Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Ohanz
Claim Number: FA1802001772710
Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition (“Complainant”), represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Ohanz (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universalnutrltion.com> (‘the Domain Name’), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2018; the Forum received payment on February 20, 2018.
On February 22, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <universalnutrltion.com> 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 February 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2018 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@universalnutrltion.com. Also on February 22, 2018, 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 March 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Complainant is the owner of the word mark UNIVERSAL NUTRITION registered, inter alia in the USA and used since 1983. Complainant registered universalnutrition.com in 1998.
Respondent registered the Domain Name in 2018 and has used the Domain Name to solicit payment from Complainant’s customers unlawfully with spoof e mail addresses substituting an ‘l’ for the first ‘i’ in nutrition in the Domain Name which is confusingly similar to Complainant’s UNIVERSAL NUTRITION mark. The use of the gTLD .com is also without significance under Policy 4 (a)(i).
Respondent has no rights or legitimate in the Domain Name. Complainant has not authorised Respondent to use Complainant’s mark. Respondent is not commonly known by the Domain Name. Respondent is fraudulently impersonating employees with e mail addresses associated with the Domain Name to fraudulently elicit payments which cannot be legitimate non commercial or bona fide use.
Respondent’s attempts to elicit payments from Complainant’s customers using details and the logo of Complainant shows actual awareness of Complainant and its rights. This attempt to pass Respondent off as Complainant is bad faith use and registration, is disruptive and designed to create a likelihood of confusion as the source of electronic content on the Internet related to the Domain Name. Typosquatting is, in itself bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the word mark UNIVERSAL NUTRITION registered, inter alia in the USA with first use recorded as 1993 for health snack bars. Complainant registered universalnutrition.com in 1998.
The Domain Name looks very similar to Complainant’s domain name substituting a ‘l’ for an ‘i’ in ‘nutrition’ and has been used to attempt to solicit payments from Complainant’s customers.
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 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
The Domain Name consists of a typosquatting version of Complainant’s UNIVERSAL NUTRITION trade mark (registered, inter alia, in the USA for heath snack bars with first use recorded as 1993) substituting a ‘l’ for the first ‘i’ in ‘nutrition’ and adding the gTLD .com. Substituting an ‘l’ for an ‘i’ in this way does not distinguish the Domain Name from that mark.
The gTLD .com does not serve to distinguish the Domain Name from the UNIVERSAL NUTRITION mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that Respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized Respondent to use its ALASKA AIRLINES mark).
The Domain Name has been used in a fraudulent e mail scam using the UNIVERSAL NUTRITION name and logo. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’).
As such the Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Impersonating a complainant by use of a complainant’s mark in a fraudulent e mail scam is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4 2016)(finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii). ) Typosquatting itself is also evidence of relevant disruptive bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003).
Further, in the opinion of the Panel the use made of the Domain Name in relation to an e mail scam is confusing in that recipients of the e mails will reasonably believe that they are connected to or approved by Complainant as the UNIVERSAL NUTRITION name and logo are used. This mimicking by Respondent of Complainant shows that Respondent was aware of Complainant and its business and rights and constitutes passing off. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of electronic content on the Internet under Policy 4 (b)(iv). See Qatalyst Partners L.P. v Devinmore, FA 1393436 (Forum July 13, 2011)(finding that using the disputed domain name as an e mail address to pass itself off as Complainant in a fraudulent scheme is evidence of bad faith registration and use under para4 (b)(iv) of the Policy).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and 4 (b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universalnutrltion.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 20, 2018
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