Gaspari Nutrition, Inc. v. Sertan Seckin
Claim Number: FA1110001412166
Complainant is Gaspari Nutrition, Inc. (“Complainant”), represented by Sheri S. Mason of Morse, Barnes-Brown & Pendleton, P.C., Massachusetts, USA. Respondent is Sertan Seckin (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gasparinutritionturkey.com>, registered with Name.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2011; the National Arbitration Forum received payment on October 19, 2011.
On October 19, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <gasparinutritionturkey.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 October 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 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@gasparinutritionturkey.com. Also on October 20, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2011, Complainant and Respondent requested a Stay to the Administrative Proceeding until December 15, 2011. The Forum granted the Stay on October 31, 2011.
Complainant requested that the Stay be lifted on December 14, 2011 and the Forum granted an order lifting the Stay on December 15, 2011.
On January 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" 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 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 <gasparinutritionturkey.com> domain name is confusingly similar to Complainant’s GASPARI NUTRITION mark.
2. Respondent does not have any rights or legitimate interests in the <gasparinutritionturkey.com> domain name.
3. Respondent registered and used the <gasparinutritionturkey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gaspari Nutrition, Inc., is a provider of dietary and nutritional supplements. Complainant owns trademark registrations for the GASPARI NUTRITION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,989,635 registered August 30, 2005) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,000,939 registered May 28, 2009).
Respondent, Sertan Seckin, registered the <gasparinutritionturkey.com> domain name on July 10, 2011. The disputed domain name does not resolve to an active website displaying any content.
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 provides evidence of its trademark registrations for the GASPARI NUTRITION mark with the USPTO (Reg. No. 2,989,635 registered August 30, 2005) and OHIM (Reg. No. 1,000,939 registered May 28, 2009) as evidence of its rights in the mark. Previous panels have taken such trademark registrations as conclusive evidence of a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Goldfish Card Servs. Ltd. v. M Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007) (finding evidence of complainant’s rights through its trademark registrations with OHIM). It has previously been established that a complainant need not register the mark in the country where Respondent is located to prove rights under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Based on these precedential decisions, the Panel here concludes that Complainant has adequately shown that it owns rights to the GASPARI NUTRITION mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <gasparinutritionturkey.com> domain name is confusingly similar to Complainant’s GASPARI NUTRITION mark because the disputed domain name merely combines the mark with the geographic identifier “turkey” and the generic top-level domain (“gTLD”) “.com” and removes the space between terms. In Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), and Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002), the panels determined that adding geographic terms, such as “india” and “korea,” to a complainant’s mark did not negate a finding of confusing similarity. Similarly, the panels in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), held that gTLDs and the removal of a space are irrelevant when analyzing confusing similarity. Accordingly, the Panel holds that Respondent’s <gasparinutritionturkey.com> domain name is confusingly similar to Complainant’s GASPARI NUTRITION mark for the purposes of Policy ¶ 4(a)(i).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(i).
According to the mandate of Policy ¶ 4(a)(ii), Complainant must present a prima facie case when alleging that Respondent lacks rights and legitimate interests. Based on the evidence and arguments provided in the Complaint, the Panel concludes that Complainant has satisfied this obligation. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). Respondent, however, now faced with the responsibility of defending its rights and legitimate interests in the disputed domain name, has neither countered Complainant’s allegations nor provided any evidence of its own in support of its position. Faced with this silence and lack of Response, the Panel may infer that Complainant’s contentions are true and that Respondent lacks rights and legitimate interests. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, in the interest of fairness, the Panel will continue to analyze the evidence against the Policy ¶ 4(c) factors to make a complete determination on Respondent’s rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant contends that Respondent cannot claim to be commonly known by the <gasparinutritionturkey.com> domain name. Complainant asserts that the WHOIS information lists the registrant of the disputed domain name as “Sertan Seckin,” which suggests no nominal relationship with the <gasparinutritionturkey.com> domain name. Complainant also argues that it has not authorized Respondent to use the GASPARI NUTRITION mark in any way. Based on Complainant’s allegations, the WHOIS information, and the lack of a Response from Respondent, the Panel concludes that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant asserts that Respondent’s <gasparinutritionturkey.com> domain name is not being used to host an active website as the resolving web page displays only the message, “Internet Explorer cannot display the webpage.” The Panel finds that Respondent’s failure to actively use the disputed domain name does not demonstrate either 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). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
The Panel concludes that Complainant has proven Policy ¶ 4(c)(ii).
Complainant argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. While the Panel agrees that Respondent’s use of Complainant’s mark evidences an intent to use the fame of the mark to attract consumers and create confusion, the Panel finds no evidence of commercial gain as the resolving website is not a functioning website and offers no products or services. The Panel therefore does not find bad faith registration and use under Policy ¶ 4(b)(iv).
When conducting a Policy ¶ 4(a)(ii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent’s <gasparinutritionturkey.com> domain name does not resolve to an active website. The only content displayed on the resolving website is an error message from Internet Explorer stating, “Internet Explorer cannot display the webpage.” Prior panels have determined that a respondent’s failure to actively use a disputed domain name serves as evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel therefore agrees with Complainant that Respondent has shown bad faith registration and use of the <gasparinutritionturkey.com> domain name pursuant to Policy ¶ 4(a)(iii).
The Panel concludes Complainant has proven 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 <gasparinutritionturkey.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 4, 2012
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