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Generic Top Level Domain Name (gTLD) Decisions |
Nutri-Vet LLC v. Domain Deluxe
Claim
Number: FA0405000274100
Complainant is Nutri-Vet LLC (“Complainant”),
represented by Christopher L. Hansen, 495 N Dupont Avenue, Boise, ID 83713. Respondent is Domain Deluxe (“Respondent”), GPO 7628, Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nutrivet.com>, registered with The
Registry at Info Avenue d/b/a IA Registry, (hereinafter, “IA
Registry”).
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 20, 2004; the Forum
received a hard copy of the Complaint
on May 24, 2004.
On
May 24, 2004, IA Registry confirmed by e-mail to the Forum that the domain name
<nutrivet.com> is registered with IA Registry and that Respondent
is the current registrant of the name. IA Registry has verified that Respondent
is bound by the IA Registry 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
May 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 15, 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@nutrivet.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
June 23, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nutrivet.com>
domain name is confusingly similar to Complainant’s NUTRI-VET mark.
2. Respondent does not have any rights or
legitimate interests in the <nutrivet.com> domain name.
3. Respondent registered and used the <nutrivet.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Nutri-Vet, LLC, is in the business of providing goods such as feed supplements
and food stuffs for dogs, cats and horses.
Complainant registered the NUTRI-VET mark with the United States Patent
and Trademark Office on March 13, 2001 (Reg. No. 2,542,854). Complainant first used its mark in October 1998. Complainant uses the mark with and without a
hyphen or other character between “Nutri” and “Vet.”
Respondent
registered the <nutrivet.com> domain name on November 4, 2001 and
is using the domain name to redirect Internet users to a website hosting a
search engine which
provides links to a variety of websites and features a
variety of advertisements, including an offer to sell the domain.
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
draw such inferences it 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.
Complainant has
established with extrinsic proof in this proceeding that it has rights in the
NUTRI-VET mark through registration
with the United States Patent and Trademark
Office and through continued use of its marks in commerce for the last five
years. See 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.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel
decisions have held that 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).
The domain name
registered by Respondent, <nutrivet.com>, is identical to
Complainant’s NUTRI-VET mark because the only difference between the two is the
omission of a hyphen in the domain
name.
The omission of a hyphen does not significantly distinguish the domain
name from the mark under the Policy. See
Chernow Communications Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact
that a name is
identical to a mark"); see also Ritz-Carlton
Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in the domain names is not sufficient to differentiate
the domain
names from the mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the
disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie
case
pursuant to Policy ¶ 4(a)(i). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv. Group Ltd. V. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complaint that Respondent has no
right or legitimate interest
is sufficient to shift the burden of proof to Respondent to demonstrate that
such a right or legitimate
interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Talk city, Inc. v. Robertson, D2000-009 (WIPO Feb. 29,
2000) (“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in
the allegations of Complainant to be deemed true).
Complainant has
established that Respondent is using the <nutrivet.com> domain
name to direct Internet users to a website that features advertising for a
variety of goods and that hosts a popular search
engine to link viewers to a
variety of websites. Respondent’s use
of a domain name that is confusingly similar to Complainant’s NUTRI-VET mark to
redirect Internet users interested
in Complainant’s products to a commercial
website that offers a popular search engine unrelated to Complainant’s products
and services
is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of America Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of
infringing domain names to direct Internet traffic to
a search engine website
that hosted pop-up advertisements was evidence that it lacked rights or
legitimate interests in the domain
name); see also Geoffrey, Inc. v. Toyrus.com,
FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the
disputed domain name, a simple misspelling of Complainant’s
mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide
offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users
to an unrelated business was not a bona fide offering
of goods or services).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <nutrivet.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie
de Saint Gobain v. Com-Union corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests where Respondent was not commonly known by
the mark and
never applied for a license or permission from Complainant to use
the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the
disputed domain name or using
the domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the domain name for commercial gain. Respondent’s domain name diverts Internet
users wishing to search under Complainant’s well-known mark to Respondent’s
commercial website
through the use of a domain name confusingly similar to
Complainant’s mark. Respondent’s
practice of diversion, motivated by commercial gain, through the use of a
confusingly similar domain name evidences bad
faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain); see
also Bank of America Corp. v. Out Island Props., FA 154531 (Nat. Arb. Forum
June 3, 2003) (stating that “([s]ince the disputed domain names contain entire
versions of Complainant’s
marks and are used for something completely unrelated
to their descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine
website” in holding that the domain names were registered
and used in bad faith
pursuant to Policy ¶ (b)(iv))
Additionally, circumstances such as Respondent offer to sell the <nutrivet.com>
domain indicates Respondent has registered 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 mark, or to a
competitor of Complainant’s for valuable consideration. See CBS Broadcasting Inc. v. Worldwide
Webs, Inc., D2000-0834
(WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or
sale of domain names, without more, such
as to justify a finding of bad faith
under the Policy. However, the fact that domain name registrants may
legitimately and in good
faith sell domain names does not imply a right in such
registrants to sell domain names that are identical or confusingly similar
to
trademarks or service marks of others without their consent.”); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded,
are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nutrivet.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 6, 2004
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