increase profits from misdirected internet traffic to the disputed domain name. Such conduct is a classic example of bad faith registration and use. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant's business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

Complainant is the owner of the DENAMARIN trademark which it uses on human and animal food supplements which it manufactures, markets, distributes and sells, and has provided evidence of its ownership of the following trademark registration:

·       United States registered trademark DENAMARINM registration number 3,288,596, registered on the Principal Register on September 4, 2007 for goods in international class 5;

 

Complainant has an established Internet presence and maintains a website at <www.denamarin.com> on which it markets its products and prominently displays the DENAMARIN mark.

 

The disputed domain name <denamrin.com> was registered on November 8, 2022, and resolves to a webpage with links to third party websites, from which, on the balance of probabilities, Respondent is receiving pay-per-click revenue.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs for the disputed domain name and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.

 

The Registrar has confirmed that Respondent is the registrant of the disputed domain name.

 

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

 

Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the DENAMARIN mark, established by the ownership of the portfolio of trademark registration described above and the reputation and goodwill that it has established in the mark by extensive use on its human and animal food supplement business.

 

Confusing Similarity

The disputed domain name <denamrin.com> consists of Complainant's DENAMARIN mark in its entirety, albeit with the second letter "a" omitted, in combination with the gTLD extension <.com>.

 

Complainant's DENAMARIN mark is clearly recognizable within the disputed domain name. The absence of the second letter "a", positioned as it is within the mark, is likely to go unnoticed by many Internet users coming across the disputed domain name when searching for Complainant's products, and its omission from the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,

 

This Panel finds therefore that the disputed domain name is confusingly similar to the DENAMARIN mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that

·       there is no evidence that Respondent has any trademark rights in the DENAMRIN mark;

·       there is no evidence that Complainant has authorized Respondent to use the DENAMRIN mark;

·       nor is there evidence that Respondent might be commonly known by the disputed domain name;

·       Respondent has no connection or affiliation with Complainant;

·       Respondent has not at any time received from Complainant a license or consent, express or implied, to use the DENAMARIN mark in a domain name or in any other manner and therefore Respondent's use of the nearly identical "denamrin" in the disputed domain name is not a legitimate use;

·       Respondent does not refer to itself as "Denamrin" in the WHOIS record for the disputed domain name and does not appear to have any legitimate rights in "Denamrin" as a trademark, service mark, or trade name;

·       the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that the disputed domain name directs consumers to a website with links to third-party sites, which raises a presumption that Respondent has no rights or legitimate interests in the disputed domain name;

·       upon information and belief, Respondent has never used, nor even made preparation to use, the disputed domain name in connection with any bona fide offering of goods and services, nor has it made a legitimate non-commercial or fair use of the disputed domain name;

·       upon information and belief, the links on Respondent's website, which change every visit. are pay-per-click links, and Respondent makes money each time a visitor to its site clicks through to the linked third-party websites. Respondent is therefore trading off Complainant's valuable mark and goodwill and profiting from internet users who mistakenly visit the website believing it to be associated or affiliated with Complainant.

·       by registering and using a domain name that is confusingly similar to a well-known mark to make money through pay-per-click links (whether related and unrelated to a complainant's business) is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the DENAMARIN mark dating back to September 4, 2007 which long predate the registration and first use of the disputed domain name <denamrin.com> which was registered on November 8, 2022.

 

DENAMARIN is a distinctive mark it is most improbable that the disputed domain name which is almost identical, omitting as it does only the second letter "a" was chosen for any reason other than to create a domain name with a high degree of similarity to Complainant's mark. On its own, or in combination with the gTLD <.com> extension, the element "denamrin" has no meaning, and is a nonsense term. On the balance of probabilities it was registered as a misspelling of Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with the Complainant in mind to take predatory advantage of the Complainant's goodwill and reputation in the DENAMARIN mark.

 

Complainant's uncontested submission that Respondent is using the disputed domain name to attract Internet traffic intended for Complainant, and divert it to a pay-per-click site is supported by the evidence. Such use of Complainant's mark within the disputed domain name constitutes an attempt to take predatory advantage of Complainant's goodwill in the DENAMARIN mark, and is use in bad faith for the purpose of the Policy.

 

Furthermore, on the balance of probabilities Complainant is using the disputed domain name which was chosen and registered specifically as a misspelling of Complainant's DENAMARIN mark, constitutes typosquatting, which also constitutes bad faith for the purposes of the Policy.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, the Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).

 

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

 

                                         

________________________________

James Bridgeman SC 

Panelist

Dated: October 18, 2023