Almased Wellness GmbH v. K Praveen kumar Reddy / Almased
Claim Number: FA1602001662380
Complainant is Almased Wellness GmbH (“Complainant”), represented by Andrea Jaeger-Lenz of Harte -B avendamm Rechtsanwälte, Germany. Respondent is K Praveen kumar Reddy / Almased (“Respondent”), represented by Panduranga Acharya, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <almased.us>, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 24, 2016.
On February 24, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <almased.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2016 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@almased.us. Also on February 29, 2016, 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 March 20, 2016.
On March 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD 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
The Complainant is a German company that markets and sells the product "ALMASED", a dietetic foodstuff intended for weight loss. Since the Complainant's establishment in 2005 (predecessor firms of the Complainant go back to the 1990s), it has expanded to foreign markets such as the USA, Canada, Switzerland and the UK, which was accompanied by the foundation of a number of affiliated companies with the name "ALMASED". ALMASED trademarks are protected both in the Complainant's home country Germany as well as in several other jurisdictions worldwide, totaling to an amount of 72 registered trademarks which consist of, or contain, the word element ALMASED, including also in India. For a number of years, ALMASED has been and presently is the market-leading dietary product for weight loss in Germany. At present, it enjoys the market share of 80% in its category. The product has seen a sharp increase in sales during the past years. The domain name is identical to a trademark or service mark in which the Complainant has rights. The Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name that is/are the subject of the Complaint. The domain name has been registered or used in bad faith.
B. Respondent
It is denied the Complainant was established in USA on or before 2005. The product “ALMASED” was sourced by the multiple seller in USA and were selling the same in the US Market. This Respondent has not registered the alleged Domain with a bad faith. This Respondent has bona fide registered the domain on 4/17/2009 and the Complainant had no direct presence in United States of America. There is no case that the respondent is engaged in redirecting the visitor to Complainant’s website or that of Complainant’s competitors. Respondent was ready and willing for transfer of domain in favor of Complainant without demurrer. The Respondent has no substantial monitory benefit post December 2014. The domain was registered much before the Complainant established its business in USA. The Complainant has failed to establish bad faith on the Respondent and as such the instant case is only for transfer of the alleged domain name <almased.us>. The reference to establish bad faith, i.e., Philip Morris USA Inc. v. Malton International Ltd., D2009-1263 (WIPO Sept. 11, 2009), is not relevant to the instant Complainant.
(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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant markets and sells a product under the mark “ALMASED,” which is a dietary supplement intended for weight loss. Complainant purportedly registered the ALMASED mark with organizations like the USPTO (e.g., Reg. No. 2,578,444, registered June 11, 2002), and argues that such registrations demonstrate rights in the mark. Panels have regarded such offerings as indicative of Policy ¶ 4(a)(i) rights. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). Accordingly, this Panel finds that Complainant has demonstrated rights in the ALMASED mark per Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <almased.us> domain name is identical as it incorporates the mark entirely and merely adds the ccTLD “.us.” Adding ccTLDs to fully incorporated marks has been seen as irrelevant in considering whether a domain is distinct from a mark. See BILD Gmbh & Co. KG v. James Cousin, FA 1641283 (Nat. Arb. Forum November 11, 2015) (determining that ccTLDs and gTLDs must be ignored while determining whether a domain is confusingly similar to a mark under Policy ¶ 4(a)(i)). Here, the Panel determines that Respondent’s <almased.us> domain name is identical to the ALMASED mark under Policy ¶ 4(a)(i).
The Panel notes that 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <almased.us> domain name. In arguing this point, Complainant asserts that Respondent is not commonly known by the <almased.us> domain, nor has Complainant given Respondent permission to incorporate the registered ALMASED mark in any capacity which might give Respondent rights under Policy ¶ 4(c)(iii). The Panel recognizes that the WHOIS of record lists “K Praveen kumar Reddy / Almased” as registrant of the disputed domain name. While Respondent appears to be commonly known by the disputed domain name, the Panel notes that Respondent does not argue rights under this prong of the Policy. Therefore, the Panel finds that Respondent has not overcome Complainant’s prima facie case. See Google Inc. v. S S / Google International, FA1506001625742 (Forum August 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”).
The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
In addition, Complainant argues that Respondent has not been operating the disputed domain name in connection with any bona fide offering of goods or services under Policy ¶ 4(c)(ii), or with any legitimate noncommercial or fair use per Policy ¶ 4(c)(iv). Rather, Respondent has positioned click-through hyperlinks on the resolving page which redirect Internet users to competitors of Complainant, presumably for Respondent’s commercial gain. Complainant also disavows any relationship with Respondent, be it affiliate or otherwise. Panels have found rights or legitimate interests where respondents profit commercially from a click-through hyperlink. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that Respondent has not supported any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) or Policy ¶ 4(c)(iv), respectively.
Complainant contends that Respondent has registered or used the <almased.us> domain name in bad faith. In arguing this, Complainant asserts that Respondent has engaged in bad faith conduct proscribed by Policy ¶ 4(b)(iv) as it: features Complainant’s products on its resolving website, creates a false impression of an association with Complainant, and includes click-through hyperlinks. Panels have seen such conduct as bad faith. See Hewlett-Packard Co. v. Ali, FA 353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent operated in bad faith to commercially profit from the goodwill associated with Complainant, and that Respondent has engaged violated Policy ¶ 4(b)(iv) bad faith.
Respondent also includes the following notice on its resolving website: “© Copyright Almased.us, 2013.” In light of this, Complainant argues that it is apparent that Respondent had actual knowledge of the ALMASED mark and Complainant’s rights in the mark, demonstrating bad faith registration or use under Policy ¶ 4(a)(iii). Panels have looked to the totality of the circumstances in making findings of actual knowledge imputing bad faith under the Policy. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). As a result, the Panel finds that circumstances exist in this case sufficient to conclude that Respondent registered or used the disputed domain with actual knowledge of the ALMASED mark and Complainant’s rights in the mark, and thus acted in bad faith.
The Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <almased.us> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: April 6, 2016
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