Laboratoires M&L v. Nitish Ghuse
Claim Number: FA1804001782090
Complainant is Laboratoires M&L (“Complainant”), represented by Arthur Fouré of Brandstock Domains GmbH, Germany. Respondent is Nitish Ghuse (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <melvita.us>, registered with 1API GmbH.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2018; the Forum received payment on April 17, 2018.
On April 18, 2018, 1API GmbH confirmed by e-mail to the Forum that the <melvita.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 April 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@melvita.us. Also on April 19, 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 May 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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, Laboratories M&L, is a natural and organic ingredient-based cosmetics and well-being products retailer and uses the MELVITA mark in connection with its products and services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,729,665, registered Jan. 14, 2014). Respondent’s <melvita.us> domain name is identical to Complainant’s mark as Respondent incorporates the mark in its entirety and merely adds the “.us” country code top-level domain (“ccTLD”) to the mark.
Respondent has no rights or legitimate interests in the <melvita.us> domain name. Respondent is not permitted or licensed to use Complainant’s MELVITA mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent attempts to sell the <melvita.us> domain name to Complainant.
Respondent has registered and is using the <melvita.us> domain name in bad faith. Respondent registration is part of a pattern of bad faith registration. Moreover, Respondent offered to sell the disputed domain name to Complainant the day it registered the name. Additionally, any possible future use of the domain name would infringe on Complainant’s rights in bad faith. Finally, Respondent registered the <melvita.us> with actual knowledge and/or constructive notice of Complainant’s rights in the MELVITA mark prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <melvita.us> domain name.
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 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.
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.”).
Complainant claims rights in the MELVITA mark based upon its registration with the USPTO (e.g., Reg. No. 4,729,665, registered Jan. 14, 2014). Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has sufficiently demonstrated its rights in the MELVITA mark per Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <melvita.us> domain name is identical to the MELVITA mark as Respondent merely adds the “.us” ccTLD to the mark. The addition of a ccTLD to a mark is insufficient to distinguish the resultant domain name from the mark per Policy ¶ 4(a)(i). See Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel finds that <melvita.us> is identical to the MELVITA mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <melvita.us> as Respondent is not authorized or licensed to use Complainant’s MELVITA mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Nitish Ghuse.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii). 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). The Panel finds under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the disputed domain name.
Additionally, Complainant argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by Respondent’s failure to use the name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent offers to sell the <melvita.us> domain name to Complainant. Offering to sell a disputed domain name to a complainant or the general public may prove respondent’s failure to use the name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)). Here, Complainant contends that on the day of the registration of the disputed domain name, Complainant received an offer to sell the domain name from the owner by e-mail. In addition, Respondent has also placed the domain for sale on the well-known <sedo.com> platform at a significant price. The Panel finds that Respondent engages in conduct that is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(ii) & (iv).
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 (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)). Based on Complainant’s uncontested allegations and evidence, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered or uses the <melvita.us> domain name in bad faith because Respondent attempted to sell the disputed domain name to Complainant. Offering to sell a disputed domain name to a complainant for excess of out-of-pocket costs is evidence of bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Here, Complainant contends that Respondent offered the disputed domain name for sale at $ 2,473, well above the usual registration price of a .us domain name. The Panel finds that Respondent’s conduct constitutes bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registering domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel finds Complainant has not provided evidence that establishes that Respondent has engaged in a pattern of registrations of domain names in bad faith.
Complainant asserts that in light of the fame and notoriety of Complainant’s MELVITA mark and Respondent’s use of the disputed domain name, Respondent had actual knowledge of Complainant’s mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel finds Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <melvita.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 18, 2018
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