Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Jas Mathur / KORE Fit Living Inc
Claim Number: FA1310001522974
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 Jas Mathur / KORE Fit Living Inc (“Respondent”), Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalanimalpak.net>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2013; the National Arbitration Forum received payment on October 4, 2013.
On October 4, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <universalanimalpak.net> 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 October 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@universalanimalpak.net. Also on October 8, 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 November 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the UNIVERSAL and ANIMAL PAK marks. Respondent’s domain name is confusingly similar to Complainant’s UNIVERSAL and ANIMAL PAK marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <universalanimalpak.net> domain name, and that Respondent registered and uses the domain name 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 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.”).
Complainant states that it is a leading provider of sports nutrition health products. According to the undisputed evidence, Complainant owns rights in the UNIVERSAL mark through registrations with various industrial property offices around the world, including the USPTO (e.g., Reg. No. 3,555,885 registered January 6, 2009), the CIPO (e.g., Reg. No. 751,760 registered October 30, 2009), and the OHIM (e.g., Reg. No. 5,912,861 registered April 24, 2008). Complainant also owns rights in the ANIMAL PAK mark with the various industrial property offices around the world, including the USPTO (e.g., Reg. No., 2,437,306 registered March 20, 2001), the CIPO (e.g., Reg. No. 745,144 registered August 12, 2009), and the OHIM (e.g., Reg. No. 4,046,521 registered January 18, 2006). A complainant establishes its rights in a mark under the Policy by registering the mark with multiple trademark agencies around the world. See, e.g., Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Complainant has submitted evidence that it has registered both the UNIVERSAL and ANIMAL PAK marks with several trademark authorities around the world including the USPTO. Accordingly, the Panel holds that Complainant has sufficiently established its rights in both the UNIVERSAL and ANIMAL PAK marks pursuant to Policy ¶ 4(a)(i).
Complainant alleges that the <universalanimalpak.net> domain name is confusingly similar to Complainant’s UNIVERSAL and ANIMAL PAK marks because the domain name merely combines the two marks and adds the gTLD “.net.” A domain name’s addition of a gTLD such as “.net” is irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Similarly, ia domain name’s elimination of the space found between words in a mark does not sufficiently distinguish the domain name from the mark under the Policy. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark…does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i)”).
Furthermore, a domain name is confusingly similar to a complainant’s two marks when the domain name merely combines the two marks. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks). Accordingly, the Panel holds that the <universalanimalpak.net> domain name is not sufficiently distinct from Complainant’s UNIVERSAL and ANIMAL PAK marks, and that the domain name is thus confusingly similar to the two marks pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known as <universalanimalpak.net> because Complainant has not authorized Respondent to use its UNIVERSAL or ANIMAL PAK marks in a domain name and the WHOIS information identifies the registrant of the disputed domain name as “Jas Mathur / KORE Fit Living Inc.” A respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii) where the complainant did not authorize the respondent to use its mark in a domain name and there is no evidence in the record, including the WHOIS information, to suggest that the respondent is commonly known by the domain name. See, e.g., 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). In this case, Complainant alleges that it has not authorized Respondent to use the UNIVERSAL or ANIMAL PAK marks in a domain name or for any other purpose, and the Panel concludes the WHOIS information indicates that Respondent is known by a name other than <universalanimalpak.net>. The Panel notes that according to screenshots provided by Complainant, Respondent holds itself out as “Universal Animal Pak” on the website resolving from the disputed domain name, although the Complainant has shown it has not authorized Respondent to so hold itself out online. In Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003), the Panel stated: “while [the] [r]espondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that [the] [r]espondent was actually or commonly known by the disputed domain name.” The Target Brands, panel also reasoned that the fact that the respondent declined to respond to the complainant’s charge tended to show that the respondent was not legitimately known by the disputed domain name. In this case, similarly, the Panel finds that although Respondent holds itself out as “Universal Animal Pak” online, there is nothing else in the record to suggest that Respondent is legitimately known by that name. Accordingly, the Panel concludes that Respondent is not commonly known by the <universalanimalpak.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the disputed domain name is not protected as 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), because Respondent is using the disputed domain name to sell Complainant’s products without Complainant’s authorization, as well as products that directly compete with Complainant’s sport nutrition products. Screenshots provided by Complainant tend to show that the disputed domain name resolves to a website on which Respondent purports to sell Complainant’s ANIMAL PAK product without Complainant’s authorization. Complainant further alleges that when Internet users attempt to make such an unauthorized purchase by clicking the “ORDER NOW!” button, Internet users are redirected to Respondent’s own competing commercial website resolving from the <winnyvs.com> domain name, which promotes Respondent’s own sport nutrition products including the “GASPARI SUPERPUMP ORIGINAL FORMULA!” In Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), a previous panel held that the respondent’s use of the disputed domain name to sell the complainant’s perfume, as well as other brands of perfume, was not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Accordingly, based on the uncontradicted evidence in the record, the Panel finds, similarly to the holding in Chanel, that Respondent is not using the disputed domain name for 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii), because the domain name targets potential customers of Complainant and redirects them to Respondent’s own commercial website, which in turn offers products that directly compete with Complainant’s sport nutrition products. Screenshots provided by Complainant show that the disputed domain name resolves to a website on which Respondent purports to sell Complainant’s ANIMAL PAK product without Complainant’s authorization. Complainant further alleges that when Internet users attempt to make such an unauthorized purchase by clicking the “ORDER NOW!” button, Internet users are redirected to Respondent’s own competing commercial website resolving from the <winnyvs.com> domain name, which promotes Respondent’s own sport nutrition products including the “GASPARI SUPERPUMP ORIGINAL FORMULA!” Bad faith disruption under Policy ¶ 4(b)(iii) may be found where the disputed domain name appropriates the complainant’s mark and is used to sell the complainant’s products marketed under that mark. See, e.g., G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii)”). Similarly, bad faith disruption under Policy ¶ 4(b)(iii) may be found where the disputed domain name appropriates the complainant’s mark and redirects Internet users to the respondent’s own commercial site that offers competing products or services. See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Accordingly, the Panel finds that the <universalanimalpak.net> domain name appropriates Complainant’s marks and is being used by Respondent to sell Complainant’s ANIMAL PAK products without Complainant’s authorization. Further, the Panel reasonably infers that Internet users who access the disputed domain name and attempt to purchase Complainant’s ANIMAL PAK products are redirected to Respondent’s competing website. Thus, the Panel holds that this use of the domain name also constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent has demonstrated bad faith registration and use of the <universalanimalpak.net> domain name pursuant to Policy ¶ 4(b)(iv). By fully appropriating Complainant’s UNIVERSAL and ANIMAL PAK marks, the disputed domain name creates a likelihood of confusion with Complainant’s marks, and Respondent has commercially benefitted from this confusion. Specifically, as discussed above, Complainant alleges that Respondent profits from both the unauthorized sale of Complainant’s ANIMAL PAK products as well as through increased Internet traffic to Respondent’s competing website, achieved by the redirection of Internet users who click the “ORDER NOW!” button. Bad faith registration and use pursuant to Policy ¶ 4(b)(iv) may be found where the disputed domain name is confusingly similar to the complainant’s mark and is used to sell the complainant’s products without the complainant’s authorization. Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). Bad faith under Policy ¶ 4(b)(iv) may be found where the disputed domain name is confusingly similar to the complainant’s mark and is used to redirect Internet users to a website that offers products that directly compete with those offered by the complainant under its mark. See, e.g., 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 under Policy ¶ 4(b)(iv) 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). Because the Panel accepts that the disputed domain name is being used to sell Complainant’s ANIMAL PAK products without Complainant’s authorization and/or to redirect Internet users to Respondent’s competing sport nutrition-related website, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the <universalanimalpak.net> domain name with actual notice of Complainant and its rights in the UNIVERSAL and ANIMAL PAK marks, which demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Because the domain name is substantially identical to both of Complainant’s marks, the Panel infers that the Respondent had actual notice of those marks when the domain name was registered. See, e.g., Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Actual notice of Complainant’s rights in the marks is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <universalanimalpak.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 12, 2013
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