Kevco Intellectual Properties LLC v. Jason Healey
Claim Number: FA1405001560838
Complainant is Kevco Intellectual Properties LLC (“Complainant”), represented by Richard L. Hill of Durham Jones & Pinegar, Utah, USA. Respondent is Jason Healey (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baddassnutrition.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2014; the National Arbitration Forum received payment on May 22, 2014.
On May 23, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <baddassnutrition.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 May 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2014 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@baddassnutrition.com. Also on May 23, 2014, 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.
A timely Response was received and determined to be complete on June 12, 2014.
A timely Additional Submission was received by Complainant and deemed to be complete on June 17, 2014.
On June 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonathan Agmon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Kevco Intellectual Properties LLC, uses the BADDASS NUTRITION mark in connection with dietary and nutritional supplements, wellness and weight management, apparel, and energy drinks.
The Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BADDASS NUTRITION mark (Reg. No. 4,219,260, registered October 2, 2012).
The <baddassnutrition.com> domain name is identical to Complainant’s BADDASS NUTRITION mark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name.
Respondent has not set up any website with the disputed domain name.
Complainant’s IT person inadvertently let the disputed domain name expire without re-registering it. Respondent bought the domain name before Complainant could re-register.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent has shown a pattern of acquiring and holding domain names.
B. Respondent
Respondent purchased the <baddassnutrition.com> domain name through auction on October 24, 2013.
Respondent was unaware of any third-party trademark rights when it registered, used, and trafficked the disputed domain name
Respondent searched the web history of this domain name prior to bidding on the auction, and only noticed an error message. See Response, Exhibit B. Also. According to Internet Archive, Exhibit A, the site had ceased operation as of May 23rd, 2013. Thus Respondent believed that the prior registrant made no real use of the domain name.
The disputed domain name provides no commercial benefit to Respondent at all.
C. Additional Submissions
A timely Additional Submission was received by Complainant and deemed to be complete on June 17, 2014.
Respondent was on constructive notice of Complainant’s rights in the BADDASS NUTRITION mark through Complainant’s USPTO registration of the mark.
An employee of the Complainant approached the Respondent by email and telephone, to which the Respondent did not respond.
Respondent likely purchased the disputed domain name to extract a substantial payment from Complainant.
The website for the disputed domain name was in the process of being rebuilt when the IT person left the company and neglected to notify Complainant of the renewal deadline.
During the time that the website under the disputed domain name was down, the disputed domain name forward to the Complainant's main website – baddas.com
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 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of trademark registrations with the USPTO for the BADDASS NUTRITION mark (Reg. No. 4,219,260, registered October 2, 2012). Therefore, the Panel concludes that Complainant’s filing and registration of the BADDASS NUTRITION mark with the USPTO sufficiently demonstrates that it has rights in the mark under Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name <baddassnutrition.com> integrates the Complainant’s BADDASS NUTRITION trademark in their entirety, as a dominant element. The Respondent merely removes the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Respondent’s omission of spaces and inclusion of a gTLD is inconsequential pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the trademark in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that Respondent is not commonly known by the <baddassnutrition.com> domain name. The Complainant asserts that Respondent is known by “J2H Marketing,” an Internet marketing company. See Complainant’s Attachment 2. The Panel notes that the WHOIS information shows that “Jason Healey” is listed as the registrant of the disputed domain name. The Panel also observes that Respondent fails to provide any additional evidence showing that it is known by the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Moreover, the Respondent claims that the disputed domain has no commercial benefit to him. Accordingly, the Panel finds that Respondent is not commonly known by the <baddassnutrition.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent has not set up any website with the <baddassnutrition.com> domain name. The Panel finds that while Complainant does not provide any evidence of Respondent’s use of the disputed domain name, the Panel agrees and find that Respondent is not making an active use of the disputed domain name, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Complainant contends that it inadvertently let the disputed domain name expire without re-registering it. The Complainant argues that Respondent immediately purchased the disputed domain name upon expiration. In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel found that complainant’s prior registration of the same domain name is a factor in considering respondent’s rights or legitimate interests in the domain name. The Panel finds that Respondent registered the <baddassnutrition.com> domain name only upon expiration of the domain name, and therefore the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
In its Additional Submission, Complainant urges that Respondent likely purchased the <baddassnutrition.com> domain name to extract a substantial payment from Complainant. Complainant asserts that Respondent has admitted in its Response that the disputed domain name has no commercial value to him, but that he registered the disputed domain name, so it must have some commercial value to him. Complainant also argues that Respondent claimed in its Response that “Complainant was trying to force a transfer without paying fair market value for the domain". The Panel finds that Respondent is not using the disputed domain name for any purpose other than to sell the domain name, and therefore the Panel finds that Respondent has registered and is using the <baddassnutrition.com> domain name in bad faith under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Complainant asserts that Respondent has shown a pattern of acquiring and holding domain names. Complainant contends that Respondent has acquired 84 other domain names. See Complainant’s Attachment 3. The Panel finds that Respondent has engaged in a pattern of bad faith registration of domain names, therefore, the Panel concludes that Respondent has registered and is using the <baddassnutrition.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Complainant contends that Respondent has not set up any website with the <baddassnutrition.com> domain name. The Panel holds that while Complainant has not provided any evidence of Respondent’s use of the disputed domain name, the Panel finds that Respondent is not making an active use of the disputed domain name, showing bad faith under Policy ¶ 4(a)(iii). 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).
Complainant argues that its IT person inadvertently let the <baddassnutrition.com> domain name expire without re-registering it. In its Additional Submission, Complainant asserts that the website for the disputed domain name was in the process of being rebuilt when the IT person left the company and neglected to notify Complainant of the renewal deadline. Complainant urges that Respondent then purchased the disputed domain name immediately after Complainant inadvertently let the domain name expire. In BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000), the panel found bad faith where respondent took advantage of complainant’s failure to renew a domain name. Accordingly, the Panel finds that Respondent has registered and is using the <baddassnutrition.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
In its Additional Submission, Complainant contends that Respondent was on constructive notice of Complainant’s rights in the BADDASS NUTRITION mark through Complainant’s USPTO registration of the mark. The Panel agrees that constructive notice is not sufficient evidence of bad faith. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Only actual notice of the mark will apply liability for Policy ¶ 4(a)(iii) bad faith registration on Respondent. Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”) However, for Exhibits C to the Respondent's response it seems that the Respondent was aware of the Complainant's main website, products and mark. Therefore, the Panel concludes that the Respondent knew the Complainant when buying the disputed domain name.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baddassnutrition.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon, Panelist
Dated: 24.07.2014
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