The Complainant is Nature's Way Products, LLC of Green Bay, Wisconsin, United States of America, internally represented.
The Respondent is Symbiant of Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland (the U.K.). 2. The Domain Names and Registrar
The disputed domain names , , and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2013. On the same day, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. Also on December 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the first amended Complaint on December 24, 2013 and the second amended Complaint on January 4, 2014.
The Center verified that the second amended 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 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2014. The Response was filed with the Center on January 10, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 30, 2014. 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.
On February 11, 2014, the Complainant emailed the Center a proposed supplementary submission. This inevitably led to a proposed rebuttal from the Respondent which was received by the Center on February 12, 2014. Later that day and following receipt of that communication, the Center received a further purported supplemental filing from the Complainant. The Respondent in turn sought to deny the allegations made in that communication by email received by the Center on February 17, 2014 after this decision had been submitted. 4. Factual Background
The Complainant is a U.S. corporation in the business of manufacturing and distributing over-the-counter vitamins, dietary supplements and other health products.
It has provided evidence of large number of trademark registrations in many countries for NATURE’S WAY or NATURE’S WAY and leaf design. The earliest registration to which it draws specific attention dates from 1985, U.S. Trademark No. 1356165. The list of registrations it provided in Annex 5 to the Complaint includes some earlier registrations in other countries.
The evidence provided does not identify the form of the registrations such as the representation of the mark in the case of the “leaf design” marks. The details submitted do not identify the classes the trademarks are registered in or the specifications of goods or services. The Complaint does state, however, that “many are directed to vitamins and nutraceuticals”.
Consistently with the dates of some of its registered trademarks, the Complaint states that the Complainant has used its NATURE’S WAY trademark for “decades to distinguish its hundreds of products that are sold throughout the world.” The Complainant has sales far exceeding one-hundred million dollars in annual sales and states it advertises its products in all parts of the world. As a result of its expenditure of considerable time and money advertising and promoting its products by reference to its trademarks, it has become one of the world’s leading providers of vitamins, supplements and other herbal medicines.
When the Complaint was filed and at the time the Decision is being prepared, three of the disputed domain names resolve to a website “Nature’s Way Diet Products” which appears to be offering for sale a product known as “Laminaria Extract – The Worlds No1 Natural Diet Pills”. Attempts to access any website to which resolves result in a message “No Access. You are not authorised.” A fifth domain name, , which was originally included in the Complaint but excluded by the second amended Complaint, also resolves to the “Nature’s Way Diet Products” website. 5. Discussion and Findings
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant’s request to file a supplemental filing and the subsequent filings.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
In the present case, the Complainant submitted the Supplemental Filing on February 11, 2014 more than one month after the Response was submitted and two days before the Panel was due to render its decision. The Complainant has not sought to explain this long delay. In light of this failure and the very advanced state of the proceeding, therefore, the Panel does not admit the proposed Supplemental Filing into the record. As a result, it is also not necessary to admit the Respondent’s proposed rebuttal or the further communications.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of any of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the particular disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of that disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish to succeed against a particular disputed domain name is that it is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The second part of the inquiry requires consideration of each disputed domain name on its own terms: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046.
The Complainant has proven ownership of registered trademarks for NATURE’S WAY and NATURE’S WAY and leaf design referred to in section 4 above. As mentioned above, the precise form of each mark and the goods or services for which they have been registered has not been demonstrated. That is not a concern on this part of the inquiry, however, as on the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proven trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component, “.com”, “.net”, “.biz” and “.info” of the disputed domain names as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, above, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The visual difference between two of the disputed domain names – the “.biz” and “.info” domain names – and the Complainant’s registered trademark, NATURE’S WAY, therefore, is the omission of the apostrophe and the absence of the space between the two words. In the third disputed domain name – the “.com” domain name, the apostrophe is omitted and the space has been replaced by a hyphen. The apostrophe is not a permitted character in any of these gTLDs. In addition, all three disputed domain names are aurally the same as the registered trademark for NATURE’S WAY.
The Respondent points out that NATURE’S WAY is itself an ordinary English expression of a kind that no-one can have exclusive rights over. While the Panel accepts that it is, or can be, an ordinary English expression, the Respondent’s argument does not address the fact that the Complainant has a large number of trademark registrations for the expression, many of them in countries where English is not the official or main language. It may be that in some cases small differences between the trademark as registered and a domain name would be sufficient to avoid a finding of confusing similarity where the trademark is for a descriptive term or expression. There are at least two difficulties with that proposition in the present case.
First, the presence or absence of an apostrophe or a space, or the substitution of a hyphen for a space, would not typically be elements that would dispel the potential for confusion between a trademark and another sign, particularly bearing in mind the structure of domain names and the practices around their registration. In this case, the Panel considers that a notional Internet browser who was aware of the Complainant’s registered trademark for NATURE’S WAY would readily draw a connection between them. Accordingly, they are at least confusingly similar.
Secondly, as noted above, this inquiry simply requires a comparison between the sign constituting the proven trademark and the alpha-numeric string embodied in the disputed domain name. Questions about the meaning, if any, of the alpha-numeric string and the motivations for its adoption and use can be more readily accommodated under the other elements of the Policy.
The fourth disputed domain name, , is somewhat more removed. Assuming it does convey meaning (which would not always be necessarily the case), it could suggest a range of terms or expressions. Nonetheless it could readily be seen as a contraction of NATURE’S WAY, particularly to someone who was familiar with the Complainant’s trademark or was notionally assumed to be familiar with it. The Panel considers that suggestion is sufficient to qualify this disputed domain name as confusingly similar to the Complainant’s trademark, NATURE’S WAY.
Accordingly, the Panel finds that the Complainant has established that each of the disputed domain names is confusingly similar to the Complainant’s trademark, NATURE’S WAY, and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant states that the Respondent has no association with it and has not been authorized by it to use or register its trademark in a domain name. In addition, the Complainant contends that there is no connection between the Respondent’s name or business and NATURE’S WAY. The Complainant further says that the Respondent is a software development house based in the UK and goes on to assert that the Respondent is in the business of registering domain names that incorporate trade names and trademarks of other entities. It is not clear what trade names or trademarks (other than the Complainant’s own NATURE’S WAY and NATURE’S WAY and leaf design trademarks) the Complainant bases this assertion on. However, the Complainant does support the allegation by reference to a chain of correspondence between a representative of the Complainant and the Respondent from which it could be inferred that the Respondent would be prepared to sell the disputed domain names for a sum in excess of GBP 100,000.
The central point made by the Respondent is it registered and manages the disputed domain names on behalf of a client, Natures Way Products Ltd, which operates diet or weight loss clinics and sells online its dieting product. According to the Respondent, it has been acting in this capacity for some 14 years since 1999 when the Respondent first registered for Natures Way Products Ltd the domain name .
While the Complainant contends that its trademark rights cover the territory in which the Respondent is located, the U.K., the Respondent points out that none of the Complainant’s registered trademarks extended to the U.K. or Australia, the two countries where the Respondent says its client was operating, when the Respondent’s client engaged it to register domain names for this business and, further, that the Complainant’s U.S. trademarks registered before 1999 extend only to “bottled water, mineral water, fruit and vegetable juices, vitamins, minerals and dietary supplements sold in the USA” and not weight loss clinics or weight-loss products in the U.K. or Australia.
Annex 5 to the Complaint does not include any registered trademark in the U.K. or Australia. It does include registered trademarks in some European countries such as France, Spain and others which do not of course extend to the U.K. or Australia. It does also include two trademark registrations for Community Trademarks and a pending application which do, or would, extend to the U.K. The earlier of these, No. 98442, for NATURE’S WAY was registered on March 14, 2000 from an application filed on April 1, 1996. The other registration dates from an application filed in 2013, well after the Respondent claims its client started its business.
The Panel is not able to confirm from the materials filed by either party precisely what goods or services are specified in the registered trademarks relied on by the Complainant. The Panel could have undertaken searches of some of the Registers to ascertain them, or requested them from the parties. The Panel notes, however, that the Complainant bears the onus of proof and has not provided the foundation evidence. While the Complainant sought to file a supplemental submission, that submission did not seek to dispute the accuracy of the Respondent’s claims about the scope of the Complainant’s registered trademarks. In the end, the Panel has concluded that these further details are unnecessary in this case.
The Response has not included any certificates of incorporation of the Respondent’s client, Natures Way Products Ltd, or agreements between the two entities. Annex 1 to the Response, however, is what purports to be a letter from the principal of Natures Way Products Ltd, Steven Crowther, confirming that the disputed domain names were registered for it by the Respondent 14 years ago. The Response also includes links to the Wayback Machine purporting to show that the websites or their predecessor have been active since 1999. These links were not active in the Response as filed.
A search of the disputed domain names (other than ) on the Wayback Machine, however, has “archive” websites for them dating back variously to 2004, 2002 and 2000 which in some cases redirect to “archives” of the websites to which the domain name resolved. The webpages at these “archived” sites appear to be for the same business as that to which the disputed domain names (other than ) currently resolve.
The domain name was originally included in the Complaint, but removed in the amendment rounds after receipt of the Registrar’s verification response. It is registered in the name of “Nature’s Way”, but has a number of other details in common or which appear closely connected with the administrative and technical details in the WhoIs information for the disputed domain names.
The Respondent also points out that it has registered and manages a number of other “Nature’s Way” domain names on behalf of its client which are not the subject of this Complaint.
The letter included in Annex 1 to the Response, the evidence of “archived” websites which is available through the Wayback Machine and the obvious connections between the business represented on those “archived” sites and the business on the websites to which the three active disputed domain names resolve, however, provide considerable corroboration for the Respondent’s explanation of how and for whom the disputed domain names came to be registered.
On the basis of the record in this case, therefore, the Panel finds that the Respondent registered the disputed domain names on behalf of its client, Natures Way Products Ltd. Accordingly, the existence of rights or legitimate interests in the disputed domain names falls to be determined on the basis of the Respondent’s client.1
Taken together, the corroborating materials referred to above indicate that the Respondent’s client has been operating its business without interruption or challenge in Australia and the U.K. for 14 years. This would appear to qualify the Respondent’s client for the rights or legitimate interests indicated in terms of either or both of paragraphs 4(c)((i) or (ii) of the Policy and, in respect of the disputed domain name paragraph 4(c)(ii).
In this connection, the Panel notes that the Respondent points out that the expression “Nature’s Way” is a common English expression in widespread everyday use. The denial in the Response of any knowledge of the Complainant’s trademark when the business name and disputed domain names were adopted is therefore not inherently implausible.
In its proposed supplemental filing (which the Panel has excluded), the Complainant pointed to earlier communications between one of its officers (using a gmail account) and both the Respondent and Mr. Crowther in which the latter states that his company rent the domain names from the Respondent. The email from the Respondent to the gmail account is rather more equivocal. Arguably, Mr. Crowther’s email could be used as some sort of prior inconsistent statement to contest the veracity of what is said in the letter included in Annex 1 to the Response. Whether such a short response to an unsolicited inquiry would have that effect would need to be tested through cross-examination, a process unavailable in these proceedings.
The Panel accepts that some of the explanations or justifications offered by the Respondent for the different WhoIs details and its conduct in responding to the unsolicited inquiry about the availability for sale of the disputed domain names may be thought confusing or less than convincing. Nonetheless, the evidence in this proceeding including the websites “archived” on the Wayback Machine in particular demonstrate that the Respondent’s client has been operating its business for 14 years (and, if the materials on the website as “archived” as early as October 8, 2000 are right, from at least June 1997 if not earlier). The difficulties the Complainant seeks at this very late stage to invoke do not change that central fact.
The Complainant says it has only recently discovered the Respondent’s registration of the disputed domain names. It is not clear from the record what “recently” means in this context. Be that as it may, the Panel notes the explanation of the role of paragraph 4(c) given in the Second Staff Report2 as encapsulated by the Panel in Action Sports Videos v Jeff Reynolds,WIPO Case No. D2001-1239.
“The Panel does not believe it is the function of the Policy to serve to disentangle the conflicting rights of parties to a mark once it is apparent that both parties have colorable claims to a mark underlying a disputed domain name.”
In the present case, the Panel cannot dismiss the explanation offered by the Respondent and its client showing the use of the disputed domain names, apparently derived from the Respondent’s client’s own name, over such an extended period in connection with an apparently good faith offering of goods and services. Accordingly, the Panel finds that the Complainant has not established the second requirement under the Policy. C. Registered and Used in Bad Faith
In view of the Complainant’s failure to establish the second requirement under the Policy, the Complaint must fail and so it is unnecessary to consider this requirement. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: February 13, 2014
1 In this respect, the Panel notes that it is not exactly unusual for service providers to register domain names for clients in their own names rather than their clients’. In such cases, the Panel considers that the approach applicable for Privacy or Proxy registration services is equally applicable: WIPO Overview 2.0, paragraph 4.9.
2 ICANN, Second Staff Report on Implementation documents for the Uniform Dispute Resolution Policy, paragraph 4.1(c).
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