Regents of the
Claim Number: FA0708001070222
Complainant is Regents of the University of Michigan (“Complainant”), represented by Paul
R. Fransway, of Pear Sperling Eggan & Daniels, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mfitnutrition.com>, registered with Estdomains, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On September 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2007 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@mfitnutrition.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <mfitnutrition.com> domain name is confusingly similar to Complainant’s MFIT mark.
2. Respondent does not have any rights or legitimate interests in the <mfitnutrition.com> domain name.
3. Respondent registered and used the <mfitnutrition.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regents of the
Respondent, OpenIT Systems
Limited, registered the <mfitnutrition.com> domain name on
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.
Complainant asserts rights to the MFIT mark through its
USPTO registration. Under the Policy,
registration of a mark with an appropriate governmental authority confers
rights in that mark to a complainant.
Therefore, the Panel finds that Complainant holds rights to the MFIT
mark pursuant to Policy ¶ 4(a)(i). See Expedia,
Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s
trademark registrations with the USPTO adequately demonstrate its rights in the
[EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Diners Club Int’l
Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum
In addition, Complainant’s USPTO trademark registration
lists Complainant’s first date of use in commerce of the MFIT mark as January
1991. Complainant alleges to have been
using the mark since the late 1980’s, but acknowledged first using the mark in
commerce in January 1991. Since then,
Complainant has developed recognition and valuable goodwill in the MFIT mark
through its Health Promotion Division of the
Respondent’s <mfitnutrition.com> domain name contains Complainant’s MFIT mark in its entirety and adds the related, generic word “nutrition” as well as the generic top-level domain (“gTLD”) “.com.” However, the addition of a related, generic word that describes a complainant’s business does not sufficiently distinguish a disputed domain name from a complainant’s mark. Furthermore, the addition of the gTLD “.com” is irrelevant to this analysis under the Policy because a top-level domain is required of all domain names. Therefore, the Panel finds that Respondent’s <mfitnutrition.com> domain name is confusingly similar to Complainant’s MFIT mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mfitnutrition.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <mfitnutrition.com> domain name. The WHOIS information identifies Respondent as “OpenIT Systems Limited,” and Complainant has asserted that Respondent is not licensed or authorized to use any of Complainant’s marks. The Panel further finds no other evidence in the record indicating that Respondent may be commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <mfitnutrition.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant has alleged that Respondent is using the <mfitnutrition.com> domain name to display
hyperlinks advertising nutritional information and products. This use competes with Complainant’s
business, and therefore does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Am. Int’l Group, Inc. v. Benjamin, FA
944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a
confusingly similar domain name to advertise real estate services which
competed with the complainant’s business did not constitute 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 also Bond &
Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <mfitnutrition.com>
domain name to advertise nutritional information and products that compete with
Complainant. This is likely to disrupt
Complainant’s business by diverting customers to the websites of Complainant’s
competitors. Therefore, the Panel finds
that Respondent registered and is using the <mfitnutrition.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See
Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that
displayed commercial links to the websites of the complainant’s competitors); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
Complainant has alleged that Respondent earn click-through advertising fees for each redirected Internet user. Therefore, Complainant contends that Respondent is attempting to attract, for commercial gain, Internet users to its website. Respondent appears to be profiting from the goodwill associated from Complainant’s MFIT mark. Furthermore, customers may become confused as to the source, affiliation, endorsement, or sponsorship of the competing information and products advertised on Respondent’s website that resolves from the disputed domain name. Thus, the Panel finds that Respondent registered and is using the <mfitnutrition.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
The Panel notes that Respondent registered the <mfitnutrition.com> domain name on
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 <mfitnutrition.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 30, 2007
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