Klein-Becker IP Holdings, LLC v.
Vitamins-etc.com
Claim Number: FA0603000652352
PARTIES
Complainant is Klein-Becker IP Holdings, LLC (“Complainant”), represented by Joel B. Rothman, of Rutherford Mulhall,
P.A., 2600 North Military Trail, Fourth Floor, Boca Raton, FL 33431-6348. Respondent is Vitamins-etc.com (“Respondent”), 7592 Amanda Circle, Washington, MI
48094.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <strivectin.us>,
registered with Go Daddy Software.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 28, 2006; the Forum received a hard
copy of the Complaint on March 1, 2006.
On March 1, 2006, Go Daddy Software confirmed by e-mail to the Forum
that the domain name <strivectin.us>
is registered with Go Daddy Software and that the Respondent is the current
registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On March 3, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 23, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On March 28, 2006, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Sandra J.
Franklin 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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. Respondent’s <strivectin.us> domain name is confusingly similar to Complainant’s STRIVECTIN-SD mark.
2.
Respondent does not have any rights or legitimate
interests in the <strivectin.us>
domain name.
3.
Respondent registered and used the <strivectin.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Klein-Becker IP Holdings, LLC, is the licensor of the STRIVECTIN-SD and STRIVECTIN marks. Complainant’s licensee, Klein-Becker usa, LLC has continuously and extensively used the marks in connection with the manufacture, distribution and sale of cosmetic products since at least August 16, 2002. The Panel imputes licensee’s use of the mark to Complainant for purposes of this decision. Complainant sells products bearing the marks in upscale department stores such as Macy’s, Bloomingdale’s and Saks Fifth Avenue, as well as online at various websites pursuant to sales agreements. Complainant prominently displays the STRIVECTIN-SD and STRIVECTIN marks on its cosmetic products and has spent millions of dollars advertising the mark in connection with its products worldwide. As a result, products sold under the STRIVECTIN-SD and STRIVECTIN marks have acquired an excellent reputation in the cosmetic industry.
Complainant has registered the STRIVECTIN-SD mark with the United States Patent and Trademark Office (Reg. No. 2,760,414 issued September 2, 2003, filed June 27, 2002) and has filed a federal trademark application for the STRIVECTIN mark (Serial No. 78/479,381 filed September 7, 2004)
Respondent registered the <strivectin.us>
domain name on February 28, 2003.
Respondent is using the disputed domain name to redirect Internet users
to its website at the <evitamins.com> domain name, where it sells
cosmetic products, including those of Complainant, at discounted prices. The “About Us” on Respondent’s website link
resolves to a page describing Respondent as an independent distributor that
works with over 300 different vendors to offer Internet users a “wide selection
of products all priced at 20% to 70% off the standard retail price.” Complainant maintains that Respondent is a
licensed distributor of its products, but that it is using the trademark in the
domain name without the prior written permission of Complainant.
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 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 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.
Complainant has established rights in the STRIVECTIN-SD mark through registration of the mark with the USPTO. While Respondent’s registration of the <strivectin.us> domain name on February 28, 2003 predates the registration of the mark on September 2, 2003, Panels have held that a complainant’s rights in a mark date back to the filing date. Therefore, the relevant date for showing Complainant’s right to the STRIVECTIN-SD mark is June 27, 2002. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Respondent
has registered a domain name confusingly similar to Complainant’s STRIVECTIN-SD
mark because the <strivectin.us> domain name incorporates the
predominant portion of Complainant’s entire mark, merely omits the suffix “SD,”
and adds the country code top-level domain “.us.” In Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000), the
panel found that even though the respondent’s <asprey.com> domain name
omitted terms from the complainant’s ASPREY & GARRARD and MISS ASPREY
marks, the domain name was still confusingly similar to the marks because it
included the predominant portion of the marks.
Similarly, the mere omission of “SD” in the <strivectin.us>
domain name does not negate a finding of confusing similarity pursuant to
Policy ¶ 4(a)(i). See Wellness Int’l
Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001)
(finding that the domain name <wellness-international.com> is confusingly
similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also
Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding
that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to the complainant’s TROPAR mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <strivectin.us> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent’s failure to answer the
Complaint raises a presumption that Respondent has no rights or legitimate
interests in the <strivectin.us> domain name. See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is
presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Eroski, So. Coop. v.
Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be
inferred that by defaulting Respondent showed nothing else but an absolute lack
of interest on the domain name.”). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Because Complainant has established
rights to the STRIVECTIN-SD mark and Respondent has not come forward with any
evidence showing it is the owner or beneficiary of a mark identical to the <strivectin.us>
domain name, Complainant has satisfied Policy ¶ 4(a)(i). See Meow Media Inc. v. John
Basil a/k/a American Software Factory Corp., Inc., FA 113280 (Nat. Arb. Forum Aug. 20, 2002)
(finding that there was no evidence that Respondent was the owner or
beneficiary of a mark that is identical to the <persiankitty.com> domain
name); see also Pepsico, Inc. v. Becky a/k/a Joe Cutroni, FA 117014 (Nat. Arb. Forum Sept. 3, 2002)
(holding that because 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).
Respondent
registered the domain name under the name “Vitamins-etc.com,” and there is no
other evidence in the record that Respondent is commonly known the by
<strivectin.us> domain name. Consequently, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent’s <strivectin.us>
domain name, which is confusingly similar to Complainant’s STRIVECTIN-SD mark,
resolves to a website selling the cosmetic products of Complainant and its
competitors. Even though Complainant
has licensed Respondent to sell its products, Complainant did not give
Respondent permission to register a domain name confusingly similar to its mark
or to sell competing products under the mark.
In Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2001), the panel found that the respondent, an authorized distributor of the
complainant, had no rights or legitimate interests in several domain names
containing the complainant’s NIKON mark because the respondent was using the
disputed domain names to sell complainant’s products alongside those of its
competitors. Here, Respondent is also
an authorized distributor of Complainant’s products under the STRIVECTIN-SD
mark, and is also diverting Internet users seeking Complainant’s cosmetic
products to a website displaying the products of Complainant’s
competitors. Therefore, Respondent’s use
of the disputed domain name does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial fair
use pursuant to Policy ¶ 4(c)(iv). See
Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although
the respondent was a distributor of the complainant’s product, the respondent
did not have permission to use the complainant’s mark in its registered domain
name and, therefore, was not using the domain name as a bona fide
offering of goods or services or a legitimate noncommercial or fair use)
The Panel finds that Policy ¶ 4(a)(ii) has
been satisfied.
Despite having permission from
Complainant to sell its products, Respondent did not have the authority to
register a domain name confusingly similar to Complainant’s mark without prior
written permission of Complainant.
Therefore, Respondent has registered or used the <strivectin.us>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (finding that the respondent’s
use of the KIOTI mark within a domain name without express authorization from
the complainant violated the terms of the respondent’s licensing agreement and
evidenced bad faith use of the domain name); see also Heel Quik! Inc. v. Goldman, FA
92527 (Nat. Arb. Forum Mar. 1, 2000) (holding that the registration of a domain
name in violation of a license agreement is evidence that the domain name was
registered and used in bad faith).
Respondent is using the <strivectin.us>
domain name, which is confusingly similar to Complainant’s STRIVECTIN-SD mark,
to operate a commercial website selling the cosmetic products of Complainant
and its competitors. While Respondent has Complainant’s permission to sell
Complainant’s cosmetic products, it does not have permission to sell competing
products on a website featuring Complainant’s STRIVECTIN-SD mark. Therefore, Respondent is taking advantage of
the confusingly similarity between the <strivectin.us> domain name
and Complainant’s STRIVECTIN-SD mark in order to profit from the goodwill
associated with the mark. Respondent’s
diversion of Internet users seeking Complainant’s products to competing
cosmetic providers for Respondent’s own commercial gain is indicative of bad
faith registration or use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); cf. Whirlpool
Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that
the respondent’s use of the <whirlpoolparts.com> domain name to operate a
website selling the complainant’s products constituted bad faith registration
and use under the UDRP, despite the fact that the respondent operated a
storefront business for 27 years selling the complainant’s parts and
appliances).
The Panel finds that Policy ¶ 4(a)(iii) has
been satisfied.
DECISION
Complainant having established all three
elements required under the usTLD Policy, the Panel concludes that relief shall
be GRANTED.
Accordingly, it is Ordered that the <strivectin.us>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 5, 2006
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