Nature's Path Foods Inc. v. Natures Path,
Inc.
Claim
Number: FA0402000237452
Complainant is Nature's Path Foods Inc. (“Complainant”),
represented by Paul Smith, of Paul Smith Intellectual Property Law, 1508 West Broadway, Suite 330, Vancouver, BC, V6J 1W8, Canada. Respondent is Natures Path, Inc. (“Respondent”),
5621 Reiserstown Rd., North Port, FL 34287.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <naturespathinc.com>, registered with Network
Solutions, Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 16, 2004; the Forum received a hard copy of the
Complaint on February 17, 2004.
On
February 18, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <naturespathinc.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
February 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 15, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@naturespathinc.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 19, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
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 makes the following assertions:
1. Respondent’s <naturespathinc.com>
domain name is confusingly similar to Complainant’s NATURE’S PATH mark.
2. Respondent does not have any rights or
legitimate interests in the <naturespathinc.com> domain name.
3. Respondent registered and used the <naturespathinc.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
Canadian company that manufactures and sells various organic and natural food
products in the United States and around the world. Complainant has used the NATURE’S PATH mark in the United States
since at least as early as 1984. Complainant holds Registration No. 2,069,075,
registered on June 10, 1997 on the Principal Register of the United States
Patent and Trademark Office (“USPTO”) for the NATURE’S PATH mark. At its website located at the
<naturespath.com> domain name, Complainant uses its mark to promote good
health, as well as its products which include ingestible nutritional products
and health publications. Complainant
has not authorized Respondent to used the NATURE’S PATH mark in its domain
name.
Previously,
Respondent registered the <naturespath.com> domain name, which wholly
incorporated Complainant’s mark. After
negotiations and the filing of a Complaint in the United States Federal Court,
Respondent agreed to relinquish control of the <naturespath.com> domain
name to Complainant.
Unbeknownst to
Complainant, Respondent registered the <naturespathinc.com> domain
name on July 21, 1998. Respondent is
using the domain name to sell various ingestible nutritional products and
health publications. Respondent’s
website also features numerous links to other websites.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the NATURE’S PATH mark through registration of the mark
with the USPTO. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of Complainant to register all possible domain names that surround its
substantive mark does not hinder Complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”).
Respondent’s <naturespathinc.com>
domain name wholly incorporates Complainant’s NATURE’S PATH mark, except
Respondent removed the apostrophe and eliminated the space between the two
words that comprise Complainant’s mark.
However, the removal of apostrophes and spaces from a registered mark is
not a distinguishing difference when determining the similarity between a
domain name and a mark under the Policy.
Respondent also added the suffix “inc” and the generic top-level domain
(“gTLD”) “.com” to Complainant’s mark.
The addition of the suffix “inc” does not distinguish Respondent’s
domain name from Complainant’s mark.
Furthermore, the addition of a gTLD such as “.com” is insignificant in
the Panel’s determination since every domain name must include a top-level
domain name. Thus, the Panel finds that
Respondent’s minor alterations to Complainant’s mark are not sufficient to
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Chi-Chi’s Inc. v. Rest. Commentary,
D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to
be identical to Complainant’s CHI-CHI’S mark, despite the omission of the
apostrophe and hyphen from the mark); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)
(finding that “Respondent does not by adding the common descriptive or generic
terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different
marks in which it has rights or legitimate interests, nor does it alter the
underlying PG&E mark held by Complainant”).
Accordingly, the
Panel finds the Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding.
Thus, the Panel chooses to view the Complaint in the light most
favorable to Complainant and accepts as true all assertions made by
Complainant. Accordingly, the Panel
finds that Respondent lacks rights and legitimate interests in the <naturespathinc.com>
domain name. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain
circumstances the mere assertion by Complainant that Respondent has no rights
or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint”); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
In its WHOIS
contact information, Respondent lists its name and its administrative contact
as “Natures Path, Inc.” However, since
Respondent failed to respond to the Complaint, there has not been any
affirmative evidence provided to the Panel showing that Respondent was commonly
known by the disputed domain name prior to its registration of the domain
name. Moreover, Complainant’s first use
of the NATURE’S PATH mark in commerce and its registration of the mark predates
Respondent’s registration of the domain name.
Furthermore, Respondent has not been authorized by Complainant to use
the NATURE’S PATH mark in its domain name.
Thus, the Panel concludes that Respondent has not been commonly known by
the domain name pursuant to Policy ¶ 4(b)(ii).
See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail"); see also Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti
Yoga Works, FA 155461 (Nat. Arb. Forum June
17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Respondent’s use
of the infringing <naturespathinc.com> domain name to sell
nutritional products and health publications, which are similar to products
that Complainant offers at its website, is not 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). Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain name under Policy ¶ 4(a)(ii). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that because Respondent is using the infringing domain name to sell
prescription drugs it can be inferred that Respondent is opportunistically
using Complainant’s mark in order to attract Internet users to its website); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat.
Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide
offering of goods).
Accordingly, the
Panel finds the Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using Complainant’s mark in a domain name to attract
Internet users to its competing website.
Since both Respondent and Complainant operate in the same line of business
and market their similar products via the Internet, Respondent knew or should have known of
the Complainant’s business under its registered mark. Based on the foregoing, the
Panel presumes that Respondent registered the domain name primarily for the
purpose of disrupting Complainant’s business.
Thus, the Panel finds that Respondent registered the domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business)
It is likely
that Internet users will be confused by the products offered for sale at
Respondent’s website since the products are similar to products offered by
Complainant, and the domain name hosting Respondent’s website wholly
incorporates Complainant’s mark. Thus,
the Panel finds that Respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc.,
D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to
attract customers to its website, <efitnesswholesale.com>, and created
confusion by offering similar products for sale as Complainant); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site).
Furthermore, the
Panel in this proceeding may consider criteria beyond those listed in Policy ¶
4(b) in its bad faith use and registration analysis. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain
circumstances, without limitation, that shall be evidence of registration and
use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (“[T]he Policy expressly recognizes that other circumstances can be
evidence that a domain name was registered and is being used in bad faith”).
Panels have
consistently held that registration of a mark with knowledge of another’s
rights in the mark is evidence of bad faith registration under Policy ¶
4(a)(iii). In this case, it can be
inferred that Respondent had actual knowledge of Complainant’s rights in the
NATURE’S PATH mark when it registered the <naturespathinc.com> domain
name since Respondent had previously agreed to relinquish the infringing
<naturespath.com> domain name to Complainant. In addition, Complainant’s registration of the mark on the
Principal Register of the USPTO confers constructive notice on Respondent. Thus, the Panel finds that Respondent had
knowledge of Complainant’s rights in the mark and Respondent acted in bad faith
pursuant to Policy ¶ 4(a)(iii) when it registered the domain name. See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Accordingly, the
Panel finds the Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <naturespathinc.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 2, 2004
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