Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Satheesh Babu
Claim Number: FA1202001432202
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Maureen Beacom Gorman of Marshall Gerstein & Borun, Illinois, USA. Respondent is Satheesh Babu (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <animalpakuniversal.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.
On March 1, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <animalpakuniversal.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2012 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@animalpakuniversal.com. Also on March 2, 2012, 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 April 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <animalpakuniversal.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ANIMAL PACK AND UNIVERSAL marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has established rights in the ANIMAL PAK and UNIVERSAL marks due to its registrations in the United States and international registrations worldwide. Plaintiff incorporated in 1983 in the State of New Jersey and uses the assumed name Universal Nutrition throughout the world. Since 1983, Complainant has become one of the leading providers of sports nutrition health products in the world. Complainant owns at least 16 registrations for ANIMAL PAK including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,437,306 registered Mar. 20, 2001), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA745,144 registered Aug. 12, 2009), and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 4,046,521 registered January 18, 2006).
Complainant also owns trademark registrations for its UNIVERSAL mark with trademark authorities around the world, including the USPTO (e.g., Reg. No. 3,555,885 registered Jan. 6, 2009), CIPO (Reg. No. TMA751,760 registered Oct. 30, 2009), and OHIM (Reg. No. 5,912,861 registered Apr. 24, 2008).
Respondent registered the disputed domain name on October 22, 2010, without the authorization or knowledge of the Complainant. The disputed domain name resolved to a page selling Complainant goods, as well as selling goods from direct competitors. Respondent has not been authorized to use Complaints ANIMAIL PAK or UNIVERSAL marks and is not commonly known by the domain name at issue.
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.
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.”).
Complainant owns USPTO trademark registration certificates for its ANIMAL PAK mark (Reg. No. 2,437,306 registered March 20, 2001) and its UNIVERSAL mark (e.g., Reg. No. 3,555,885 registered January 6, 2009). Complainant also owns registrations for its ANIMAL PAK mark with CIPO (Reg. No. TMA745,144 registered Aug. 12, 2009), and OHIM (Reg. No. 4,046,521 registered January 18, 2006), among other places, and its UNIVERSAL marks from CIPO (Reg. No. TMA751,760 registered Oct. 30, 2009), and OHIM (Reg. No. 5,912,861registered Apr. 24, 2008). Complainant’s trademark registrations are evidence that Complainant holds rights in its ANIMAL PAK and UNIVERSAL marks for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). The Panel also finds that Complainant’s trademark registrations suffice to prove it owns rights in the mark under Policy ¶ 4(a)(i), even though the mark is not registered in the country where Respondent is located. 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)
Respondent’s <animalpakuniversal.com> domain name is confusingly similar to Complainant’s ANIMAL PAK and UNIVERSAL marks. The domain name is a combination of Complainant’s marks and contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that combining one of Complainant’s mark with another of Complainant’s marks, along with a gTLD, does not distinguish a disputed domain name from a mark. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel therefore agrees with Complainant and find that Respondent’s
<animalpakuniversal.com> is confusingly similar to Complainant’s ANIMAL PAK mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Respondent is not commonly known by the <animalpakuniversal.com> domain name. The WHOIS information identifies “Satheesh Babu” as the registrant of the <animalpakuniversal.com> domain name. Complainant did not authorize Respondent to use Complainant’s ANIMAL PAK or UNIVERSAL marks and Respondent did not respond to this case to contradict any of the evidence in the record. A respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant has not authorized the respondent to register the domain name, and the respondent fails to present any evidence contradicting the complainant’s assertions. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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). The Panel therefore concludes that Respondent is not commonly known by the <animalpakuniversal.com> domain name according to Policy ¶ 4(c)(ii).
Further, Respondent is not using the <animalpakuniversal.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <animalpakuniversal.com> resolves to a website that sells competing goods, as well as Complainant’s goods without authorization. The sale of goods and services similar to those offered by Complainant in such a manner is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). Respondent’s use of the disputed domain name to sell competing goods and Complainant’s goods without authorization is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <animalpakuniversal.com> domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Registration and Use in Bad Faith
Respondent’s website associated with <animalpakuniversal.com> offers competing goods and Complainant’s own products for sale. The Panel therefore holds that Respondent’s use of the disputed domain name to sell Complainant’s own products and other companies’ competing products disrupts Complainant’s business by facilitating competition, revealing Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent is commercially benefitting from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name. A respondent’s use of a website to sell a complainant’s products constitutes bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”). Respondent is attempting to create, and profit from, Internet users’ confusion, and the Panel concludes that Respondent registered and uses the <animalpakuniversal.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <animalpakuniversal.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 9, 2012
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