Lucas Alvarez v. Stefen Biahof
Claim Number: FA2306002047627
Complainant is Lucas Alvarez (“Complainant”), Chile. Respondent is Stefen Biahof (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bodytechpharmalab.com>, registered with Domain.com, LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 6, 2023; Forum received payment on June 6, 2023.
On June 6, 2023, Domain.com, LLC confirmed by e-mail to Forum that the <bodytechpharmalab.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 June 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2023 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@bodytechpharmalab.com. Also on June 8, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 cancelled.
A. Complainant
Complainant made the following contentions.
Complainant is a specialty retailer and direct marketer of nutritional products. Complainant has rights in the BODYTECH mark through Complainant’s registration of the mark with INAPI in Chile (e.g. Reg. No. 1,204,725, registered May 9, 2016). See Compl. Annex. Respondent’s <bodytechpharmalab.com> domain name is identical or confusingly similar to Complainant’s BODYTECH mark as it merely adds the generic words “pharma” and “lab” and the “.com” generic top-level-domain name ("gTLD").
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to sell pharmaceutical products which are illegal.
Respondent registered and uses the <bodytechpharmalab.com> domain name in bad faith. Respondent’s resolving website disrupts Complainant’s business as Respondent registered the disputed domain name to confuse users as to the affiliation between Complainant and Respondent for Respondent’s commercial gain. Furthermore, Respondent is encouraging illegal behavior with the products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Chilean company that is a specialty retailer and direct marketer of nutritional products.
2. Complainant has established its rights in the BODYTECH mark through its registration of the mark with INAPI in Chile (e.g. Reg. No. 1,204,725, registered May 9, 2016).
3. Respondent registered the <bodytechpharmalab.com> domain name on August 10, 2020.
4. Respondent has caused the disputed domain name to be used to sell pharmaceutical products which are illegal.
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. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BODYTECH mark through its registration of the mark with INAPI in Chile (e.g. Reg. No. 1,204,725, registered May 9, 2016). See Compl. Annex. Registration of a mark with a governmental agency is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Teleflex Incorporated v. Leisa Idalski, FA 1794131 (Forum July 31, 2018) (“Registration of a mark with governmental trademark agencies is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the BODYTECH mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BODYTECH mark. Complainant argues that Respondent’s <bodytechpharmalab.com> domain name is confusingly similar to Complainant’s BODYTECH mark. The addition of a generic or descriptive term and a gTLD fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The disputed domain name merely adds the generic words “pharma” and “lab” and the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BODYTECH
trademark and to use it in its domain name, adding the
generic words “pharma” and “lab” which cannot negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on August 10, 2020;
(c) Respondent has caused the disputed domain name to be used to sell pharmaceutical products which are illegal;
(d) Respondent has engaged in this activity without the consent or approval of Complainant;
(e) Complainant argues that Respondent fails to use the <bodytechpharmalab.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to sell pharmaceutical products that are not approved for human consumption. Using a disputed domain name to promote users to use a product illegally may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorised use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant provides content from the resolving website to show that the Respondent was aware of the “off label” usage. See Amend. Compl. pp. 3-4. As the Panel agrees, it finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <bodytechpharmalab.com> domain name in bad faith as Respondent registered the disputed domain name to confuse users into believing an association existed between Complainant and Respondent and to do so for Respondent’s commercial gain. Registration of a confusingly similar domain name with the intent to disrupt business by confusing users regarding the relationship between the respondent and complainant can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered and uses the <bodytechpharmalab.com> domain name in bad faith as Respondent promotes and encourages illegal use of pharmaceuticals. Registration of a confusingly similar domain name to promote illegal activity may evince bad faith registration and use per Policy ¶ 4(a)(iii). Complainant contends that Respondent shows on the resolving webpage how to “stack” performance enhancing drugs in an illegal way. See Amend. Compl. p. 4. In addition, Respondent has a physical address listed on the resolving website that is not in existence, furthering Complainant’s belief that Respondent’s activities are not legal. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered and uses the <bodytechpharmalab.com> domain name in bad faith as Respondent registered the disputed domain name to confuse users into believing an association between Complainant and Respondent and to do so for Respondent’s commercial gain. Registration of a confusingly similar domain name with the intent to disrupt business by confusing users regarding the relationship between the respondent and complainant can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BODYTECH mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bodytechpharmalab.com> domain name be CANCELLED.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 9, 2023
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