Nu Skin Enterprises, Inc. and NSE Products, Inc. v. GLTEC Corporation
Claim Number: FA1212001476883
Complainant is Nu Skin Enterprises, Inc. and NSE Products, Inc. (“Complainant”), represented by Janet Shih Hajek of Holland & Hart LLP, Colorado, USA. Respondent is GLTEC Corporation (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nuskinbg.net>, registered with OnlineNIC, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2012; the National Arbitration Forum received payment on December 20, 2012.
On December 26, 2012, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <nuskinbg.net> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 December 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 2013 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@nuskinbg.net. Also on December 27, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i. Respondent is not commonly known by the domain name where the WHOIS information identifies “GLTEC Corporation” as the registrant, not an entity identified as “NU SKIN” or “NU SKIN BG.” There is no relationship between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s mark.
ii. Respondent is clearly trading on the business reputation of Complainant by using Complainant’s NU SKIN mark and company information.
iii. Respondent is using the disputed domain name for a website in Vietnamese that presents itself as “Big Group Vietnam,” which allegedly promotes the NU SKIN products and prominently features Complainant’s NU SKIN trademarks throughout the website.
i. Respondent is disrupting Complainant’s business by diverting customers away from Complainant to its impostor website and also to link to third-party consumer sites unaffiliated with Complainant.
ii. Respondent is using the disputed domain name to divert Internet users to a commercial website that impersonates Complainant and Complainant’s authorized distributor in order to create confusion with Complainant’s business.
iii. Respondent is using the disputed domain name to impersonate Complainant.
iv. Respondent clearly had notice of Complainant’s rights in the NU SKIN mark due to Complainant’s prior and incontestable trademark registrations, worldwide use, and favorable media coverage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There are two Complainants in this matter: Nu Skin Enterprises, Inc. and NSE Products, Inc. Nu Skin Enterprises, Inc. is the parent company of wholly-owned subsidiary NSE Products, Inc.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the evidence in the complaint is sufficient to establish a sufficient nexus or link between Complainants and will therefore treat them as a single entity in this proceeding.
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(e), 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 (Nat. Arb. 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 asserts that it is an international innovator of anti-aging and skin care products. Complainant contends that it operates in 53 markets worldwide and has more than 825,000 independent distributors. Complainant shows that it owns trademark registrations for the NU SKIN mark with the USPTO (e.g., Reg. No. 1,542,160, registered June 6, 1989) and the NOIP for the NU SKIN mark (e.g., Reg. No. 18,304, filed March 1, 1995). The Panel notes that Respondent appears to reside in Vietnam. Therefore, the Panel concludes that Complainant’s registrations of the NU SKIN mark with the USPTO and the NOIP are sufficient to establish its rights in the marks under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant asserts that Respondent’s <nuskinbg.net> domain name is confusingly similar to Complainant’s NU SKIN mark because it fully incorporates Complainant’s mark and merely adds the letters “BG,” which is a likely abbreviation for Complainant’s authorized distributor, Bryson International Group (aka Big Group). The Panel therefore finds that the addition of these letters does not distinguish Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). Accordingly, the Panel concludes that Respondent’s <nuskinbg.net> domain name is confusingly similar to Complainant’s NU SKIN mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the domain name since the WHOIS information identifies “GLTEC Corporation” as the registrant, not an entity identified as “NU SKIN” or “NU SKIN BG.” Complainant asserts that Respondent has no trademark applications or registrations known to Complainant for “NU SKIN.” Complainant also contends that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the NU SKIN mark. The Panel notes that Respondent has not submitted any evidence showing that it is commonly known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further contends that Respondent is using the disputed domain name for a website in Vietnamese that presents itself as “Big Group Vietnam,” which allegedly promotes the NU SKIN products and prominently features Complainant’s NU SKIN trademarks throughout the website. Complainant asserts that the infringing website holds itself out to viewers as if it is Complainant or a legitimate authorized distributor of Complainant. Complainant states that the infringing website also copies, without permission, photographs and images from Complainant’s website at <nuskin.com>, including the photograph of five individuals sitting poolside looking over the ocean. Additionally, Complainant notes that the resolving website’s “About Us” page includes a photograph and description of the founders of Complainant’s company and speaks as it if it is Complainant. Complainant asserts that the infringing website in every way attempts to impersonate Complainant, its founders and its authorized distributor, Big Group. Complainant contends that Respondent is clearly trading on the business reputation of Complainant by using Complainant’s NU SKIN mark and company information. Complainant asserts that the only explanation for Respondent’s use of the NU SKIN mark as part of a domain name is clearly to trade on the goodwill of Complainant and to appear as if Respondent is Complainant or an authorized distributor of Complainant. The Panel agrees, and finds that Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent clearly had notice of Complainant’s rights in the NU SKIN mark due to Complainant’s prior and incontestable trademark registrations, worldwide use, and favorable media coverage. The Panel determines that Respondent had actual knowledge of Complainant's mark and rights due to Complainant’s worldwide use of the NU SKIN mark and Respondent’s aforementioned impersonation of Complainant, and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent is disrupting Complainant’s business by diverting customers away from Complainant to its impostor website and also linking to third party consumer sites unaffiliated with Complainant. Complainant asserts that Respondent is utilizing a hotline telephone number that is invalid. Complainant further contends that actions are clearly being taken to disrupt Complainant’s business and to harm the reputation and goodwill that Complainant has developed in its NU SKIN mark. The Panel notes that Respondent’s disputed domain name resolves to a website that presents itself as if it were Complainant or Complainant’s authorized distributor and appears to offer skin products that directly compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name to offer competing products disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel found this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent is using the disputed domain name to divert Internet users to a commercial website that impersonates Complainant and Complainant’s authorized distributor in order to create confusion with Complainant’s business. Complainant contends that Respondent is attempting to impersonate Complainant through its use of the NU SKIN mark and the letters “BG” in its disputed domain name, which is a likely abbreviation for Complainant’s authorized distributor, Bryson International Group (aka Big Group). The Panel notes that Respondent’s disputed domain name resolves to a website that appears to offer skin products that directly compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name to intentionally divert Internet users for Respondent’s own commercial benefit shows bad faith use and registration 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 pursuant to Policy ¶ 4(b)(iv)).
Complainant asserts that Respondent is using the disputed domain name to impersonate Complainant. Complainant contends that Respondent’s resolving website, which is in Vietnamese, presents itself as “Big Group Vietnam,” which allegedly promotes the NU SKIN products and prominently features Complainant’s NU SKIN trademarks throughout the website. Complainant asserts that the infringing website holds itself out to viewers as if it is Complainant or a legitimate authorized distributor of Complainant. Complainant states that the infringing website also copies, without permission, photographs and images from Complainant’s website at <nuskin.com>, including the photograph of five individuals sitting poolside looking over the ocean. Additionally, Complainant notes that the resolving website’s “About Us” page lists includes a photograph and description of the founders of Complainant’s company and speaks as it if it is Complainant. Complainant argues that the infringing website in every way attempts to impersonate Complainant, its founders and its authorized distributor, Big Group. The Panel finds that Respondent’s use of the disputed domain name to impersonate and attempt to pass itself off as Complainant evidences bad faith use and registration under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nuskinbg.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 11, 2013
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