Complainant is CCH Nutrition Corporation of Ft. Lauderdale, Florida, United States of America (“U.S.A.”), represented by Lott & Friedland, P.A., U.S.A.
Respondent is Jean Perrin of Fort Lauderdale, Florida, U.S.A. 2. The Domain Name and Registrar
The domain name at issue, , is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on December 22, 2010. On December 23, 2010, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain name. On December 23, 2010, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing contact details and other information pertinent to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on January 19, 2011.
The Center appointed Debra J. Stanek as the sole panelist in this matter on January 25, 2011. 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 a United States federal trademark registration for the mark AMP FLORACEL for vitamin and nutritional supplements. It began using the mark as early as July 20, 2006. It has registered and uses the AMPFLORACEL mark in several domain names consisting of the mark plus the generic top-level domains - “.com,” .org,” “.net,” and “.info.” These domain names were also registered in July 2006.
On August 6, 2006, Respondent registered the domain name, and began using it in connection with a website that offered a competing nutritional supplement.
Respondent refused to transfer the domain name to Complainant and in October 2008, Complainant’s president filed a complaint under the UDRP with the National Arbitration Forum. That complaint incorrectly identified as the complainant AMP Floracel rather than the corporation, CCH Nutrition Corporation that owned the AMP FLORACEL trademark. The complaint was denied because there was no evidence that the named complainant, “AMP Floracel” had any rights in the AMP FLORACEL trademark (the United States registration for which was in the name of Complainant here) as required under the Policy, paragraph 4(a)(i). A second, similar complaint was filed and denied on the grounds of res judicata. Complainant subsequently obtained counsel, who prepared this Complaint. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complaint has been using the marks FLORACEL and AMP FLORACEL for vitamin and nutritional supplements since shortly after it incorporated in July 2006. As a result of Complainant’s extensive Internet advertising, the marks have become strong and internationally-recognized.
Complainant owns United States federal trademark registrations for the marks FLORACEL and AMP FLORACEL. The registration for FLORACEL issued on May 22, 2007, while the registration for AMP FLORACEL issued on October 13, 2009. Each claims a date of first use in commerce of July 20, 2006.
The domain name is confusingly similar to Complainant’s trademarks. The addition of the top-level domain and the omission of the space between the terms “amp” and “floracel” are irrelevant. 2. Rights or Legitimate Interests
Complainant has not authorized Respondent to use the domain name.
According to the “WhoIs” information, Respondent’s name is Jean Perrin, which does not indicate that Respondent has ever been known by the domain name or a related name.
In connection with one of the prior-filed complaints, Respondent asserted that it was making a legitimate and fair use of the domain name to criticize and comment on Complainant’s AMP FLORACEL product. However, use for a website that sells competing products is not a legitimate noncommercial use or fair use. 3. Registered and Used in Bad Faith
Respondent registered the disputed domain name just a few weeks after Complainant incorporated, registered its domain names, and began using the FLORACEL and AMP FLORACEL marks. Respondent began using the domain name to direct visitors to a website that offers “Serovera AMP”, a supplement that competes with Complainant’s product.
Respondent is using the domain name to confuse visitors and prevent them from seeking Complainant’s websites. Further, Respondent directly benefits from such confusion through the sale of its products.
Complainant’s trademarks are well-known in the nutritional supplement industry and as one of its competitors, Respondent knew of Complainant and its marks prior to registering the domain name. Respondent is using its “www.” website to spread misinformation about Complainant’s products including statements such as:
If you are an AMPFloraCel™ user, please see this recommended replacement, SEROVERA® AMP 500 mg.
AMP Floracel Product Review: Save $30.00 Off Your Next Order on SEROVERA AMP 500. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain names, 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).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not objected to the filing of this complaint (following as it does, two prior cases1), made any argument or offered any evidence that might support a finding that Respondent has rights or legitimate interests in the domain name, or provided any evidence on the issue of bad faith. A. Identical or Confusingly Similar
Complainant has established rights in the mark AMP FLORACEL by virtue of its United States trademark registration.
The disputed domain name consists of Complainant’s mark in its entirety. As Complainant notes, for these purposes, the lack of spaces between terms and the addition of the generic top-level domain is irrelevant.
Accordingly, the Panel finds that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
There is no evidence that Respondent has used the domain name in connection with a bona fide offering. To the contrary, the evidence shows that Respondent is using the domain name for commercial purposes – to sell a competing product targeted at users of Complainant’s product. Both the current website and archived pages provided by Complainant show that the site referred specifically to Complainant’s product as “AMPFLORACEL™”, and offered Respondent’s product as an alternative.
There is no evidence that Respondent is commonly known by the domain name, which is registered in the name of an individual.
The Panel concludes that Complainant has established that Respondent lacks any 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 may 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 [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 [respondent’s] web site or location or a product or service on [respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
As noted above, the disputed domain name is identical to Complainant’s mark. It is therefore reasonable to conclude that Respondent’s site would attract visitors who are actually seeking Complainant’s site. Moreover, the content of Respondent’s website makes it clear that Respondent intended to attract such visitors.
Complainant’s evidence establishes that it began using the AMP FLORACEL mark just weeks before Respondent's registration and use of the domain name. Complainant’s United States trademark registrations were not obtained until a few years later. The Panel shares the consensus view that as a general rule, a domain name that is registered before a trademark right has been established cannot be found to have been made in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1.
However, the circumstances presented here justify a departure from the general rule. The references on Respondent’s website to “AMPFLORACEL™” - including use of the trademark designation “™” in connection with the name, is evidence that Respondent had actual knowledge of Complainant’s product and Complainant’s claim of trademark rights in the name and registered the domain name with them in mind. It is equally clear that this was in an effort to attract visitors “by creating a likelihood of confusion with complainant’s mark” for Respondent’s commercial gain. See Policy, paragraph 4(b)(iv).
Under these circumstances, including the adverse inferences that arise from Respondent’s default, the Panel finds that Respondent has registered and used 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: February 7, 2011
1 The Panel had concerns regarding the fact that the Complaint is Complainant’s third effort to recover the domain name from Respondent under the UDRP. However, the prior complaints failed because they were brought in the name of an entity that did not have rights in the mark (and, according to Complainant, that does not exist). In the Panel’s view, those decisions do not bar the current Complaint, which, unlike the prior ones, is brought in the name of the correct complainant.
Full & Egal Universal Law Academy