Complainants are Forever Living Products International Inc. of Scottsdale, Arizona, United States of America and Aloe-Vera of America, Inc. of Dallas, Texas, United States of America (“Complainant”), represented by Quarles & Brady LLP, United States of America.
Respondent is Viktor Mykhayliv of Acton, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CentralNic. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 11 and 12, 2010, the Center transmitted by e-mail to CentralNic and R a request for registrar verification in connection with the Domain Name. On October 12 and 13, 2010, CentralNic and R transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 22, 2010. The Center verified that the Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 October 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2010. Respondent transmitted an e-mail communication to the Center on October 28, 2010, however Respondent did not submit any formal response. Accordingly, the Center notified Respondent of his default on November 15, 2010.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 23, 2010. 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 owns United States and international trademark registrations for the mark FOREVER LIVING PRODUCTS in connection with the personal care products Complainant sells, such as skin and body lotions, bath gels, etc., many of which contain aloe vera. Complainant has held such registered marks since 1982. Complainant also sells its products on the Internet via its main website accessible at .
In the past, Respondent had been an authorized distributor of FOREVER LIVING PRODUCTS goods. According to Complainant, Respondent was never authorized to use the mark in a domain name. Respondent registered the Domain Name in January 2010. Until late April 2010, the website to which the Domain Name resolves featured links regarding various products such as “Aloe Vera Gel,” “Serious Skin Care,” “Aloe Vera Juice,” and so forth.
Complainant alleges that Respondent derives financial gain from such links. 5. Parties’ Contentions A. Complainant
The salient factual contentions of Complainant are set forth in the previous section. Applying these facts, Complainant argues that Respondent is in violation of the three elements required for transfer of the Domain Name under the Policy. B. Respondent
Respondent did not formally reply to Complainant’s contentions. Instead, Respondent sent an e-mail to Complainant’s counsel on October 28, 2010 stating that he had “legally bought the domain name on the legal domain name market where you can find a lot of other ‘forever…living’ names.” Respondent also asked to be left alone. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) your [Respondent’s] Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the Domain Name; and
(iii) your Domain Name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
Complainant clearly has established rights, through registration and longstanding use, in the mark FOREVER LIVING PRODUCTS. The Domain Name is confusingly similar to the mark, as it contains the dominant portion of the mark and omits only the word “products.”
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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.
Complainant alleges, and Respondent does not dispute, that Respondent is not commonly known by the Domain Name, is not making a legitimate noncommercial or fair use of the Domain Name, and did not, prior to notice of the dispute, make demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) you [Respondent] have registered or you have acquired 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
(v) you have provided false contact details to us.
There is no doubt that Respondent, a former distributor of Complainant’s products, had Complainant’s mark in mind when registering the Domain Name. It is also alleged, and not disputed, that Respondent has derived financial gain by virtue of the links on the website to which the Domain Name resolves. As such, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on his website within the meaning of Policy paragraph 4(b)(iv).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Complainant.
Robert A. Badgley
Sole Panelist
Dated: December 3, 2010
Full & Egal Universal Law Academy