Universal Protein Supplements Corporation d/b/a Universal Nutrition v. PrivacyProtect.org / Domain Admin / ID#10760
Claim Number: FA1208001458550
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is PrivacyProtect.org / Domain Admin / ID#10760 (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sport-pharma.com>, registered with IPXcess.com SDN BHD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2012; the National Arbitration Forum received payment on August 16, 2012.
On August 16, 2012, IPXcess.com SDN BHD confirmed by e-mail to the National Arbitration Forum that the <sport-pharma.com> domain name is registered with IPXcess.com SDN BHD and that Respondent is the current registrant of the name. IPXcess.com SDN BHD has verified that Respondent is bound by the IPXcess.com SDN BHD 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 August 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@sport-pharma.com. Also on August 17, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
FACTUAL BACKGROUND- Complainant’s Business and Website
Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Universal Nutrition” or “Complainant”) incorporated in 1983 in the State of New Jersey, United States. Since 1983, Complainant has become one of the leading manufacturers of sports nutrition health products in the world. In 2007, Universal Nutrition acquired the SPORTPHARMA mark and all goodwill associated with it from Protient, Inc. (and Protient’s predecessor in interest, Sportpharma, Inc.)(hereinafter “Complainant” refers to Universal Nutrition and/or its predecessors in interest). Complainant began using the SPORTPHARMA mark for nutritional supplements at least as early as 1989. Complainant owns trademark registrations for SPORTPHARMA in the United States, Japan, Canada, China, and in the European Union.
Complainant’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. Complainant’s sales volume has been more than $20 million (USD) each year since at least 2003. In addition, Complainant spends more than one million dollars (USD) each year in advertisements.
Complainant registered <sportpharma.com> on July 15, 1996. Complainant has used and continues to use its SPORTPHARMA mark prominently on its <sportpharma.com> website.
Relationship Between the Parties
No business relationship exists between Complainant and Respondent. Further, Respondent does not have, and never has had, permission to use Complainant’s SPORTPHARMA trademark.
Respondent’s Business and Website
Respondent registered the <sport-pharma.com> domain name on May 27, 2004. Accordingly, Respondent registered its domain more than eight (8) years after Complainant registered its domain and approximately fifteen (15) years after Complainant began using its SPORTPHARMA mark. Respondent acted without the authorization or knowledge of the Complainant. Through its domain, Respondent repeatedly, and without authorization, uses Complainant’s SPORTPHARMA mark in conjunction with products that are in direct competition with Complainant’s products, as well as other products that may be illegal in a number of countries, including the United States.
Respondent targets consumers in countries where Complainant owns registrations for SPORTPHARMA, as evidenced by the “customer testimonials” from customers in the United States and the United Kingdom.
As of December 12, 2012, the WHOIS information for <sport-pharma.com> used a privacy guard and identified an address in Portugal for the Registrant. Accordingly, on January 12, 2012, Complainant contacted the Respondent in English and Portuguese regarding Respondent’s unauthorized use of Complainant’s registered trademark on the <sport-pharma.com> website and in the domain name itself. Respondent did not respond. In addition, the Registrant’s WHOIS information changed and on March 7, 2012, Complainant captured the new WHOIS information for <sport-pharma.com>. On March 23, 2012, Complainant again attempted to contact Respondent via the new WHOIS information. Respondent again failed to respond. On June 18, 2012, Complainant again captured WHOIS information for <sport-pharma.com> and learned that the Registrant’s WHOIS information changed yet again.
LEGAL ARGUMENT
FIRST ELEMENT: Respondent’s domain name is either identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant’s multiple federal trademark registrations for its SPORTPHARMA mark establish Complainant’s rights in the mark pursuant to ICANN Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”).
Under U.S. trademark law, registered marks presumptively are inherently distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”). Inherently distinctive trademarks, like Complainant’s SPORTPHARMA mark, are strong. Strong marks receive the greatest range of protection from another party’s use of a confusingly similar mark. AMF INC. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
Here, Respondent’s domain name is identical to Complainant’s SPORTPHARMA mark. Respondent’s inclusion of a hyphen is irrelevant. Diners Club International Ltd. v. Domain Administration Limited c/o David Halstead, FA 853706 (Nat. Arb. Forum Jan. 15, 2007) (finding the addition of a hyphen “fails to sufficiently differentiate the disputed domain name from Complainant’s mark.”). Likewise, the use of the generic top-level domain “.com” is without significance to this analysis under Policy ¶4(a)(i). See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark). Accordingly, Respondent’s mere inclusion of the hyphen and the gTLD “.com” does not distinguish it from Complainant’s SPORTPHARMA mark.
In addition, Respondent uses the disputed domain name to offer goods identical to those identified in Complainant’s trademark registrations and offered through Complainant’s website, namely nutritional supplements. Accordingly, Respondent’s registration and use or <sport- pharma.com> is likely to confuse consumers and lead them to conclude falsely that a connection or affiliation exits between the disputed domain name and Complainant. No such connection or affiliation exists.
As defined by the Policy ¶4(a)(i), the disputed domain name is confusingly similar to Complainant’s SPORTPHARMA because it is identical to Complainant’s mark and is used to offer goods identical to goods identified in Complainant’s trademark registration. Accordingly, Complainant satisfies the “first element” pursuant to Policy ¶4(a)(i) because Respondent’s domain name is identical to a trademark in which Complainant has rights.
SECOND ELEMENT: Respondent has no rights or legitimate interests in the disputed domain name.
(i) Respondent has never used the disputed domain name or any name associated with it in connection with a bona fide offering of goods or services.
Respondent has no rights or legitimate interests with respect to the domain at issue. Conversely, Complainant has longstanding registration and use of its SPORTPHARMA mark that predates any rights Respondent may claim in SPORTPHARMA. Respondent’s domain name is identical to Complainant’s registered SPORTPHARMA trademark. Such similarity negates any presumption of Respondent’s legitimate use. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the Respondent’s use of the Complainant’s entire mark in the domain name makes it difficult to infer a legitimate use).
Respondent uses the <sport-pharma.com> domain name to divert consumers away from Complainant’s website towards its own website where it offers competing products. Operating a competitive commercial website at a domain name confusingly similar to Complainant’s mark is not a bona fide offering of goods or services under Policy ¶4(c)(i). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (“The use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Further, Complainant has used its SPORTPHARMA mark for more than twenty years, and has owned <sportpharma.com> for more than fifteen (15) years. Complainant has not authorized Respondent to use its SPORTPHARMA mark. Accordingly, Respondent’s registration and use of <sport-pharma.com> cannot constitute a bona fide use of the domain name. See Swagelok Company v. Elite Sales, Inc., FA 1421137 (Nat. Arb. Forum Feb. 23, 2012) (finding “On its website at the disputed domain name Respondent is using the term ‘swagelock’ or ‘swagelocks’ as a mark for products competing with Complainant, instead of offering genuine products of Complainant (whether authorized or not by Complainant). Thus, Respondent cannot claim that it is making a ‘bona fide’ or a legitimate noncommercial or fair use of a disputed domain name.”). Similarly, Respondent does not offer Complainant’s genuine products on its website; instead, Respondent uses the SPORTPHARMA mark for competing products. Such use, therefore, is not bona fide.
Respondent cannot satisfy the requirements of Policy ¶4(c)(i) because Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
(ii) Respondent is not commonly known by the disputed domain name.
No evidence exists to establish that the disputed domain name is the legal name of Respondent. Respondent uses a privacy guard to hide the WHOIS information for the disputed domain name. Complainant twice attempted to contact the Registrant of the domain. The Registrant never responded. In addition, the WHOIS information for <sport-pharma.com> has changed multiple times, as evidenced by the WHOIS information captured on December 12, 2011, March 7, 2012, and June 18, 2012. Respondent cannot satisfy the requirements of Policy ¶4(c)(ii) because the disputed domain name is not Respondent’s commonly known name, as evidenced by the WHOIS information for the disputed domain.
(iii) Respondent’s use of the disputed domain name is not for any legitimate noncommercial fair use.
Pursuant to Policy ¶4(c)(iii), a respondent may demonstrate that it has legitimate interest in a domain name when it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Conversely, a respondent that misleadingly diverts consumers for commercial gain cannot rely on such use to demonstrate that it is using the disputed domain for a legitimate noncommercial or fair use. Here, Respondent registered a domain name identical to Complainant’s SPORTPHARMA mark and nearly identical to Complainant’s <sportpharma.com> domain. In addition, Respondent uses the disputed domain name to operate a website that sells goods directly competitive with Complainant’s goods. This intentional misdirection of consumers to Respondent’s site instead of Complainant’s site evidences that Respondent cannot satisfy the requirements of Policy ¶4(c)(iii).
(iv) Respondent’s awareness of Complainant’s mark prior to registration of the disputed domain name evidences Respondent’s lack of rights or legitimate interest in the disputed domain name.
A respondent’s awareness of another’s trademark rights prior to the time the respondent registers a disputed domain name is evidence that the respondent lacks rights or legitimate interests in that domain name. See Quinn v. Zournas, FA 610713 (Nat. Arb. Forum Feb. 17, 2006). Here, Respondent – at the very least – had constructive knowledge of Complainant’s rights prior to the date it registered the disputed domain. Respondent registered its domain more than twenty (20) years after Complainant began using its SPORTPHARMA mark. Further Respondent’s domain registration date is nearly eight (8) years after Complainant registered its <sportpharma.com> domain and nearly three (3) years after Complainant’s U.S. trademark registration issued. Respondent sells to consumers in countries where Complainant owns trademark registrations for SPORTPHARMA. For example, Respondent’s website states “select currency” and then offers: CAD (Canada), GBP (United Kingdom), USD (United States), and EUR (Euros). Complainant owns registrations protecting its SPORTPHARMA mark in each of these countries/regions. Respondent’s registration of the domain, despite such constructive notice, illustrates that Respondent is without rights or legitimate interests in the disputed domain name. See Biogen, Inc. v. Kel Ellis, KELCO, D2002-0679 (WIPO Sept. 10, 2002) (finding the Respondent did not have legitimate rights in the disputed domain in part because, pursuant to 15 U.S.C. § 1072, Respondent had constructive notice of Complainant’s mark based upon Complainant’s trademark registration).
Complainant has not authorized Respondent to use Complainant’s SPORTPHARMA mark. Respondent’s use of the domain is not in connection with a bona fide offering of goods for sale. Complainant’s rights in the SPORTPHARMA mark predate any rights Respondent could claim in the disputed domain. Respondent is not commonly known by the disputed domain name. Accordingly, Complainant has satisfied the “second element” pursuant to Policy ¶4(a)(ii) because Respondent has no rights or legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the Respondent was not a licensee of the Complainant; (2) the Complainant’s prior rights in the domain name preceded the Respondent’s registration; (3) the Respondent was not commonly known by the domain in question).
THIRD ELEMENT: The disputed domain name was registered and is being used in bad faith.
(i) Respondent’s bad faith is evidenced by use of Complainant’s trademark primarily for the purpose of disrupting Complainant’s competing business.
Respondent has intentionally attempted to disrupt and is currently disrupting Complainant’s business by using the domain name containing Complainant’s SPORTPHARMA mark and offering to sell competing goods through such domain. See Ashley Furniture Industries, Inc. v. Interior Home Furnishings, FA 1426561 (Nat. Arb. Forum Mar. 1, 2012) (“[A] Respondent’s competing use of a disputed domain name disrupts a Complainant’s business and constitutes bad faith registration.”); see also Classic Metal Roofs, LLC v. Interlock Indus. Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (“The Panel accepts Complainant’s assertion and finds that Respondent has registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by diverting Internet users to its own website selling competing products and services.”)
(ii) Respondent intentionally attempted to divert Complainant’s customers by creating a likelihood of confusion.
Pursuant to Policy ¶4(b)(iv), use of a domain name to intentionally attract consumers to a website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith. Here, Respondent’s registration of <sport-pharma.com> represents bad faith action for commercial gain. In order to drive traffic to Respondent’s website, Respondent uses a nearly identical domain name so that consumers will incorrectly assume an affiliation to Complainant. As a result, the Respondent is able to generate revenue through the misappropriation of Complainant’s goodwill. Respondent’s actions, therefore, constitute bad faith. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (finding “As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainant suggests ‘opportunistic bad faith’”); see also Endurance Specialty Holdings Ltd. v. Insight, FA 1242362 (Nat. Arb. Forum Feb. 26, 2009) (finding that because Respondent operates in the same area and industry as Complainant, it is highly likely that Respondent opportunistically registered the disputed domain name in bad faith).
(iii) Respondent knew of Complainant’s prior use and registration of the
SPORTPHARMA mark.
A respondent acts in bad faith when the respondent has actual knowledge of a Complainant’s prior use of a mark when the Respondent registered the disputed domain name. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding bad faith registration where Respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”). Here, Respondent almost certainly had actual knowledge of Complainant’s mark because Respondent is in the same industry as Complainant, namely the nutritional supplement industry. See Endurance Specialty Holdings Ltd., supra.
Even if Respondent could claim that it did not have actual knowledge – which Respondent cannot plausibly do – Respondent had a duty to investigate prior to registering its domain name. See Collegetown Relocation, L.L.C. v. John Mamminga, FA 95003 (Nat. Arb. Forum July 20, 2000) (“When registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”); see also Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“The domain name ‘sound-choice.com’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party.”). Even the most cursory investigation by Respondent would have revealed Complainant’s rights in the mark because Complainant’s SPORTPHARMA mark has been in use for many years, Complainant owns multiple federal trademark registrations protecting its SPORTPHARMA mark, and Complainant registered – long before Respondent – its <sportpharma.com> domain. Regardless of whether Respondent failed to investigate or investigated and then disregarded Complainant’s longstanding, strong rights in the mark, Respondent’s actions evidence bad faith.
(iv) Other Considerations.
Respondent’s use of the domain name <sport-pharma.com> threatens to tarnish Complainant’s mark. Complainant dedicates itself to providing quality products manufactured under strict quality control measures. Respondent offers, through its domain, anabolic steroids that are illegal in a number of countries, including the United States. Please note, the United States government classifies anabolic steroids – like those offered for sale through Respondent’s <sport-pharma.com> domain – under Schedule III (e). Such classification means that the United States government regulates these substances and that sales and/or use not approved by the United States is illegal. Respondent does not indicate that the United States government or any other entity has authorized it to sell its products in the United States. Respondent provides no evidence that its products meet the quality standards that Complainant ensures its products meet. Accordingly, Respondent’s use of Complainant’s mark negatively affects Complainant’s mark in the minds of consumers. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 422 (S.D.N.Y. 2002). Negative associations are the hallmark of tarnishment. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 507 (2nd Cir. 1996). Respondent’s use of <sport- pharma.com> threatens to create such negative associations and therefore tarnishes Complainant’s mark.
In addition, despite Complainant’s attempt to amicably resolve this dispute, Respondent has failed to respond to Complainant’s correspondence and has refused to cease use of Complainant’s SPORTPHARMA mark.
Pursuant to Policy ¶4(b), Respondent registered and used the domain in bad faith because (1) Respondent has intentionally attempted to disrupt Complainant’s business, (2) Respondent has intentionally attempted to attract, for commercial gain, Complainant’s potential customers to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website, and (3) Respondent either failed to make even a cursory investigation or investigated and disregarded Complainant’s rights in its SPORTPHARMA mark. Accordingly, Complainant has satisfied the “third element” pursuant to Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(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 has acquired rights in the SPORTPHARMA mark by acquiring the company that registered the mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,506,878 registered November 13, 2001), the Japanese Patent Office (“JPO”) (Reg. No. 4,944,905 registered April 14, 2006) and Trade Marks and Designs Registration Office of the European Union (“OHIM”) (Reg. No. 1473131 registered July 16, 2001), among others. Complainant provided the assignment documents for the rights to the mark, as well as documentation from the issuing trademark authorities. This constitutes sufficient evidence to show Complainant has established rights in the SPORTPHARMA mark under Policy ¶4(a)(i) regardless of Respondent’s identified location in Australia (which is somewhat misleading in light of the fact Respondent is using a privacy service). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Further, Complainant contends Respondent’s <sport-pharma.com> domain name is either identical or confusingly similar to the SPORTPHARMA mark. The domain name at issue merely adds a hyphen to the mark as well as the generic top-level domain (“gTLD”) “.com.” Prior panels have determined the use of hyphens and the addition of gTLDs are irrelevant in a Policy ¶4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). This Panel agrees and finds Respondent’s <sport-pharma.com> domain name is identical to Complainant’s SPORTPHARMA mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant argues Respondent is not commonly known by the disputed domain name. Complainant contends that no evidence exists to establish that the disputed domain name is the legal name of Respondent. Despite the fact the WHOIS information has changed several times, the current WHOIS information identifies “PrivacyProtect.org / Domain Admin / ID#10760” as the registrant. Based upon this information, it is obvious Respondent is not commonly known by the domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims Respondent is using the disputed domain name to “divert consumers away from Complainant’s website towards its own website where it offers competing products.” Based upon the information submitted, Respondent’s resolving website is a marketplace website for different chemicals and nutritional products. Complainant contends some of these products are illegal in different countries being targeted by Respondent’s domain name, including the United States. Respondent’s use of the disputed domain name does not amount to 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), especially in light of the fact Respondent is issuing a domain privacy service in a commercial setting. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s bad faith is evidenced “by use of Complainant’s trademark primarily for the purpose of disrupting Complainant’s competing business.” Complainant asserts Respondent has attempted to, and is currently, disrupting Complainant’s business by using the disputed domain name and SPORTPHARMA mark to offer competing goods. This Panel concludes this is sufficient evidence of bad faith registration and use of the disputed domain name under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims Respondent is creating confusion in the minds of Internet users as to Complainant’s affiliation or sponsorship of the disputed domain name. Complainant argues Respondent is using the SPORTPHARMA mark in order to direct Internet users to Respondent’s website for commercial gain through the sale of pharmaceutical and nutrition products. This Panel concludes this is also sufficient evidence to conclude Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant claims Respondent knew of Complainant’s prior use and registration of the SPORTPHARMA mark and that such knowledge is further evidence of Respondent’s bad faith. Respondent is in the same industry as Complainant and Respondent almost certainly had actual knowledge of Complainant’s rights in the SPORTPHARMA mark. Complainant also points to its trademark holdings to argue that Respondent at least had constructive knowledge of Complainant’s rights in the mark. Previous Panels have concluded constructive notice isn’t sufficient to find bad faith registration and use. Based upon the facts of this case and the fact the Complainant’s mark and Respondent’s domain name are nearly identical, this Panel is convinced Respondent must have known about Complainant’s mark before registering the domain name. This constitutes sufficient evidence to find bad faith registration and use.
Respondent is using a privacy service. As this Panel has said numerous times in the past, it is difficult to envision a valid business reason for owning a domain name through a privacy service in a commercial context. A seller who is not willing to disclose the seller’s identity raises the rebuttable presumption of bad faith registration and use of the domain name. The problem is exacerbated because Respondent appears to be selling illegal substances, such as anabolic steroids. Respondent has done nothing to rebut the presumption in this case.
Once Respondent because aware of Complainant’s claim regarding this domain name, Respondent shifted the WHOIS registration for the disputed domain name…repeatedly. Respondent also appears to have changed registrars for this domain name after being contacted by Complainant. This is commonly called “cyberflight” and raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sport-pharma.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, September 17, 2012
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