The Complainant is General Nutrition Investment Company of Wilmington, Delaware, United States of America, represented by McGuireWoods LLP, United States of America.
The Respondent is Kevin of Palos Verdes, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2014. On February 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 19, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 proceedings commenced on February 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2014.
On February 25, 2014, the Center notified the Parties that according to the information provided by the Registrar, the Disputed Domain Name was set to expire on April 7, 2014. The Disputed Domain Name was renewed by the Complaint on March 25, 2014 and remains active for the administrative procedure to continue as required under the UDRP.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 1, 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. 4. Factual Background
The Complainant is an American corporation and a wholly-owned intellectual property investment subsidiary of General Nutrition Centers, Inc. (“GNC”). GNC sells nutritional, diet, energy and sports nutrition products, including vitamin, mineral, herbal, and other specialty supplements. The Complainant is the owner of numerous registered trademarks for GNC, inter alia:
1. GNC, Chinese trademark, Registration No. 5316526 in class 35 registered in 2012.
2. GNC, Hong Kong trademark, Registration No. 300668250 in class 35 registered in 2006.
According to WhoIs data, the Respondent is Kevin. The Disputed Domain Name was registered on April 7, 2012. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name incorporates the Complainant’s GNC trademark in its entirety. The additional feature to the Disputed Domain Name is only the descriptive word “store”, which cannot distinguish the Disputed Domain Name from the Complainant’s GNC trademark. The Respondent’s unauthorized use of the GNC trademark with the mere addition of the non-distinctive word “store” renders the Disputed Domain Name confusingly similar to the GNC trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant and GNC have developed marks that incorporate variations of and additions to the GNC trademark (the “GNC Family of Marks”), including the GNC LIVE WELL trademark. The Respondent is not related to Complainant or GNC in any way. Neither Complainant nor GNC has ever granted the Respondent permission or a license to use the Disputed Domain Name or any of the GNC Family of Marks. The Complainant asserts that the Respondent uses the Disputed Domain Name to display an active website that misleadingly suggests a connection or affiliation with Complainant and GNC, and purports to resell GNC products, without Complainant’s or GNC’s authorization. This is not a bona fide offering of goods or services of the Disputed Domain Name nor is it a noncommercial fair use of the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant and GNC began using the GNC trademark in 1964 and have built the fame of the GNC trademark and international reputation of the GNC Family of Marks over the past fifty years. The Respondent chose to incorporate the GNC trademark as the only distinctive word of the Disputed Domain Name. Because of the fame of the GNC Mark and international reputation of the GNC Family of Marks, the Respondent cannot credibly claim to have been unaware of the existence of the Complainant’s trademarks and reputation before registering the Disputed Domain Name. The Respondent’s bad faith use of the Disputed Domain Name to purportedly sell GNC products on the web site shows that the Respondent was aware of the Complainant’s trademarks when it registered the Disputed Domain Name.
The web site located at the Disputed Domain Name contains no disclaimer regarding the Respondent’s lack of a relationship with the Complainant or GNC. To the contrary, the Respondent has taken explicit steps to falsely suggest an affiliation with GNC, strongly demonstrating the Respondent’s bad faith use of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder is] required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain dame] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it is the owner of the GNC trademark.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Disputed Domain Name incorporates the GNC trademark in its entirety. The only other element incorporated to the Disputed Domain Name is the descriptive word “store”. The GNC element is still immediately recognizable as the Complainant’s trademark. In the Panel’s view, the addition of a descriptive and generic term does not mitigate the likelihood of confusion between the Disputed Domain Name and the Complainant’s GNC trademark. (J. Choo Limited v. Weng Huangteng,WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,WIPO Case No. D2010-0534).
As for the top-level suffix “.asia” in the Disputed Domain Name, it cannot distinguish the Disputed Domain Name from the Complainant’s GNC trademark in the instant case, either.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the conditions of paragraph 4(a)(i) of the Policy have been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder is] required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel … shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(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 trademark 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 trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such primafacie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]”.
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.3 of the WIPO Overview 2.0: “[n]ormally, 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's accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the GNC trademark and claims that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the GNC trademark to register the Disputed Domain Name or any other variations. The Complainant further contends that GNC operates retail shops throughout the world, and that the Respondent is not an authorized dealer of GNC products.
According to the record in the WhoIs database, the name of the Respondent is Kevin, which has no apparent connection to the GNC trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “GNC”. The Complaint also provides screenshots from the web site under the Disputed Domain Name, which establish that the Respondent purportedly offers GNC vitamins and dietary supplements for sale. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any response to the Complaint. The Respondent did not submit any allegation or evidence establishing that the Disputed Domain Name is used in connection with a bona fide offering of goods or services or for noncommercial or fair use. Therefore, there is no allegation or evidence from the Respondent indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy.
Meanwhile, the web site to which the Disputed Domain Name resolves sells vitamins and dietary supplements with the GNC trademark, and does not accurately disclose the Respondent’s relationship with the Complainant. The website to which the Dispute Domain Name resolves contains claims that it is an authorized reseller of the Complainant’s. However, there is no evidence in the case file supporting such claim. The Panel need not decide whether the goods sold on the web site are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Name when it fails to accurately and prominently disclose the relationship between the parties thereby confusing Internet users. (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder is] required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainant’s GNC trademark has been registered in many countries around the world. The Respondent chose the GNC trademark as the only distinctive part of the Disputed Domain Name. According to the screenshots of the web site under the Disputed Domain Name annexed to the Complaint, the Respondent uses the GNC trademark to sell vitamins and dietary supplements. It is obvious that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s GNC trademark. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the GNC string with a generic and descriptive term for any reason other than the reputation of the Complainant’s trademark. The Panel finds that the Disputed Domain Name has been registered in bad faith.
The Respondent uses the GNC trademark on the front page of the web site to which the Disputed Domain Name resolves. The web site sells vitamins and dietary supplements that bear the GNC trademark. There is no indication that accurately and prominently discloses the Respondent’s relationship with the Complainant. The Respondent claims that it is an authorized reseller of the Complainant. It also includes the introduction of the brand history of GNC, as well as several statistics about GNC’s business. The Respondent has intentionally designed the web site under the Disputed Domain Name to create an impression to the Internet users that it is an official web site of the Complainant, or endorsed or sponsored by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: April 15, 2014
Full & Egal Universal Law Academy