DECISION

 

Lucas Alvarez v. Lotto Samule

Claim Number: FA2309002062178

PARTIES

Complainant is Lucas Alvarez ("Complainant"), Chile. Respondent is Lotto Samule ("Respondent"), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bodytech-lab.com>, registered with Launchpad.com Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 19, 2023; Forum received payment on September 19, 2023.

 

On September 19, 2023, Launchpad.com Inc. confirmed by e-mail to Forum that the <bodytech-lab.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 September 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@bodytech-lab.com. Also on September 20, 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.

 

On October 11, 2023, 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 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 a formal Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be cancelled. 

 

PARTIES' CONTENTIONS

Complainant

Complainant asserts trademark rights in BODYTECH.  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 since it uses the domain name to sell pharmaceutical products which are illegal.

 

Complainant alleges that Respondent registered the disputed domain name in bad faith and in the face of a recent UDRP case finding against Respondent.

 

Respondent

Respondent failed to submit a formal Response in this proceeding.  An informal email was received by the Forum expressing surprise at the Complaint and insinuating that Complainant might offer to purchase the disputed domain name.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.       Complainant is a Chilean company that is a specialty retailer and direct marketer of nutritional products such as vitamins and minerals and sports nutrition formulas;

 

2.       Complainant sells those products and does business under the name BODYTECH which is registered with the INAPI in Chile as Reg. No. 1,244,325, from April 17, 2017;

 

3.       Respondent registered the disputed domain name on July 18 2023 using a privacy service to shield its identity and gave a fictitious address in Germany;

 

4.       the disputed domain name replicates the look and feel of Complainant's website and uses a stylized iteration of Complainant's trademark identical to that used by Complainant; and

 

5.       the resolving website sells performance enhancing drugs and anabolic steroids.

 

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 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").

 

 

Identical and/or Confusingly Similar

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 since it provides proof of registration of the trademark BODYTECH with INAPI, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by addition of the descriptive term, "-lab", having no distinguishing value. The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) finding that "[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.").

 

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

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 disputed 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, D2000‑0624 (WIPO Aug. 21, 2000)).

 

Complainant submits that this is a case of "cyberflight" and that Respondent was the party suffering an adverse UDRP decision recently in the case of Lucas Alvarez v. Stefen Biahof, FA2306002047627 (Forum July 9, 2023) involving the domain name, <bodytechpharmalab.com>, found to have been registered and used in bad faith to illegally sell performance enhancing products under the trademark at issue, BODYTECH.

 

The Panel has considered that earlier case and the evidence of alleged cyberflight and finds sufficient proof that it is more likely than not that the same person or entity was responsible for creation of the disputed domain name here.

 

Both cases appear to present a bogus party located in Germany. Both underlying registrants are in Thailand. The domain names resolve to very similar websites both selling essentially the same goods and both using the same stylized version of Complainant's trademark used by Complainant. Finally, the earlier UDRP decision was made on July 9, 2023 and the disputed domain name was created on July 18, 2023.

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. Respondent's website bears Complainant's trademark and offers for sale goods which, whether legally sold or not, are products which might be used in competition with Complainant's goods.

 

A prima facie case has been made (see, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) ("Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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)."); Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant's mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged that onus and finds the Respondent has no rights or interests.

 

Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

The Panel's findings above regarding cyberflight and the use of the domain name are themselves adequate proof of registration and use in bad faith. However, were there any doubt in that regard, paragraph 4(b) of the Policy sets out four circumstances which are taken to be evidence of the registration and use of a domain name in bad faith if established.  

 

The Panel finds that Respondent's conduct falls squarely under paragraph 4(b)(iv) which provides that:

 

"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 Panel has already found that the domain name is confusingly similar to the trademark. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, 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.").

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bodytech-lab.com> domain name be CANCELLED.

 

 

 

Debrett G. Lyons, Panelist

October 13, 2023