DECISION

NAC Vitamin Co. v. Glen Rhodes d/b/a Talking Herbals, Inc.

Claim Number:  FA0401000224966

PARTIES

Complainant is NAC Vitamin Co., Hicksville, NY (“Complainant”) represented by John G. Tutunjian, Esq. of Keusey, Tutunjian & Bitetto, P.C., 14 Vanderventer Avenue, Suite 128, Port Washington, NY 11050.  Respondent is Glen Rhodes d/b/a Talking Herbals, Inc., Reynosa #10, Colonia Condesa, Mexico City, DF. 06140, Mexico (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greenteaplus.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.

Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically January 9, 2004; the Forum received a hard copy of the Complaint January 12, 2004.

On January 12, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <greenteaplus.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 5, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@greenteaplus.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <greenteaplus.com>, is identical to Complainant’s GREEN TEA PLUS mark.

2. Respondent has no rights or legitimate interests in the <greenteaplus.com> domain name.

3. Respondent registered and used the <greenteaplus.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant filed a trademark application for the GREEN TEA PLUS mark October 12, 2001, with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 78/088115) and registration was granted June 18, 2002 (Reg. No. 2582447).  The GREEN TEA PLUS mark has been used in commerce since July 1, 1997, in connection with nutritional supplements. 

Respondent registered the disputed domain name July 17, 1999, listing the registrant as “Talking Herbals, Inc.,” located in the State of New York.  On December 17, 2003, weeks after Complainant’s representative sent correspondence to Respondent offering to reimburse Respondent for the out-of-pocket expenses related to the domain name registration, the domain name registrant changed to “Glen Rhodes” of Mexico, while designating “Talking Herbals, Inc.” as the administrative contact.  Respondent refused to accept Complainant’s proposition of reimbursement alleging that only tens of thousands of dollars would recompense Respondent for the development and marketing of the domain name. 

Respondent is using the domain name to direct traffic to a website that sells a product called “Green Tea Max.”

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."

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical to and/or Confusingly Similar

Complainant established by extrinsic proof in this proceeding that it has rights in the GREEN TEA PLUS mark through registration with the USPTO and continuous use in commerce since 1997. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

The disputed domain name <greenteaplus.com> is identical to Complainant’s GREEN TEA PLUS mark because the name incorporates the mark in its entirety.  The omission of spaces between the words and the addition of the generic top-level domain “.com” are irrelevant for purposes of Policy ¶ 4(a)(i).  See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Therefore, Complainant has met the requirements of Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established that it had rights in the mark contained in its entirety in the disputed domain name and filed allegations that Respondent has no such rights.  Having failed to respond to the Complaint, Respondent has failed to provide evidence that it has rights or legitimate interests in the disputed domain name.  Thus, the Panel may find that Respondent has implicitly admitted its lack of rights to and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); 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.”).

In conjunction with the above, the Panel has no evidence indicating that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Respondent’s use of the domain name to sell “Green Tea Max” is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the name pursuant to Policy ¶ 4(c)(iii) because Respondent has incorporated Complainant’s trademark, GREEN TEA PLUS, to sell products that compete with Complainant’s goods offered under Complainant’s protected mark.  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Therefore, Complainant has meet the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith in registering and using the disputed domain name that contains in its entirety the Complainant’s protected mark. Since Respondent and Complainant are competitors, and since Respondent has utilized Complainant’s registered mark in the disputed domain name, the Panel makes the reasonable inference that Respondent registered the name primarily to disrupt the business of Complainant by siphoning potential customers from Complainant to Respondent’s site. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).

Moreover, the disputed domain name was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is intentionally attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the GREEN TEA PLUS mark. See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Therefore, Complainant has met the requirements of Policy ¶ 4(a)(iii).

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 <greenteaplus.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: February 25, 2004

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