WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION B.I.E. Health Products, Inc. v. Registrant (460461) of Domain Names, Administration Case No. D2009-0420 1. The Parties
The Complainant is B.I.E. Health Products, Inc. of Los Angeles, California, United States of America, represented by Allmark Trademark, United States of America.
The Respondent is Registrant (460461) of Domain Names, Administration, St. Kitts Registry. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 1, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On April 8, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 8, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 11, 2009. The Center verified that the Complaint together with the amendment to 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 April 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 5, 2009.
The Center appointed Pravin Anand as the sole panelist in this matter on May 13, 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
The facts stated in the complaint by the Complainant B.I.E. HEALTH products, Inc. are as follows:
- The Complainant, B.I.E.HEALTH Products Inc., is a Retailer in the field of nutritional supplements for human consumption, and a large part of its sales are transacted by a Company website located at “”.
- The Complainant is the owner of US Trademark Registration No. 3,430,426 for the mark BIEHEALTH in connection with, “Online Retail Stores Limited featuring health & nutritious supplements, mail, fax and phone order services featuring health and nutrition supplements” in International Class 35.
- The Complainant's trademark registration has a first use anywhere date of January 20, 2000 and a first use in interstate commerce in April 15, 2003. 5. Parties' Contentions A. Complainant
The Complainant's contentions are summarized briefly as under A. Identical or confusing similarities
- The Complainant states that it is the owner of US Trademark Registration No. 3,430,426 for the mark BIEHEALTH.
- The Respondent is holding and using the domain name which is solely comprised of the Complainant's federally registered Trademark Biehealth and the generic TLD (top level domain) identifier “.com.”
- The Complainants submits that there is no effort on the part of the Respondent to distinguish the disputed domain name from the Complainant's well known and prior use trademark.
- The Complainant further contends that in view of its federally registered trademark BIEHEALTH and its continuous use the Complainant has satisfied the criteria that the disputed domain name is identical to the Trademark, in which the Complainant has rights. B. The Respondent has no rights or legitimate interest in the domain name
- The Complainant submits that the Respondent has no rights or legitimate interest in the domain name as at the time of filing of the complaint, the Respondent's identity had not been revealed and subsequently an amendment was filed, which revealed the Registrant's name as “Registrant (460461) St. Kitts registry of St. Kitts”.
- The Complainant submits that it has not authorized or licensed or otherwise given any permissions to any individual or identity including the Registrant to register or use the domain on its behalf.
- It is the Complainants contention that the mark BIEHEALTH is a strong and unique trademark identifier that was registered on the principal registry of trademarks without any required showing of secondary meaning.
- The Complainant further contends that the Respondent registered the disputed domain name well after the Complainant began using the trademark in United States, in commerce in connection with retail supply of supplement products.
- The Complainant further submits that the Respondent has no legal basis for using the BIEHEALTH mark, including its incorporation into a domain name. In support of the same the Complainant has relied upon Mcdonald's Corporation v. Easy Property,WIPO Case No. D2006-1142; and Do the Hustle v. Tropic Web,WIPO Case No. D2000-0624.
- The Complainant submits that there is no bonafide offering of goods & services being carried out by the Respondent on the disputed domain name and the Respondent is unlawfully and unintentionally benefiting from the goodwill that the Complainant has acquired the BIEHEALTH trademark.
- The Complainant further submits that the Respondent on the disputed domain name is directing visitors to a website that features online advertising links to competitors of the Complainant. C. The domain name was registered and is being used in bad faith
- The Complainant submits that its use of the mark in the year 2000 predates the Respondent's registration of the disputed domain name .
- The Complainant further submits that on account of advertisements and evidence of advertising expenditure in U.S. and Canada the Complainant has conclusively established that it has extensive common law rights in the trademark BIEHEALTH prior to the registration of the disputed domain name. The Complainant has placed reliance on: Freedom Flag, Inc. dba Falls Flag & banner Co.v. Flags Unlimited,WIPO Case No. D2002-0478.
- It is the Complainants contention that the Respondent has been using the domain name in bad faith by operating advertising sponsored link featuring advertisements of the Complainant's competitors.
- The Complainant further contends that the Respondent has a ““available to the consumers on the website to which the disputed domain name resolves to and thus this is conclusive evidence that the Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's BIEHEALTH trademark in order to generate the pay-per-click advertising revenue.
- The Complainant contends that the Respondent has been engaged in a pattern of bad faith domain registrations and has placed reliance on a number of cases including Accolo, Inc. v. St. Kitts Registry,WIPO Case No. D2007-0963, The Professional Golfer Asscoiation of America v. Moniker 460461/ Domain Names Adminsitration / St. Kitts Registry,WIPO Case No. D2007-0900, etc. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Complainant has to prove each of the following elements:
(1) 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
(2) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
In the case of a default by a party, Paragraph 14 of the UDRP Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences there from, as it considers appropriate.
In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of factual circumstances in the Complaint as well as the evidence to support it.
Accordingly the panel finds that: A. Identical or Confusingly Similar
The complainant has exclusive rights in the trademark BIEHEALTH by virtue of its US Trademark Registration No. 3,430,426 for the mark BIEHEALTH. The disputed domain name incorporates the Complainants trademark BIEHEALTH as a whole.
Additonally the addition of the top level domain “.com” does not make the disputed domain name dissimilar to the trademark BIEHEALTH in which the Complainant has rights.
Therefore the panel finds that the dispute domain name is identical to the trademark in which the Complainants have rights. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest as:
- The Respondent has not been authorized or licensed or otherwise given any permission to any individual or identity including the Respondent to register or use the domain name .
- There are no apparent bona fide offering of goods or services being carried out by the Respondent on the domain name , and the Respondent is apparently intentionally benefiting from the goodwill that the Complainants has acquired in the BIEHEALTH trademark.
- The Respondent is not making a legitimate non commercial use of the disputed domain name and is directing visitors to a website that features online advertising links which belong to the Competitors of the Complainant.
Therefore the panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has advanced grounds for the Panel to ascertain that the impugned domain name is registered and is being used in bad faith:
- The Complainant's use of the mark BIEHEALTH predates the registration of the disputed domain name by the Respondent. Additonally, even though the Complainant's trademark was registered in 2008 and the disputed domain name was registered in 2004 , the Complainant has put enough evidence on record whereby it can be inferred that the Complainants had common law rights in the mark BIEHEALTH before the Respondent registered the disputed domain name . (See Freedom Flag, Inc. dba Falls Flag & banner Co.v. Flags Unlimited,WIPO Case No. D2002-0478).
- The Respondent has been using the domain name in bad faith by advertising sponsored links featuring advertisement of the Complainant's competitors. Further the Respondent has been using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's BIEHEALTH trademark in order to generate pay-per-click advertising.
- The Respondent has been clearly identified as a serial cybersquatter. (See Accolo, Inc. v. St. Kitts Registry,WIPO Case No. D2007-0963, The Professional Golfer Association of America v. Moniker 460461/ Domain Names Administration / St. Kitts Registry,WIPO Case No. D2007-0900, etc. )
The above-mentioned circumstances collectively as well as severally establish that the domain name is registered and used 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.
Pravin Anand
Sole Panelist
Dated: May 27, 2009
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