DECISION

 

Biofert Manufacturing Inc. v. Muhammad Adnan / Biofert manufacturing

Claim Number: FA1710001753132

PARTIES

Complainant is Biofert Manufacturing Inc. (“Complainant”), represented by Mat Brechtel of Norton Rose Fulbright Canada LLP, Canada.  Respondent is Muhammad Adnan / Biofert manufacturing (“Respondent”), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <biofert.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 10, 2017; the Forum received payment on October 10, 2017.

 

On October 12, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <biofert.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@biofert.net.  Also on October 17, 2017, 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 November 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant is a manufacturer and distributer of fertilizers and supplements for agricultural use in Canada and elsewhere in the world, including Pakistan. Complainant has established substantial goodwill and unregistered trademark rights in the BIOFERT mark based on use since at least as early as January 1, 2007, and at least as early as 2012 in Pakistan. Complainant registered the BIOFERT mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA854,894, registered Jul. 10, 2013). See Compl. Annex 2. Complainant’s common law rights stem from the substantial sales and extensive advertising and promoting, and has become very well-known in as identifying fertilizers and supplements for agricultural use originating from, sponsored by, or associated with Complainant. See Compl. Annex 1 (information relating to Complainant and the BIOFERT mark). Respondent’s <biofert.net> domain name is identical or confusingly similar to Complainant’s mark as it has no added phrases or letters outside of the Complainant’s mark and has no way to be considered distinctive from the Complainant’s mark.

2.    Respondent has no rights or legitimate interests in the <biofert.net> domain name. Respondent is not commonly known by the disputed domain name, as the current WHOIS information lists the registrant as “Muhammad Adnan / Biofert manufacturing,” however there is no evidence in the record to support a finding that Respondent is known by the BIOFERT mark outside of the registrant’s alleged organization name. See Compl. Annex 5. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Even further, Respondent only gained access to the domain name in July, 2015 when the registration of the domain name lapsed. See Compl. Annex 3 (historical WHOIS information). Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent initially used the resolving webpage to pass off as Complainant by mimicking Complainant’s website and offer competing goods and services. See Compl. Annexes 6-7 (screenshots of both Complainant’s and Respondent’s domains). Further, after Complainant sent a cease and desist letter to Respondent, the resolving webpage changed to a maintenance page. See Compl. Annex 10. Currently, the domain name resolves in an inactive webpage. See Compl. Annex 10A.

3.    Respondent registered and uses the <biofert.net> domain name in bad faith. Respondent registered the domain name for the primary purpose of selling it to Complainant or third-party competitors, shown by Respondent offering the domain name to one of Complainant’s competitors for $30,000.00. See Compl. Annex 4. Further, Respondent intentionally attempted to attract, for commercial gain, internet user to the website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and offer competing fertilizer services. See Compl. Annex 7. Finally, Respondent currently does not make any active use of the domain name’s resolving webpage. See Compl. Annex 10A.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <biofert.net> domain name is confusingly similar to Complainant’s BIOFERT mark.

2.    Respondent does not have any rights or legitimate interests in the <biofert.net> domain name.

3.    Respondent registered or used the <biofert.net> domain name in bad faith.

 

DISCUSSION

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(f), 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 (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 and/or Confusingly Similar

Complainant claims it registered the BIOFERT mark with the CIPO (e.g. Reg. No. TMA854,894, registered Jul. 10, 2013). See Compl. Annex 2. Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“Registration with the CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i), even if Respondent is located in another country.”). Accordingly, the Panel finds that Complainant has established rights in the BIOFERT mark through registration with the CIPO.

 

Complainant also claims to have common law rights in the BIOFERT mark dating back to January 1, 2007. To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant’s common law rights allegedly stem from the substantial sales and extensive advertising and promoting, and has claimed to have become very well-known in as identifying fertilizers and supplements for agricultural use originating from, sponsored by, or associated with Complainant. See Compl. Annex 1 (information relating to Complainant and the BIOFERT mark). The Panel finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <biofert.net> domain name is identical or confusingly similar to Complainant’s mark as it has no added phrases or letters outside of the Complainant’s mark and has no way to be considered distinctive from Complainant’s mark. Only adding a generic top-level domain

(“gTLD”) to a registered mark fails to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Verragio, LTD. v. Lance Liao, FA 1445159 (Forum July 5, 2012) (“Respondent’s <verragio.net> domain name is identical to Complainant’s VERRAGIO mark, since Respondent has merely added the generic top-level domain (“gTLD”) ‘.net.’”). The Panel therefore finds that the <biofert.net> domain name is identical to the BIOFERT mark under 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 shifts to Respondent to show it does have 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 contends that Respondent has no rights or legitimate interests in the <biofert.net> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Muhammad Adnan / Biofert manufacturing,” however there is no evidence in the record to support a finding that Respondent is known by the BIOFERT mark outside of the registrant’s alleged organization name. See Compl. Annex 5. A respondent must provide affirmative evidence that it is commonly known by a domain name and cannot simply prove this by registering a domain name using a mark. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 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 affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BIOFERT mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <biofert.net> domain name under Policy ¶ 4(c)(ii).

 

Complainant also claims that Respondent registered the domain name in July, 2015 after Complainant’s registration of the domain name lapsed. A complainant previously owning a domain name which a respondent subsequently registered can show a lack of rights and legitimate interests, especially where a respondent fails to submit a response. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant provides the historical WHOIS information for the domain name, which shows the registrant as “Biofert Manufacturing / Biofert Manufacturing Inc.” as late as July 22, 2015. See Compl. Annex 3. Accordingly, the Panel agrees that Respondent’s subsequent registration fails to confer rights and legitimate interests in the <biofert.net> domain name for the purposes of Policy ¶ 4(a)(ii).

 

Complainant next argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant for its own commercial gain by offering competing services. Passing off and offering competing goods or services can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Screenshots provided by Complainant show that Respondent makes use of Complainant’s BIOFERT mark on the resolving webpage and appears to provide the same services as Complainant. See Compl. Annexes 6-7. The Panel therefore finds that Respondent attempted to pass off as Complainant to offer competing services, failing to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Further, Complainant contends that the disputed domain name currently resolves to an inactive website. Failure to make active use of a domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  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 screenshot provided by Complainant shows that the website displays the message “This Account has been suspended. Contact your hosting provider for more information.” See Compl. Annex 10A. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent registered the <biofert.net> domain name solely for the purpose of offering the name for sale to Complainant or third-party competitors. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant provides an examination excerpt from a “Tahir Mahmood” stating that Respondent attempted to sell the domain name to a competitor for $30,000.00. See Compl. Annex 4. Accordingly, the Panel uses Respondent’s offering of the domain name for sale to Complainant’s competitor as evidence of bad faith registration.

 

Additionally, Complainant argues that Respondent registered and uses the <biofert.net> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Respondent appears to have a similar website as Complainant, while offering similar fertilizer products as well. See Compl. Annex 7. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Finally, Complainant claims that Respondent has inactively held the domain name since October 2016. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted previously, the screenshot provided by Complainant shows that the website displays the message “This Account has been suspended. Contact your hosting provider for more information.” See Compl. Annex 10A. As such, the Panel agrees that Respondent inactively holds the <biofert.net> domain name, and thus registered and uses the domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <biofert.net> domain name be TRANSFERRED from Respondent to Complaint.

 

John J. Upchurch, Panelist

Dated:  11/27/17