WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION NBTY, Inc. and Vitamin World, Inc. v. Texas International Property Associates – NA NA Case No. D2008-1959 1. The Parties
The Complainants are NBTY, Inc. (“NBTY”) and Vitamin World, Inc. (“Vitamin World”), both of Ronkonkoma, New York, United States of America, represented by Dorsey & Whitney, LLP, United States.
The Respondent is Texas International Property Associates – NA NA of Dallas, Texas, United States, represented by the Law Office of Gary Wayne Tucker, United States. 2. The Domain Names and Registrar
The disputed domain names – , , and – are registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on December 19, 2008 and in hard copy on December 29, 2008. On December 23, 2008, the Center transmitted by e-mail to Compana LLC a request for registrar verification in connection with the disputed domain names. On December 24, 2009, Compana LLC transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 2, 2009. The Response was filed with the Center on February 2, 2009.
On February 11, 2009, the Complainants filed an unsolicited Reply with the Center.
The Center appointed D. Brian King as the sole panelist in this matter on February 13, 2009. The Panel finds that it was properly constituted. The sole panelist 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.
On February 18, 2009, the Respondent submitted an objection to the Complainants' submission of their Reply. Paragraph 12 of the Rules provides that “the Panel may request, in its sole discretion, further statements or documents from either of the parties”. There is no provision in the Rules for uninvited, additional submissions by the parties. Thus, some panels have concluded that such submissions should never be accepted. See J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035, and Easyjet Airline Company Ltd. v. Andrew Steggles,WIPO Case No. D2000-0024. Other panels have been willing to consider unsolicited, supplemental submissions if “they do not address topics which the Complainant could have addressed in its Complaint”. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447. See also Viz Communications, Inc. v. Redsun dba and David Penava,WIPO Case No. D2000-0905. The primary consideration for the Panel is the principle set forth in paragraph 10(b) of the Rules, which provides that “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.
The Complainants submitted their Reply – which consists of 11 pages and 6 new exhibits – “[i]n order to rectify the record, given the misleading facts recited and arguments made by Respondent …”. The Panel subscribes to the reasoning in Delikomat and Viz Communications to the effect that the need to treat the parties with equality, mandated in paragraph 10(b) of the Rules, provides the Panel with discretion to accept supplemental submissions in appropriate cases. In this case, it is true that the Complainants respond directly to several of the Respondent's arguments. Much of the Reply, however, is devoted to a restatement of the Complaint. The Panel has concluded that such a Reply does not make a significant contribution to the mix of relevant information before the Panel, and that it could be unfair to consider its contents without inviting a further submission from the Respondent. As a result, the Panel will not take the Reply into consideration in rendering its decision.
Finally, the Panel notes that the Respondent has agreed to transfer to Complainant NBTY the domain name . Thus, the Panel needs not consider the merits of the parties' arguments with respect to that domain name. See, e.g., Jeffrey Gorman (Jeff Gorman) v. Cocktails For a Cause,WIPO Case No. D2007-1029. 4. Factual Background
The Complainants are in the business of producing and selling vitamins and nutritional supplements. Complainant NBTY has owned registered trademarks for the PURITAN'S PRIDE brand since 1982. Complainant Vitamin World (a wholly-owned subsidiary of Complainant NBTY) has owned registered trademarks for VITAMIN WORLD since 1976.
The Respondent is in the business of registering and utilizing domain names. The Respondent has registered the domain names (created January 23, 2005), (created March 19, 2005) and (created November 23, 2005) with Compana LLC. The Respondent provides a search engine on each of the three web sites. Depending on the search term entered, related advertising links appear on the screen. In each case, the web site also lists preferred search terms. For and , in some cases these preferred search terms yield advertising links related to PURITAN'S PRIDE or other types of vitamins or nutritional supplements. The Respondent admits that these are “click-through” sites and that it receives revenue in this way.
Domain name expired on January 23, 2009. Domain name , meanwhile, remains valid through March 19, 2009, and domain name expires on November 23, 2009. 5. Parties' Contentions A. Complainants
The Complainants contend that the domain names , and are confusingly similar to trademarks in which the Complainants have rights; that the Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names were registered and are being used in bad faith.
In support of the foregoing contentions, the Complainants submit in summary that:
– the domain names at issue incorporate the Complainants' PURITAN'S PRIDE and VITAMIN WORLD trademarks and are similar to the , and domain names already utilized by the Complainants, and thus the disputed domain names are confusingly similar to the Complainants' marks;
– the Complainants have not authorized the Respondent to use their trademarks; the Respondent has not made use of the domain names in connection with a bona fide offering of goods or services; the Respondent has not been commonly known by the domain names; and the Respondent utilizes the domain names for commercial gain to divert consumers misleadingly; and
– the Respondent has registered and is making commercial use of domain names that would not have been selected without knowledge of the Complainants' marks; and these web sites feature links to goods (including those offered by competitors) covered by the Complainants' marks, thus demonstrating that the Respondent registered and is making commercial use of the domain names in bad faith. B. Respondent
The Respondent counters that the Complainants have not met their burden of establishing that the domain names , and are identical or confusingly similar to a trademark in which the Complainants have rights; that they have not shown that the Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that they likewise have not proven that the domain names were registered and are being used in bad faith.
In particular, the Respondent contends in summary that:
– there are over 100 registered trademarks involving the term “puritan”; the PURITAN PRIDE mark is distinct from either or ; and “vidad” is not similar to “vitamin”;
– offering targeted advertising searches is a legitimate business, and the Respondent has no control over the content of the search results yielded on the web sites at issue; and
– there is no evidence that the Respondent had any knowledge of the Complainants' marks at the time of registration, and thus the Complainants have failed to establish bad faith. 6. Discussion and Findings
As a preliminary matter, the Panel notes that although one of the domain names – – has expired during the course of this dispute, paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy provides that “[i]n the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the Complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant”. The Panel notes that the Registrar has confirmed that has been locked pending resolution of this dispute, and thus will be available for registration by Complainant NBTY after the present dispute is resolved. In these circumstances, the Complainants have a legitimate interest in pursuing their Complaint, even as to a domain name that has expired in the course of this dispute.
Paragraph 4(a) of the Policy sets forth three requirements that must be met for a complaint under the Policy to succeed. Those are:
– the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
– the respondent has no rights or legitimate interests in respect of the domain name; and
– the respondent's domain name has been registered and is being used in bad faith.
In proceedings before a panel, the complainant bears, in principle, the burden of proof on each of these elements. The panel has to decide the matter based on the statements and documents submitted, and in accordance with the Policy, the Rules and any rules or principles of law that it deems applicable (see Rules, Paragraph 15(a)). A discussion of each element follows below. A. Identical or Confusingly Similar
While it is true that the term “puritan” may be incorporated in various registered trademarks, the registration of the PURITAN'S PRIDE mark demonstrates that Complainant NBTY has enforceable rights in respect of that mark in relation to its vitamin and nutritional supplement products. The disputed domain name incorporates the dominant portion of the trademark. PURITAN'S PRIDE is a broadly known product and service line, so anyone familiar with this brand could reasonably assume that a reference to “Puritan's Sale” would involve the sale of PURITAN'S PRIDE products. Moreover, is one letter away from matching Complainant NBTY's domain name. The Panel thus finds that the Complainants have established that the domain names and are confusingly similar to a trademark in which Complainant NBTY has rights.
With respect to the domain name , the analysis is different. The terms “Vidad World” and “Vitamin World” are, on their face, dissimilar. “Vidad” is not a likely misspelling of “Vitamin World”. Furthermore, an individual who is familiar with the VITAMIN WORLD mark would not necessarily assume that is affiliated with this mark. As a result, the Panel finds that the Complainants have failed to establish that the domain name is identical or confusingly similar to a trademark in which Complainant Vitamin World has rights. The Complainants thus have not met their burden with respect to , and there is no need to discuss the other two requirements of paragraph 4(a) of the Policy with respect to this domain name. B. Rights or Legitimate Interests
As the Respondent has pointed out, a recent panel decision has noted that “panels have found that the provision of . . . click-through services do constitute a bona fide offering of the service unless the bona fides of the offering is tainted by evidence of bad faith”. Super Supplements, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0244.
That decision provides no support, however, for the Respondent's far-reaching statement that “[t]he fact that advertising revenues may be generated by Respondent's activity demonstrates a legitimate interest”. Response at 5. The domain names and are likely to attract users of Complainant NBTY's PURITAN'S PRIDE mark, taking advantage of that mark to gain commercially by providing targeted advertising, in some cases for competitors of Complainant NBTY. Moreover, the Respondent appears to have no other association with the term “puritan”. The Panel thus finds that the Complainants have established sufficiently that the Respondent has no rights or legitimate interests in the domain names and . C. Registered and Used in Bad Faith
Complainant NBTY's PURITAN'S PRIDE mark is well known, having been a registered trademark since 1982. The Respondent was therefore on at least constructive notice of the Complainants' rights in the mark at the time of registration.
The Respondent registered the domain names and 23 years later. It is likely on the evidence here that the Respondent registered with the intention of capitalizing on a missed keystroke by web users attempting to reach Complainant NBTY's “” site. This is a classic example of so-called “typosquatting”, a strategy that has been condemned by other panels, including one that ordered the transfer of and . See NBTY, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0835. With respect to , the objective web user could reasonably assume that this web site is affiliated with the Complainants and/or used for selling PURITAN'S PRIDE products. This would have been obvious to the Respondent at the time of registration and thereafter.
Moreover, several featured links on these web sites relate to the sale of vitamins and nutritional supplements, in some cases from competitors of Complainant NBTY. It is plain that the Respondent is attempting to capitalize inappropriately on the goodwill of Complainant NBTY in its registered trademarks. The Panel thus finds that the Complainants have established sufficiently that the Respondent registered and has used the domain names and 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 names 1, and be transferred to Complainant NBTY. The Complainants' request for transfer is denied with respect to the domain name .
D. Brian King
Sole Panelist
Dated: March 4, 2009
1 On the basis of consent, as discussed in paragraph 3 above.
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