Universal Protein Supplements Corporation d/b/a Universal Nutrition v. 21562719 Ont Ltd
Claim Number: FA1302001483550
Complainant is Universal Protein Supplements Corporation d/b/a
Universal Nutrition (“Complainant”), represented by Matthew Ciesielski of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is 21562719 Ont Ltd (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutritioncorp.com>, registered with FABULOUS.COM PTY LTD.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2013; the National Arbitration Forum received payment on February 5, 2013.
On February 5, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <universalnutritioncorp.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.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 February 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2013 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@universalnutritioncorp.com. Also on February 7, 2013, 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 March 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Universal Protein Supplements Corporation d/b/a Universal Nutrition is one of the leading providers of sports nutrition health products in the world. Complainant has done business as “Universal Nutrition” continuously since 1983. 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 has had a sales volume of over $20 million since 2003.
Complainant has a trademark registration for the UNIVERSAL NUTRITION mark (Reg. No. 3,020,559 filed Oct. 1, 2004; registered Nov. 29, 2005) with the United States Patent & Trademark Office (“USPTO”).
Respondent’s <universalnutritioncorp.com> domain name is confusingly similar to the UNIVERSAL NUTRITION mark. The domain name tacks the generic top-level domain (“gTLD”) “.com” to Complainant’s mark along with the generic term “corp.”
Respondent has no evidence to suggest it is known as the <universalnutritioncorp.com> domain name. Respondent has decided to list itself as “Whois Privacy Services Pty Ltd.” in its WHOIS information.
Respondent has used the domain name to further neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use. Respondent is using the domain name to divert Internet users to a link farm designed to send Internet users to third-party competing websites. Respondent is presumably profiting from this scheme.
Respondent is intentionally seeking to disrupt Complainant’s business. Respondent does this by using the confusingly similar domain name to promote advertisements for goods and services that compete directly with Complainant.
Respondent is also using the domain name to distract potential customers away from Complainant’s business by capitalizing on the chances that Internet users will mistake Complainant as the owner or sponsor of the content on the disputed domain name’s website. Respondent capitalizes on these mistakes in the form of advertising revenue that is acquired each time an Internet user clicks on the hyperlinks.
Respondent had knowledge of Complainant’s rights for the UNIVERSAL NUTRITION mark when registering the domain name. Respondent knew to incorporate the entire UNIVERSAL NUTRITION mark in a domain name that is dedicated to redirecting Internet users to websites that compete with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its UNIVERSAL NUTRITION mark.
The at-issue domain name domain name was registered on December 2, 1998.
Complainant’s trademark rights in UNIVERSAL NUTRITION predate Respondent’s registration of at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain name redirects traffic to links which ultimately lead to businesses in competition with Complainant.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration for the UNIVERSAL NUTRITION mark is conclusive evidence of Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is immaterial that Respondent may reside outside the jurisdiction of the trademark’s registrar. 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).
Proving that a complainant had common law trademark rights prior to Respondent’s registration of an at-issue domain name is sufficient, but not necessary, to show rights in a mark under Policy ¶(4)(i) where, as in the instant case, a complainant owns a registered trademark for such mark at the time it submits its complainant. However, proving trademark rights in a mark prior to the at-issue domain name’s registration date is generally considered a prerequisite to a finding for the complainant either under Policy ¶4(a)(ii), since the respondents rights in the domain name predate complainant’s rights in the mark or under ¶4(a)(iii), since respondent could not have contemplated “the complainant’s non-existent rights.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, http://www.wipo.int/amc/en/domains/search/overview/index.html#31 (December 8, 2009). (“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right”). While Respondent registered the at-issue domain name prior to the operative date of Complainant’s trademark registration, Complainant proffers evidence from which the Panel concludes that Complainant had common law trademark rights in UNIVERSAL NUTRITION at the time Respondent registered the at-issue domain name.
In forming the at-issue domain name Respondent removes the space between the terms in Complainant’s mark, adds the generic term “corp,” and then appends the top level domain name “.com” thereto. The resulting difference between the at-issue domain name and the UNIVERSAL NUTRITION mark is insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). Therefore, Respondent’s <universalnutritioncorp.com> domain name is confusingly similar to the UNIVERSAL NUTRITION mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.
Rights or Legitimate Interests
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “21562719 Ont Ltd” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Respondent is using the <universalnutritioncorp.com> domain name to divert users away from Complainant’s website and redirect them to a “link farm” designed to earn Respondent click-through advertising revenue. Links on the <universalnutritioncorp.com> webpage route the user to third parties that are in competition with Complainant and elsewhere. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.”)
Additionally, and as discussed below with regard to bad faith, Respondent was aware of Complainant’s rights in the UNIVERSAL NUTRITION mark before registering the <universalnutritioncorp.com> domain name. Prior knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark is further evidence that Respondent lacks rights or legitimate interests in respect of the at-issue domain name. See Quinn v. Zournas, FA 610713 (Nat’l Arb. Forum Feb. 17, 2006) (“Respondent's prior awareness of another's mark is evidence that Respondent lacks rights and legitimate interest in the Disputed Domain.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is non-Policy ¶4(b) evidence which also shows that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses the <universalnutritioncorp.com> domain name to ultimately promote products that directly compete with Complainant. The at-issue domain name currently addresses a website providing vistors with an array of hyperlinks to Complainant’s competitors, as well as other unrelated third parties. Use of the domain name in this manner is disrupting to Complainant’s business and demonstrates bad faith registration and use pursuant to Policy ¶4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Furthermore, Respondent is using the domain name to divert Complainant’s potential customers away from Complainant’s authentic Internet presence, for commercial gain. Respondent capitalizes on the probability that because of the confusing similarity between the website’s domain name and Complainant’s trademark, potential customers will mistake Complainant for the owner or sponsor of the <universalnutritioncorp.com> website. Respondent presumably monetizes this inadvertence by way of advertising revenue that is credited to Respondent each time someone clicks on one of the <universalnutritioncorp.com> website’s links. These circumstances demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent had actual knowledge of Complainant’s rights in the UNIVERSAL NUTRITION mark when it registered the at-issue domain name. Respondent’s knowledge is apparent because Respondent incorporated Complainant’s entire UNIVERSAL NUTRITION mark in a domain name that is dedicated to redirecting Internet users to various websites that compete with Complainant. Respondent’s prior knowledge of Complainant's mark and rights therein further shows that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutritioncorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 12, 2013
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