U.S. Nutraceuticals, LLC v. Telepathy,
Inc. c/o Development Services
Claim Number: FA0411000365884
Complainant
is U.S. Nutraceuticals, LLC (“Complainant”),
represented by David L. Sigalow, 255 South Orange Avenue, Suite 1401,
Orlando, FL 32801. Respondent is Telepathy, Inc. c/o Development Services (“Respondent”),
represented by John Berryhill, of Dann, Dorfman, Herrell, and Skillman P.C.,1601 Market Street, Suite 2400, Philadelphia, PA, 19103 USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <naturedirect.com>,
registered with Go Daddy Software, Inc.
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.
Anne
M. Wallace, Q.C., Alan Limbury, and Paul M. DeCicco, Esq. as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
16, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 16, 2004.
On
November 16, 2004, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <naturedirect.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
November 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 20, 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@naturedirect.com by
e-mail.
A
timely Response was received and determined to be complete on December 20, 2004.
On January 3, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Anne M. Wallace, Q.C. Alan Limbury, and Paul M. DeCicco as Panelists.
Preliminary Matters
The Response exceeds the ten-page limit set forth
pursuant to ICANN Rule 5(b)(i).
Respondent’s Response is eleven pages long. The Panel may either choose to accept or decline to accept
Respondent’s Response in deciding this case.
In the instant case the Panel finds that ruling the Response
inadmissible, under the circumstances would be not be consistent with the
interests of justice and thus accepts the Response. See Strum
v. Nordic Net Exch. AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002).
Further,
Complainant’s Additional Submission was submitted without the fee required by
Supplemental Rule 7(b)(ii). It is
likewise within the Panel’s discretion whether to consider Complainant’s
Additional Submission. See Am. Airlines Inc. v. WebWide Internet
Communication GmbH, FA 112518 (Nat. Arb. Forum June 13, 2002). Both parties having fully briefed the matter
in their opening papers, the Panel chooses to not consider the
Complainant’s additional submission and the Respondent’s response thereto.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends as follows:
Complainant,
U.S. Nutraceuticals, LLC, has used the NATURE DIRECT trademark in connection
with vitamins and nutritional supplements since at least as early as January
2001. On May 1, 2001, Complainant filed
an application to register the NATURE DIRECT trademark with the U.S. Patent and
Trademark Office. On July 15, 2003,
Trademark Application Serial No. 78/061365 was granted registration by the
USPTO. The registration, U.S. Trademark
Reg. No. 2,738,940, is directed to the NATURE DIRECT mark as applied to
“nutritional supplements” in International Class 5. The registration also attests to use of the subject mark by
Complainant in connection with the subject goods since at least as early as
January 2003. This registration is
currently active; as a result, Complainant’s rights in the mark within the
United States are presumed valid.
Complainant’s
products are prominently featured and offered for sale through
Complainant’s own website (<usnutra.com>) and through the websites
operated by its clients, i.e. <naturedirect.co.nz> and
<beautydirect.co.nz>. Complainant
also advertises its products on other websites in Australia, Canada, and the
United Kingdom linked to this domain name as well. Complainant, through its clients, spends approximately $3,500 per
year in promoting its NATURE DIRECT vitamins and nutritional supplement
products. As a result of such promotion
and due to the high quality of Complainant’s NATURE DIRECT products,
Complainant has achieved a high degree of customer recognition in the
marketplace, both on the Internet and elsewhere, for its NATURE DIRECT
mark.
The
<naturedirect.com> domain name is identical to the word component
of Complainant’s registered NATURE DIRECT trademark. Those who access the <naturedirect.com> domain name
searching for the products of Complainant are instead directed to a page which
will, in turn, direct them to other products and services and away from the
vitamins and nutritional supplements they are seeking. Thus, Complainant’s potential customers will
be directed to these other service providers.
Respondent
should be considered to have no rights or legitimate interests in the domain
name in view of the following: Respondent is not making a legitimate
non-commercial or fair use of the domain name because Respondent is using the
domain name with the intent to gain commercially. Complainant has, for over three (3) years, become well known
within the industry as the provider of vitamins and nutritional supplements and
has continuously offered such products in connection with the NATURE DIRECT
trademark within the United States from 2001 to the present. Such activities commenced well before the
registration of the domain name by the Respondent in November 2001. Complainant
has invested considerable sums of money and effort in establishing goodwill
associated with its NATURE DIRECT mark, and spends approximately $3,500 per
year in promoting the NATURE DIRECT products.
This goodwill is being eroded by Respondent’s ownership of the domain
name and in the purposeful use of the domain name to direct commercial traffic
away from Complainant. This will dilute
the goodwill which Complainant has developed over the past three (3) years in
its use of the NATURE DIRECT mark in the minds of the consuming public and will
interfere with and infringe Complainant’s statutory and common law rights.
The
domain name should be considered as having been registered and used in bad
faith in view of the following: Complainant has been using the NATURE DIRECT
mark since at least as early as January 2001 in connection with its vitamins
and nutritional supplements.
Complainant’s application to register the subject mark with the U.S.
Patent and Trademark Office was filed with the USPTO on May 1, 2001. This mark was then placed in a searchable
database at the USPTO. Thus, the
existence of Complainant’s application, and its assertion of rights for the <naturedirect.com>
domain name, would have been readily ascertainable by Respondent if it had
performed a trademark search within the United States prior to its registration
of the domain name. Moreover, as
Complainant’s registration itself was issued within mere days following the
registration of the domain name by Respondent, Complainant’s trademark
registration was ascertainable prior to the use of the domain name to promote
the products of Complainant’s competitors.
If Respondent had performed a trademark search within the United States
prior to its registration of the domain name, it would have uncovered
Complainant’s trademark application; moreover, it would have known at that time
that Complainant had in fact attested to use of the subject mark in connection
with nutritional supplements.
Therefore, by registering the domain name at that time, Respondent knew
or should have known of the existence of the United States trademark
registration for the NATURE DIRECT mark.
In
September 2004, Complainant placed several telephone calls to the Respondent in
an attempt to negotiate the acquisition of the domain name. In addition, on July 15, 2004, Complainant
dispatched a letter to Respondent.
Complainant asserted its trademark rights in the <naturedirect.com>
domain name and requested that Respondent cease using it. Complainant offered to reimburse Respondent
in the sum of U.S. $1,000 for Respondent’s costs and expenses in registering
the domain name. Respondent replied
that it was using the name to promote goods and services related to nature and
the environment. However, a subsequent
check of the website on October 25, 2004, indicated that this use has never
been fulfilled.
At
some point the site contained a link that states it is available for
transfer. Respondent either wished to
exploit its sale of the website, or obstruct Complainant’s legitimate use of
the domain name.
B. Respondent
Respondent
alleges as follows:
The
alleged mark is not an inherently distinctive, fanciful mark, but consists of
two common words. The existence of this
US trademark registration does not confer an exclusive right to these two words
for any and all uses. The alleged mark
is not famous. Complainant has presented no evidence of common law rights prior
to registration, and Complainant’s registration does not allege use prior to
January 2003. The domain name was
registered in November 2001 - more than a year prior to Complainant’s
allegation of first use.
Complainant
has presented evidence of present rights in the “NATURE DIRECT” mark as a brand
of nutritional supplements.
Complainant’s registration is based on an intent-to use application that
was amended to an allegation of first use in January 2003.
Respondent
has been using the domain name, and had been using the domain name prior to any
contact with Complainant, to provide a shared advertising directory of goods
and services relevant to the term “nature” - i.e. as a set of “direct” links to
“nature”-relevant material.
The
selection and placement of links on such shared advertising pages is determined
by a bidding arrangement between the advertising consolidator and the
advertiser. The links are thus dynamic,
and depend on the current bids submitted by advertisers. Respondent has utilized several different
keyword-advertising programs in order to maximize its monetization of the
domain name, including one program, which appeared to key on the substring
“EDI” within “naturedirect” to provide links relevant to electronic data
interchange systems. However, at no
time has Respondent infringed Complainant’s alleged trademark.
It
is not established that Respondent knew of Complainant’s trademark at the time
it registered the disputed domain name and there is no evidence that Respondent
registered the disputed domain name with the intention to profit from
Complainant’s trademark.
Respondent
is not infringing upon Complainant’s alleged trademark, but is and has been
using the words “nature” and “direct” in accordance with their primary and
ordinary meaning, to provide paid advertising links to topics of relevant
interest. Respondent has every right to
utilize these words in any manner that does not violate Complainant’s alleged
rights, even if such rights had been acquired earlier.
The
domain name at issue here was one of many domain names that had been abandoned
by prior registrants and expired shortly before it was registered by Respondent. Respondent registered the domain name
because it contained the desirable words “nature” and “direct”. Respondent has registered other domain names
such as <outdoordirect.com>, <sportdirect.com>,
<weatherdirect.com> and <stardirect.com>.
Complainant
willfully and deliberately misrepresents the facts to this Panel. Specifically, Complainant states at page 6,
“by registering the domain name, at that time Respondent knew or should have
known of the existence of the United States Trademark Registration for the mark
NATURE DIRECT.” At the time the domain name was registered, there was no such
United States Trademark Registration, and Complainant is fully aware of that
fact. Complainant’s deliberately false statement in its certified Complaint is
reason enough to deny the requested relief.
In
November 2001, there was no trademark right to infringe or abuse.
Complainant
is correct that a template utilized by Respondent at some point in the past had
indeed placed a link indicating that the domain “may”
be available for sale along with the paid advertising links. That notation was an artifact of the
template utilized by Respondent. It is
clear that in its registration and use of the domain name for several years,
the Respondent has not sought to sell the domain name to any party, and
upon being approached to potentially sell the domain name, Respondent politely
indicated the domain name was not for sale.
Respondent’s registration and use of the <naturedirect.com> domain
name has been consistent with its use of the other generic “direct” formative
domain names, and has not been motivated by an intent arising from
Complainant’s trademark, or from any desire to sell these “direct” formative
domain names for any reason relating to the trademarks of any party.
Complainant
has failed to show that the domain name was registered and used in bad
faith. By Complainant’s own admission,
the domain name has not been used for infringing purposes, and Complainant has
made deliberate false statements before this Panel in order to obscure the
actual facts and chronology of the matter.
At the time the domain name was registered, there was nothing Respondent
knew or should have known that would have demonstrated that Respondent could not
register and use the domain name for the purpose which Respondent has been
using the domain name. Respondent’s
good faith intent in such registration and use is reflected in the evidence of
record showing use of the domain name in connection with environmental and
natural topics of advertisement, and in Respondent’s voluntary offer to provide
a link to Complainant in order to address Complainant’s concerns.
C.
Additional Submissions
For
the reasons stated above, additional submissions were not considered.
FINDINGS
Complainant filed an application to
register the NATURE DIRECT trademark with the U.S. Patent and Trademark Office
on May 15, 2001. On July 15, 2003,
Trademark Application Serial No. 78/061365 was granted registration by the
USPTO. Complainant has trademark rights
in the NATURE DIRECT mark for nutritional supplements. The mark is not a “famous mark.” The mark was first used in commerce in May
2003.
Respondent registered the <naturedirect.com>
domain name in November 2001. At the
time, it has not been shown that Respondent was aware of Complainant or
Complainant’s pending trademark application.
The domain name is used in connection with a website referring Internet
users to advertising based on the keywords “nature” and “direct.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 DIRECT mark. The mark was registered with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,738,940 issued July 15, 2003, filed May
1, 2001). United States trademark law
gives registered marks a presumption that they are inherently distinctive and
have acquired secondary meaning. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002). The United States trademark
registration thus confers a presumptive exclusive right to use the NATURE
DIRECT mark in connection with a brand of nutritional supplements.
Respondent’s
<naturedirect.com> domain name is identical to Complainant’s
NATURE DIRECT mark, but for the addition of the generic top-level domain “.com”
and the omission of the space between the words “nature” and “direct” in
Complainant’s mark. Such slight
differences do not negate the fact that Respondent’s domain name is identical
to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000).
Therefore,
the domain name is identical to Complainant’s NATURE DIRECT trademark for the
purposes of paragraph 4(a)(1) of the Policy.
Respondent registered the domain name in
November 2001. While this date precedes
the filing of Complainant’s application for trademark registration, the
registration record shows both the “first use” and the “first use in commerce”
by the Complainant to be January 1, 2003. www.uspto.gov
(January 12, 2005). Thus at the time of
filing, Complainant did not have trademark rights in Complainant’s mark. Respondent’s registration of the domain name
thus pre-dates Complainant’s establishment of rights in the mark. Therefore, Respondent had rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii) at the
time of registration. See Warm
Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002); see also Parachute, Inc. v. Jones, FA 94947 (Nat.
Arb. Forum July 12, 2000).
Even
if, as Complainant urges, Complainant’s trademark rights relate back to date of
the application filing, such rights would not exclude the universe of uses for
the domain name which are non-infringing.
In the instant case, Respondent appears to be using the words “nature”
and “direct” consistent with the ordinary meaning of the two words. The Respondent had the right to utilize
these words in any manner that does not violate Complainant’s rights, even if such
rights had been acquired earlier.
Respondent’s business model is to sell advertising linking nature
related topics. Such use does not tread
on Complainant’s trademark rights relating to the classes of goods covered by
the NATURE DIRECT registration.
Respondent was unaware of Complainant and
Complainant’s mark at the time the domain name was registered. Respondent uses the domain name in a manner
unrelated to, and not competing with, Complainant. Respondent appears to have believed that it had a legitimate
right to register the domain name.
Moreover such a belief is reasonable under the circumstances. See MatchMaker Int'l Dev. Corp. v. Kaiser
Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin,
dissenting); see also The Way International, Inc. v. Diamond Peters,
D2003-0264 (WIPO May
29, 2003). Without knowledge of
Complainant or its claim of right in the mark, it is difficult to see how
Respondent could have the specific intent required for it to act in bad faith
against the rights of Complainant.
Since Complainant applied for trademark
registration prior to the domain name’s registration, Respondent might be said
to have had “constructive knowledge” of
the Complainant’s application. See
Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000). “Constructive knowledge” of Complainant’s
trademark application might support a finding of bad faith registration. See Digi Int’l v. DDI Sys. FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000). But as mentioned above the
Respondent’s intended use of the domain name doesn’t infringe Complainant’s
mark. Importantly, there is no evidence
in the record showing that the Respondent has made it a practice of registering
pending trademark registrations.
Complainant urges that Respondent’s offer
to sell the domain name indicates bad faith pursuant to the Policy. However, Complainant initiated the offer to
purchase the disputed domain name, therefore Respondent did not register or use
the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Coca-Cola Co. v. Svensson, FA
103933 (Nat. Arb. Forum Feb. 27, 2002); see also Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000).
Given the foregoing, Complainant has
failed to show that Respondent registered and used the domain name in bad
faith.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Presiding Panelist
Anne M. Wallace & Alan Limbury,
Panelists
Dated: January 17, 2005
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