WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Sunrider Corporation v. John Spink Case No. D2008-1802 1. The Parties
Complainant is The Sunrider Corporation, doing business as Sunrider International, of the United States of America (“U.S.A.”), represented by Ladas & Parry, also of the U.S.A.
Respondent is John Spink of the U.S.A. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On November 26, 2008, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 19, 2008.
The Center appointed Debra J. Stanek as the sole panelist in this matter on January 7, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant for many years has offered a variety of products under the name “Sunrider.” It owns a United States federal trademark registration for the SUNRIDER mark, which was issued in 1996, for a wide variety of cosmetics and beauty products.
The Domain Name was registered in November 2005. At times in 2007, it resolved to a website that contained links to third party website. The email and mailing addresses associated with the domain name registration are the same as those belonging to one of Complainant's distributors, whose distributorship has been cancelled as a result of this dispute. 5. Parties' Contentions A. Complainant
Complainant is a provider of herbal foods and beverages, dietary supplements, weight management products, skincare products, and cosmetics and household products. Since its formation in the U.S.A. in 1982, Complainant has become a multinational corporation, operating in over 42 countries. Complainant currently manufactures and sells over 415 products, which are distributed to consumers through a network of over one million independent distributors. Complainant is currently one of the largest and most successful retail companies in China.
For over eleven years, Complainant has maintained a strong Internet presence throughout the world through use of both country code and generic top-level domain names incorporating its SUNRIDER mark. Complainant registered its primary domain name on March 19, 1997. Since that time, Complainant has maintained a website promoting itself, its products and business opportunities, and providing a means for consumers to purchase SUNRIDER products directly from Complaint. Complainant is the registered owner of at least 118 ccTLD and gTLD domain names incorporating the mark SUNRIDER, including , , , and many others.
Complainant has established a strong reputation and has valuable goodwill worldwide in connection with its SUNRIDER mark for manufacturing and retail services, as well as its products and business opportunities. Complainant has received numerous awards for its products and manufacturing facilities and has generated good will through its philanthropic activities. (1) The domain name is confusingly similar to Complainant's SUNRIDER mark
Complainant owns United States federal trademark registrations for the mark SUNRIDER and SUNRIDER and design, both of which issued in 1996. Complainant owns other United States federal trademark registrations for other Sunrider marks as well as hundreds of trademark registrations and pending applications for Sunrider marks in other countries around the world.
The Domain Name is confusingly similar to Complainant's registered SUNRIDER mark, as it consists of the dominant and distinctive “sunrider” element, combined with the descriptive term “products.” Use of the mark SUNRIDER in combination with the term “products” heightens confusion, as consumers searching for SUNRIDER products would believe that a domain name incorporating Complainant's mark is sponsored by Complainant.
Finally, the addition of the gTLD “.com” serves no purpose in distinguishing the domain name from the SUNRIDER mark because gTLDs are a functional necessity rather than an arbitrary trademark choice. (2) Respondent has no rights to or legitimate interests in respect of the domain name
The mark SUNRIDER is a coined term, without any dictionary or descriptive meaning. Therefore, there is no significance to the Domain Name other than its use in connection with Complainant and its products and services.
Therefore, “sunrider” is not a term Respondent would ordinarily choose unless Respondent (or its products or services) was known by that name, or unless Respondent was seeking to create a likelihood of confusion with Complainant's mark.
Complainant has not authorized, licensed, or consented to Respondent's registration and use of the domain name. To Complainant's knowledge, there are no prior trademark applications or registrations in the name of Respondent for “SUNRIDERPRODUCTS” or any mark incorporating “Sunrider” anywhere in the world.
Moreover, nothing in the Whois information related to the domain name indicates that Respondent is commonly known by the designation “Sunrider” or “Sunriderproducts”. (3) Respondent has registered and is using the domain name in bad faith
Respondent registered the Domain Name over twenty-three years after Complainant's first use of the SUNRIDER trademark.
Currently, there is no website associated with the Domain Name. However, Respondent has, at times, used the Domain Name to direct Internet users to commercial websites featuring sponsored links entitled, “Sunrider Product,” “Sunrider International,” “Sunrider Products,” and other links to various topics of interest including “Fitness,” “Homes for Sale,” and “Las Vegas.”
The Domain Name appears to be used exclusively for its trademark value and not for any descriptive value, as “sunrider” is not a dictionary word, but instead is a coined term exclusively associated with Complainant and its goods and services.
Complainant believes that Respondent is, in fact, a former SUNRIDER distributor who is associated with the email address and mailing address identified in the WhoIs report for the Domain Name.
On September 21, 2007, Complainant contacted its former distributor at the email address and demanded a transfer of ownership of the Domain Name to Complainant. The distributor did not comply and Complainant terminated the distributorship.
Respondent registered and has at times commercially used the Domain Name, which is confusingly similar to Complainant's well-known trademark, to divert Internet traffic intended for Complainant to a website featuring sponsored third-party links advertising competing goods and services in the nutrition field, in direct competition with SUNRIDER goods, as well as a wide variety of other goods and services. Moreover, Respondent presumably garners pay-per-click fees for each user that selects one of these links.
Additional factors support a finding of bad faith:
Respondent was clearly aware of Complainant's rights in its trademark when Respondent registered . As noted herein, the Domain Name was registered in 2005, twenty-three years after Complainant's first use of the mark SUNRIDER and, since the Respondent is, or is associated with, a former distributor, Respondent is familiar with Complainant's rights in and to the SUNRIDER mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the Domain Name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, (see Policy, paragraph 4(c)), as well as circumstances that may evidence a respondent's bad faith registration and use, (see Policy, paragraph 4(b)). A. Identical or Confusingly Similar
Complainant has established its rights in the mark SUNRIDER by virtue of the evidence of its United States federal trademark registration.
The Domain Name is not identical to Complainant's mark. However, it includes Complainant's SUNRIDER mark in its entirety and follows it with the generic term “products.” The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. Here, the addition of the word “products” after Complainant's mark (even absent the space between the two terms and the addition of the generic top-level domain “.com”, which are not relevant for these purposes), does nothing to effectively differentiate or distinguish the Domain Name from Complainant's mark, which remains the dominant portion of the Domain Name.
Accordingly, the Panel finds that Respondent's Domain Name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples by which a respondent might demonstrate rights or legitimate interests in a domain name:
(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.
It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of the Domain Name. There is no reason to believe, from the WHOIS record or otherwise, that Respondent is known by the Domain Name.
It does not appear that Respondent is making a legitimate noncommercial or fair use of the Domain Name. It appears that the Domain Name has been used with various web pages to create click-through revenue for the registrar or Respondent. As a general matter, the Panel is of the view that such a use is not a bona fide offering of goods or services and therefore finds that Complainant has also made a prima facie showing as to the example in paragraph 4(c)(i) of the Policy.
The Panel finds that Complainant has made a prima facie showing as to this element; Respondent, who has not replied, has not rebutted this showing.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Complainant must establish that the Domain Name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant's rights in its mark, which are well established, long predate Respondent's registration and use of the Domain Name. Based on the printouts of archived pages from the “www.” website, Respondent should have been aware of Complainant's SUNRIDER mark and corresponding products, which were included in the list of links. Further, it appears that there is a connection between Respondent and Complainant's former distributor, who appear to have email and mailing addresses in common.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the Domain Name and that the use of the Domain Name was not in connection with a bona fide offering of goods or services.
Under these circumstances, combined with the adverse inferences drawn by Respondent's failure to respond, the Panel finds that Complainant has established that Respondent has registered and is using the Domain Name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant.
Debra J. Stanek
Sole Panelist
Dated: January 19, 2009
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