Nutramax Laboratories, Inc. v. K. Fendt
Claim Number: FA1612001709336
Complainant is Nutramax Laboratories, Inc. (“Complainant”), Maryland, USA. Respondent is K. Fendt (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solliquin.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically December 23, 2016; the Forum received payment December 23, 2016.
On December 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <solliquin.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017, 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@solliquin.net. Also on December 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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’s Allegations in this Proceeding:
Complainant has rights in the SOLLIQUIN mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,896,463, filed Mar. 25, 2015, registered Feb. 2, 2016). See Compl., at Attached Ex. 3. Respondent’s <solliquin.net> is identical to the mark as it takes the mark and merely adds the “.net” generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in or to <solliquin.net>. Respondent is not commonly known by the domain name, nor is it licensed to use Complainant’s mark in any way. Further, the domain name resolves to a click-through page, which does not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. 7.
Respondent registered and used <solliquin.net> in bad faith. Respondent’s hosting of a click-through website presumably nets it some commercial gain, supporting findings of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent used the entirety of Complainant’s fanciful mark, demonstrating its actual knowledge of Complainant when registering and subsequently using the disputed domain name under Policy ¶ 4(a)(iii).
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered <solliquin.net> March 31, 2015, some six (6) days after Complainant filed its Registration Application with the USPTO, a public filing.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name or Complainant’s protected mark contained within it in its entirety.
Respondent registered a disputed domain name that is identical to Complainant’s protected mark.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant claims rights in the SOLLIQUIN mark based on registration of the mark with the USPTO (Reg. No. 4,896,463, filed Mar. 25, 2015, registered Feb. 2, 2016). See Compl., at Attached Ex. 3. USPTO registrations confer rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Further, where a valid registration exists, rights date back to the filing date. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). Accordingly, the Panel finds that Complainant demonstrated rights under Policy ¶ 4(a)(i) to the SOLLIQUIN mark and that such rights date back to its filing date of March 25, 2015.
Next, Complainant contends that Respondent’s <solliquin.net> is identical to the mark as it takes the mark and merely adds the “.net” gTLD suffix. Adding “.net” is irrelevant under the Policy. See Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (finding, “The addition of the gTLD ‘.net’ also has no effect on the Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that, inasmuch as Respondent’s addition of “.net” has no effect on a Policy ¶ 4(a)(i) analysis, the <solliquin.net> domain name is identical to Complainant’s protected SOLLIQUIN mark because the gTLD is the only difference.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 asserts that Respondent has no rights or legitimate interests in or to <solliquin.net>. Complainant contends that Respondent is not commonly known by the domain name and is not licensed to use Complainant’s mark in any way. WHOIS information is persuasive when respondents have not submitted evidence for consideration. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS lists “K. Fendt” as registrant of record. Accordingly, the Panel finds that Respondent is not commonly known by <solliquin.net>.
Further, Complainant urges that the domain name resolves to a click-through page, which does not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use. See Compl., at Attached Ex. 7. Where a respondent includes unrelated hyperlinks, no rights or legitimate interests follow such use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). The Panel notes the use of hyperlinks such as “3 Foods Soothe Joint Pain,” “No. 1 Joint Supplement,” and “Flush the bloat.” Compl., at Attached Ex. 7. Therefore, in applying the reasoning of Materia, Inc., the Panel finds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used <solliquin.net> in bad faith. Complainant asserts that Respondent’s hosting of a click-through website presumably nets it some commercial gain, which supports findings of bad faith under Policy ¶ 4(b)(iv). Including unrelated hyperlinks results in findings of bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Using Exhibit 7 as an example of Respondent’s use, the Panel finds that Respondent presumably commercially gains as a result of its inclusion of hyperlinks, and therefore committed bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant also notes that Respondent used the entirety of Complainant’s fanciful mark, demonstrating actual knowledge of Complainant when registering and subsequently using the disputed domain name under Policy ¶ 4(a)(iii). Where respondents register identical iterations of a complainant’s marks, nonexclusive bad faith is shown through their presumed actual knowledge of complainants’ existence as well as its rights in its respective marks. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Accordingly, the Panel finds that Respondent had actual knowledge when registering and using the domain, which constitutes bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <solliquin.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 6, 2017
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