WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Enzymatic Therapy, Inc. v. VNF Nutrition
Case No. D2001-1310
1. The Parties
The Complainant is Enzymatic Therapy, Inc. of 825 Challenger Drive, Green Bay, Wisconsin 54311, U.S.A.
The Respondent is VNF Nutrition, 246 B Route 25A, Setauket, NY 11733, U.S.A.
2. The Domain Name and Registrar
The domain name is dispute is . The Registrar is Network Solutions Inc. ("NSI").
3. Procedural History
This proceeding initiated by Complainant with the filing of a Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on November 2, 2001. The Complaint was reviewed to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On November 7, 2001, the Center sent an acknowledgement of its receipt of the Complaint via email to Complainant and Respondent. On November 12, 2001, the Center found that the Complaint met the Formal Requirements of the Rules and the Supplemental Rules and Notified the Respondent on November 13, 2001, of the commencement of the proceedings via email, facsimile and post. A hard copy of the Notification together with the Complaint and attachments were sent to Respondent via Federal Express to Respondent�s Post Office box and street addresses on November 13, 2001. The Notification informed Respondent that it must submit a Response by December 3, 2001. Respondent failed to submit a response within the required period. A Notification of Respondent Default was issued on December 4, 2001. Following the Notification of Respondent Default, the Respondent, represented by Eric Santiago, sent several e-mail messages stating that he "has owned and used the domain name for a number of years". Pleading ignorance of the process, he requested the Center for advice. The Center advised him that he may submit a late response which may be considered at the discretion of the Panel, and that in any event a Panelist would be appointed. Up to the present, no response was submitted by Respondent. On December 13, 2001, after clearing for conflicts, the Center appointed Maria C. H. Lin as the sole panelist.
4. Factual Background
Since no response was submitted by the Respondent, the allegations of the Complaint are accepted as true. (See Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581 (August 3, 2000) �4, and Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (June 14, 2001); see also Rules paragraph 5(e) ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.")).
Complainant sells dietary supplements including herbs and herbal extracts, vitamins, minerals and homeopathic preparations under the marks ENZYMATIC THERAPY and ENZYMATIC THERAPY NATURAL MEDICINES. The marks are registered in United States, under Registration Nos. 1,760,946 dated March 30, 1993, and 2,335,906, dated March 28, 2000, respectively. The mark ENZYMATIC THERAPY has been in use by Complainant since 1981. Complainant also has been using ENZYMATIC THERAPY as its tradename.
The Respondent is doing business as VNF Nutrition and registered as a domain name with NSI on May 11, 1999. The Respondent buys products from Complainant and resells the products to the public. The website is used to promote the sale of similar products including Complainant's. The Respondent was not authorized to use the mark or the business name of the Complainant. Sometime prior to March 14, 2000, Complainant contacted Respondent regarding the use of the domain name and requested a transfer of the ownership of the domain name. It was Complainant's understanding that a verbal agreement was reached for Respondent to transfer the domain name. However, Respondent ignored the forms that were sent to him.
On March 14, 2001, Complainant's Vice President made an offer to discount the products sold the Respondent by 10% up to a maximum of $3500. The Respondent's reply was that he expected a more substantial offer. Up to the present, Respondent has refused to make the transfer.
5. Parties� Contentions
A. Complainant asserts that Respondent:
(i) had adopted and is using a domain name that is confusingly similar to that of its registered trademark and tradename: ENZYMATIC THERAPY; and
(ii) has no rights or legitimate interests in the domain name; and
(iii) had registered and is using the domain name in bad faith.
In support of its contentions, Complainant provided an affidavit by Richard Danen, Vice President, stating that Respondent is a distributor of Complainant's products, that Respondent has no authority from Complainant to register and use the domain name at issue, that Respondent showed bad faith it its negotiation with Complainant for the transfer of the domain name to Complainant.
B. Respondent
Respondent failed to respond to any of the allegations.
6. Discussion and Findings
It is the burden of Complainant under paragraph 4(a) of the Policy to prove:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
Complainant's federal trademark registration is prima facie proof of its ownership of the mark ENZYMATIC THERAPY. (EAuto, L.L.C. v Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000).) Respondent's domain name is identical to the registered trademark and the business name of the Complainant. The domain name is used to promote and sell products that are similar or identical to those sold by Complainant. Complainant has proved the first element of the Policy.
Complainant had not licensed nor authorized Respondent to use its business name nor the mark ENZYMATIC THERAPY as a domain name. The domain name is not the legal name of Respondent. As a distributor of Complainant's products, Respondent is aware that Complainant has rights in the mark ENZYMATIC THERAPY. Therefore, Complainant has proved the second element of the Policy.
Complainant showed that Respondent was aware of Complainant's rights in the tradename and registered trademark ENZYMATIC THERAPY since it is a distributor of ENZYMATIC THERAPY products. Yet knowing of Complainant's rights, Respondent registered the domain name and continued to use it even after protest by the Complainant and refused to transfer ownership of the domain name to Complainant. Respondent did not deny its knowledge. Respondent's knowledge and activities are evidence of bad faith in registering and using the domain name in bad faith.
7. Decision
For the reasons stated above, and pursuant to paragraph 4(i) of the Policy and 15 of the Rules, the Panel concludes that the domain name at issue is identical and confusingly similar to Complainant's tradename and mark, Respondent has no rights or legitimate interests in the domain name and Respondent has registered and used the domain name in bad faith. The domain name should be transferred to Complainant.
Maria C.H. Lin
Sole Panelist
Dated: December 17, 2001
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