The Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition of New Jersey, United States of America, represented by Marshall, Gerstein & Borun LLP, United States of America.
The Respondent is Vaidas Radzevicius of Dublin, Ireland, represented by Sean Costello and Company Solicitors, Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2013. On May 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 proceeding commenced on May 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2013. The Response was filed with the Center on May 27, 2013.
On May 31, 2013 the Center received by e-mail a supplemental filing from the Complainant.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 31, 2013. 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 A. Complainant
The Complainant is a company incorporated in the State of New Jersey in the United States of America (the “United States”).
The Complainant is the owner of registrations in numerous jurisdictions worldwide for the trade mark ANIMAL PAK, and is also the owner of registrations in the United States and Australia for the trade mark ANIMAL, and the owner of a registration in the United States for the trade mark ANIMAL BARBELL CLUB (collectively, the “Trade Marks”).
The Complainant is also the owner of the domain name . B. Respondent
The Respondent is an individual based in Ireland. C. The Disputed Domain Names
The disputed domain name was registered on December 21, 2010.
The disputed domain name was registered on February 29, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was incorporated in 1983 and is one of the leading providers of sports nutrition health products in the world. It has registered the Trade Marks in respect of dietary food supplements, nutritional supplements comprised of but not limited to vitamins, minerals and training nutrients in International Class 5, and other related goods and services in International Classes 25, 29, 31, 35, and 41.
The Complainant’s sales constitute at least 4% of the sports nutrition health market in the United States and at least 7% of the global market. The Complainant’s sales volume has been more than USD 20 million per year since 2003. The Complainant spends more than USD one million each year on advertising. The Complainant’s ANIMAL PAK products have received many awards, including BodyB’s
Multi-Vitamin of the Year (2005-07), Best Ads of the Year (2005-06), and Joint Health Supplement of the Year (2006-07).
The Complainant has had a web presence using the Trade Marks since at least 2000. The Complainant registered its domain name on March 17, 2000. The Complainant has used and continues to use the Trade Marks prominently on its website at “www.”.
The Respondent has previously been a customer of the Complainant’s products, but does not otherwise have, and never has had, permission to use the Trade Marks or to register and use the disputed domain names.
The Respondent is also the registrant of the domain name that is the subject of a pending ieDRP complaint filed with the Center simultaneously with this proceeding.
The Respondent registered the disputed domain names more than ten years after the Complainant registered its domain name, nearly 30 years after the Complainant began using its ANIMAL and ANIMAL PAK trade marks, and three years after the Complainant’s first use of its ANIMAL BARBELL CLUB trade mark.
The Respondent is using the disputed domain names to market products and services that are in direct competition with the Complainant’s products and services. The website to which the disputed domain name is resolved markets and sells sports nutrition health products in competition with those of the Complainant. It also contains a link to a website which purportedly sells the Complainant’s products. The disputed domain name is resolved to a website for a fitness centre.
The disputed domain names are confusingly similar to the Trade Marks.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known by the disputed domain names and is not making bona fide commercial use of the disputed domain names, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names have been registered and used in bad faith. The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant. The Respondent is also using the disputed domain names in order to intentionally attract the Complainant’s customers by creating a likelihood of confusion. B. Respondent
The Respondent made the following submissions in the Response.
The Respondent owns and operates a stand-alone gym in Dublin, Ireland named “Animal Barbell Gym”, established in December 2011. The gym has approximately 800 members and its turnover for its first year was EUR 100,000.
The Respondent named the gym and registered the disputed domain name without being aware of the Complainant’s use of the name ANIMAL BARBELL CLUB.
In 2006, the Respondent began placing regular large orders with the Complainant for its products and enquired into the possibility of becoming an agent or recognised distributor of the Complainant in Ireland. The Respondent registered the domain name in 2006 and sought to have the website to which this domain name was resolved organised in compliance with the Complainant’s standards and regulations, through correspondence with the Complainant’s Senior Account Executive. In September 2006 the Respondent requested a jpeg file of the Complainant’s ANIMAL logo and this was provided to the Respondent by the Complainant’s Senior Account Executive on September 8, 2006.
By email dated June 19, 2009 the Complainant’s Brand Manager asked that the disputed domain name be transferred to the Complainant “since it is our trademark”, and offered to pay the transfer fees.
The Respondent distributed the Complainant’s products for 6 years in the Irish market using the website “www.” without any issue being raised regarding the use of the domain name.
In December 2001 the Complainant’s Senior Account Executive again asked the Respondent to transfer the domain name to the Complainant and offered to pay the transfer fees.
In an effort to attract more customers in Ireland to his website which sold the Complainant’s products, the Respondent registered the disputed domain name on February 29, 2012.
The Respondent took every reasonable step to ensure that he was complying with the Complainant’s standards, but the Complainant refused to clarify the Respondent’s queries as there would be too much red tape involved and instead allowed the Respondent to carry on his business for 6 years without raising any objection regarding the Respondent’s “www.” website within this period.
It cannot be denied that the disputed domain names are identical or confusingly similar to the Trade Marks.
However, the Respondent has operated his business which distributes the Complainant’s products for a period of 8 years and has formed a legitimate expectation that he has been conducting his business in an orderly manner.
The Complainant and the Respondent are not competitors and the disputed domain names were not registered by the Respondent primarily to disrupt the Complainant’s business.
The Respondent’s gym is a small establishment that clearly does not seek to compete with the Complainant’s ANIMAL BARBELL CLUB. The Complainant’s ANIMAL BARBELL CLUB is a social club whereas the Respondent’s ANIMAL BARBELL is a gym.
The disputed domain names were not registered in an intentional attempt to attract for commercial gain Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of products or services on the Respondent’s websites. C. Complainant’s Supplemental Filing
The Complainant requests that the Panel exercise its discretion to allow the Complainant’s supplemental filing on the grounds of fairness and in order to allow the Complainant a fair opportunity to present its case.
The Complainant asserts that the Respondent has in the Response selectively exhibited excerpts from 9 distinct email strings of correspondence between the Respondent and representatives of the Complainant,
which excerpts were selectively chosen and do not reflect the full extent of the relevant communications between the parties. As a result, the Complainant requests that the Panel accept the Complainant’s supplemental filing, which the Complainant asserts, will complete the evidentiary record submitted by Respondent.
The Complainant submits that the Respondent attached the selected email messages to suggest permission by the Complainant to register and operate the disputed domain names when in fact no such authorization existed. Instead, the Complainant contends that the complete record shows continued efforts by the Complainant to reach settlement for transfer of the domain name since 2009. The Complainant submits that, notably, during those discussions - and while on notice of the Complainant’s desire to control domain names incorporating its Trade Marks - the Respondent proceeded to register on December 21, 2010, and on February 29, 2012. The Complainant contends that registration in such circumstances evinces not authorization from the Complainant, but bad faith on part of Respondent.
The email communications exhibited with the Complainant’s supplemental filing which were not included in the Response include the following:
1. An email dated June 19, 2009 from the Complainant’s E. Schwartz, seeking information about websites and domain names using the Complainant’s Trade Marks;
2. The Respondent’s reply dated June 19, 2009, in which he admits that as of that date, he had
registered only one domain name, ;
3. The response from E. Schwartz of the same date, which contains a request for transfer of ownership of the domain name in exchange for compensation;
4. A January 17, 2012 email from Respondent, in which he writes “I think I would be ok to transfer domain, but not with that kind of deal…” and goes on to propose a USD 5,000 merchandise credit as compensation;
5. An email from the Complainant’s S. Patton dated February 22, 2012, asking “Have you made a decision about this? Please let me know soon.” This was a follow-up to an earlier inquiry made to the Respondent: “Please let me know what amount of money you would be satisfied with for the transfer of the web domain.”;
6. The Respondent’s reply on the same day: “Didn’t think much about it. Got advise (sic) to ask big sum and I know he is right, but as I told you before – I’m not looking to make big bucks from Universal on this.”;
7. Replying to an unrelated question on March 13, 2012, S. Patton asked “Also, is $1,000 acceptable as an offer for the web domain name transfer?”
8. A week later, the Respondent replied and stated, “As for the domain name, that offer is not really acceptable”
9. S. Patton’s response indicated the Complainant’s ongoing efforts to gain control over domains identical to its trade marks, offered sales and marketing support to the Respondent, and noted that “[f]rankly, most of our partners have given us the domain without money changing hands. It is not a lottery ticket.”;
10. The Respondent responded that “As to domain name, I don’t look at it as you called it – lottery ticket:-There few zeros missing from that offer – then I could look at it at as lottery ticket”. 6. Discussion and Findings 6.1. The Complainant’s Supplemental Filing
The consensus view under paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview 2.0”) is that panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response.
The Complainant submits that the email strings exhibited to the Response were selectively chosen, and do not reflect the full extent of relevant conversations between the parties. The Complainant further submits that it could not have anticipated this selective submission of evidence on the part of the Respondent and, as a result, the Complainant requests that the Panel accept and consider the supplemental filing in order to complete the evidentiary record submitted by the Respondent.
In all the circumstances, in the interest of fairness, and given the Complainant’s supplemental filing seeks primarily to fill in the gaps in the Respondent’s evidence of relevant email correspondence between the parties, the Panel determines that it will accept the Complainant’s supplemental filing, principally in order to complete the evidential record.
Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply. However, in all the circumstances of this proceeding, and in particular so that the decision can be rendered and the proceeding concluded expeditiously and without further unnecessary costs being incurred, the Panel determines that it is not necessary for the Respondent to be given the opportunity to file any further materials in reply.
The primary reasons in support of the exercise of the Panel’s discretion in this manner are:
1. The fact that the Panel has determined to include the Complainant’s supplemental filing simply in order to complete the record; and
2. Even if the Panel had elected not to accept the supplemental filing, on the basis of the evidence included in the Complaint and the Response, the Panel would have reached the same determination in this proceeding irrespective of the supplemental filing.
The Panel would also note that the Respondent’s representatives were served with a copy of the Complainant’s supplemental filing at the time of filing, but have chosen not to file any submissions with respect to the supplemental filing, nor have the Respondent’s representatives otherwise sought approval for the filing of any evidence in reply. 6.2. Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through registration and use which predate the date of registration of the disputed domain names by many years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
There can be no doubt that the disputed domain names are confusingly similar to the Trade Marks and indeed the Panel notes this has been conceded by the Respondent in the Response.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain name by several years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
There is no evidence of the Respondent having obtained any relevant trade mark rights in respect of the disputed domain names.
The Consensus view under paragraph 2.3 of the WIPO Overview 2.0 as to whether a reseller or distributor of trademarked goods or services can have rights or legitimate interests in a domain name which contains such trade mark is as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant's relationship with the trade mark holder The respondent must also not try to “corner the market” in domain names that reflect the trade mark…”
As regards the disputed domain name , on the evidence, none of the relevant factors in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which suggest that, in certain limited circumstances, the use by a reseller or distributor of a third party’s trade mark in a domain name may amount to a bona fide offering of goods or services, have been fulfilled in this proceeding. There is no disclaimer on the Respondent’s relevant website, nor does the site only sell the Complainant’s goods. In fact it sells good of third party competitors of the Complainant.
Given the history between the parties, the Panel finds the Respondent’s assertions as to his reasons for registering the disputed domain name in December 2012 not at all convincing.
As regards the disputed domain name , on the evidence, the assertion of the Respondent that, notwithstanding his long association with the Complainant since 2006, and notwithstanding the ongoing negotiations regarding transfer of the domain name, he had never heard of the Complainant’s ANIMAL BARBELL CLUB trade mark before he registered the disputed domain name and commenced operation of his gym in December 2011 is not credible. In any event, the Complainant’s use of its ANIMAL BARBELL CLUB trade mark predates the Respondent’s registration and use of the disputed domain name by several years. On the evidence, the Panel concludes the Respondent has not established any relevant rights or legitimate interests in respect of this domain name.
There has been no evidence which this Panel regards persuasive adduced to show that the Respondent has been commonly known by the disputed domain names for purposes of the Policy.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant has filed cogent evidence to suggest the Respondent has, without the authorization or approval of the Complainant, registered and used the disputed domain names which, on the Respondent’s own admission, are confusingly similar to the Trade Marks. Furthermore, the disputed domain names were registered several years after the Respondent first commenced selling the Complainant’s products in Ireland and registered the domain name (in 2006) without the authorization or approval of the Complainant, and in circumstances where the Complainant had been endeavouring since at least June 2009 to negotiate transfer of this domain name to the Complainant.
Such use of the disputed domain names amounts to clear evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Having found bad faith made out under paragraph 4(b)(iv) of the Policy, it is not necessary for the Panel to make a determination in respect of the Complainant’s alternative submission, under paragraph 4(b)(iii), that the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant’s competing business. For the sake of completeness, however, had it been necessary to do so, on the evidence and in all the circumstances of this proceeding, it is unlikely the Panel would have made a finding of bad faith under this particular section of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 14, 2013
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