Nutramax Laboratories, Inc. v. Celine / NUTRAMAXWELL NETWORK TECHNOLOGY CO., LTD.
Claim Number: FA2207002004697
Complainant is Nutramax Laboratories, Inc. (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Celine / NUTRAMAXWELL NETWORK TECHNOLOGY CO., LTD. (“Respondent”), 中国.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nutramaxwell.com>, registered with Xin Net Technology Corporation.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2022; the Forum received payment on July 18, 2022. The Complaint was submitted in both Chinese and English.
On July 20, 2022, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <nutramaxwell.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 July 26, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 15, 2022 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@nutramaxwell.com. Also on July 26, 2022, the Chinese and English language 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 August 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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" 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 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Further, that the Complainant was received in both Chinese and English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
PRELIMINARY ISSUE: CONSENT- TO -TRANSFER
No Response was filed but after Respondent was notified of the Complaint, it wrote to Complainant stating that its products were not in the same industry as Complainant’s goods but that “for the sake of international peace and friendly settlement, we agree that we can propose the transfer of domain names (sic)…”.
So far as the Panel is aware, Complainant did not respond to that offer and so it must be understood that Complainant prefers instead that the Policy be applied. The Panel has acted accordingly.
A. Complainant
Complainant asserts trademark rights in NUTRAMAX LABORATORIES. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells nutritional supplements for humans and animals by reference to the trademark, NUTRAMAX LABORATORIES;
2. the trademark is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 2,231,260, registered March 16, 1999;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark; and
4. the disputed domain name was registered on April 22, 2022 and has not been used.
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(f), 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)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
Countless UDRP decision have held that in most cases the gTLD can be ignored for the purposes of comparison of a domain name with a trademark. Once the gTLD in this case, “.com”, is subtracted from the domain, what remains is a comparison of NUTRAMAXWELL with NUTRAMAX LABORATORIES. Complainant’s submissions is that the terms are confusingly similar because NUTRAMAXWELL simply combines the trademark and the word WELL, “which is likely a reference to Complainant’s products that improve the wellness of Complainant’s consumers, thereby suggesting they are an authorized affiliate for Complainant, when they are not.”
There is no discussion of how the additional word LABORATORIES might influence the comparison but the Panel regards that word as relatively non-distinctive in context and notes, too, that Complainant’s USPTO registration imposes a limitation of monopoly on that word.
Taken as wholes, the Panel is just inclined to find that the domain name is confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy, an evaluation which has significance later.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
In consequence of these administrative proceedings, the Registrar disclosed the name of the domain name registrant as “Celine / NUTRAMAXWELL NETWORK TECHNOLOGY CO., LTD.”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. The evidence in support of the Complaint shows that the domain name has not been used and the Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the domain name (see, for example, CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website.”).
The onus accordingly shifts to Respondent and, absent a Response, is not met and so the Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complaint states that:
“At a minimum, Respondent is in violation of subparagraphs (iii) and (iv) above because there is no colorable rationale for use and registration of the Domain Name other than to 1) disrupt the business of Complainant by causing people to mistakenly believe they are visiting an authorized seller of Nutramax Laboratories, or 2) attract for commercial gain, people to Respondent, falsely believing it is Complainant’s online location, by creating a likelihood of confusion with Complainant’s NUTRAMAX LABORATORIES Marks.”
The Panel cannot agree with those submissions which pay little regard to the wording of the Policy. Paragraph 4(b)(iii) requires the parties to be competitors. Without use of the domain name or other means of establishing Respondent’s business or intended purpose for the domain name, it is senseless to characterize it as Complainant’s “competitor”. Likewise, paragraph 4(b)(iv) of the Policy requires proof of use likely to result in commercial gain. Neither element can be shown or even reliably inferred on the evidence.
Indeed, all that can be said is that there is a degree of resemblance between the terms such that they are – in the abstract – confusingly similar for the purposes of the first element of the Policy. As underscored there, even that finding is borderline. Beyond that, there is nothing more to insinuate bad faith in this case and on the evidence put before the Panel.
Whilst the Panel is entitled to accept reasonable allegations or draw reasonable inferences, it may rightly deny relief where statements are conclusory or unsubstantiated (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”)).
The Complaint does not establish paragraph 4(b)(iii) or (iv) of the Policy nor shown on the evidence that either of the remaining scenarios might apply. Further, in the absence of use of the domain name the Complaint has not reasoned in any cohesive way that there may be “passive” holding in bad faith. The Panel finds that Complainant has failed to establish that the domain name was registered and used in bad faith.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ORDERED that <nutramaxwell.com> REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: August 22, 2022
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