Complainant is Vitamin World, Inc. of Ronkonkoma, New York, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Rob Shibley, Net Partner Services, LLC of Norfolk, Virginia, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2016. On January 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2016, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 3, 2016.
The Center verified that the Complaint together with the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 26, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 7, 2016. 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 manufactures vitamin supplements, mineral supplements, herbs and botanicals, other specialty supplements, sports nutrition products, diet and lifestyle essentials, and health and beauty products.
Complainant's products have been sold in association with its trademark and trade name VITAMIN WORLD for over 40 years, since at least as early as 1974. Complainant's VITAMIN WORLD mark has been registered with the United States Patent and Trademark Office since at least 1976. Complainant has expended significant resources in the promotion and advertisement of its VITAMIN WORLD trademark.
Complainant currently has 385 retail stores located throughout the United States, including in Puerto Rico, Guam, and the U.S. Virgin Islands. In addition to its retail stores, Complainant also provides consumers around the world with the ability to shop online through its website "". Complainant has a global consumer market base. Every month, Complainant ships more than 100,000 products ordered through its "" website to over 15,000 households.
Respondent is not affiliated with the owner of the VITAMIN WORLD mark, and is not licensed to use Complainant's VITAMIN WORLD mark or to register or use domain names incorporating that mark.
Respondent registered the Disputed Domain Name on March 25, 2015. The Disputed Domain Name resolves to a retail website featuring health and beauty products and nutritional supplements for sale, including muscle supplements, male enhancement supplements, and brain health supplements. 5. Parties' Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant's VITAMIN WORLD trademarks because the only difference is an obvious misspelling of Complainant's well-known mark VITAMIN WORLD with the mere addition of the hyphen and non-distinctive suffix ".com". Accordingly, Complainant argues that the use of the Disputed Domain Name is likely to lead consumers to believe that there is a connection between the Disputed Domain Name and Complainant. Complainant also contends that Respondent's unauthorized registration and use of the Domain Name has resulted in actual confusion, presenting evidence that Complainant received at least one complaint from a customer who requested a refund from Complainant after making a purchase from "www.".
Complainant alleges that it has not authorized, licensed, or otherwise permitted Respondent to use its VITAMIN WORLD trademarks or to apply for any domain name incorporating the marks. Complainant also argues that Respondent has never been commonly known under the Disputed Domain Name, and is not using the disputed Domain Name in connection with any bona fide offering of products or services.
Further, Complainant alleges that Respondent's conduct is in bad faith because Respondent used the Disputed Domain Name for the purpose of disrupting the business of Complainant, a competitor of Respondent, and for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent's website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the Disputed Domain Name is confusingly similar to Complainant's marks, Respondent has no rights or legitimate interests in the Disputed Domain Name, and Respondent registered and used the Disputed Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant established that it has made extensive use of the VITAMIN WORLD trademark registrations obtained in the United States and throughout the world. Complainant's federal trademark registrations and widespread use, advertising, and promotion of one or more of its marks sufficiently establish rights in the marks pursuant to paragraph 4(a)(i) of the Policy.
The Disputed Domain Name is confusingly similar to Complainant's VITAMIN WORLD trademarks. A domain name that contains a common or obvious misspelling of a trademark (often termed "typosquatting") is confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. See, e.g., Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775 (transferring , , and to complainant Wachovia Corporation); E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043 (transferring to complainant E, Inc.); Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971 (transferring to complainant Fuji Photo Film U.S.A.: "Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark (so-called 'typo-squatting'), by adding, deleting, substituting or reversing the order of letters in a mark."). The use of an abbreviation to substitute for part of the trademark does not sufficiently distinguish the resulting domain name from the mark. See, e.g., Express Messenger Systems, Inc. v. Golden State Overnight,WIPO Case No. D2001-0063 ( is confusingly similar to the CALIFORNIA OVERNIGHT mark); Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts,WIPO Case No. D2001-0381 (, , and are confusingly similar to the WALL STREET JOURNAL mark).
The dominant and immediately striking element in the Disputed Domain Name is an obvious abbreviation of Complainant's well-known VITAMIN WORLD trademark, the use of which is likely to lead consumers to believe there is a connection with Complainant. The mere addition of the hyphen and nondistinctive Top-Level Domain ".com" in this case is insufficient to distinguish the Disputed Domain Name from Complainant's VITAMIN WORLD trademarks.
Respondent does not rebut the above showing or make any contrary claim or assertion. Accordingly, the Disputed Domain Name is confusingly similar to the VITAMIN WORLD trademarks in which Complainant has rights, and thus the first condition of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
Respondent has no rights to or legitimate interests in the Disputed Domain Name. Complainant has not authorized, licensed, or otherwise permitted Respondent to use its VITAMIN WORLD trademarks or to apply for any domain name incorporating its trademarks, or any variation or abbreviation of its marks. Further, Respondent has never been commonly known under the Disputed Domain Name. Nor is Respondent using the Disputed Domain Name in connection with any bona fide offering of products or services.
The Disputed Domain Name resolves to a retail website featuring nutritional supplements and health and beauty products. Respondent used this website to trade on the reputation of Complainant's VITAMIN WORLD trademarks in order to sell supplements and products similar to those sold by Complainant. Offering services that are either in direct competition with Complainant or as a means of committing fraud upon customers who think that they are dealing with Complainant is not a bona fide offering of goods or services. See, e.g., FIL Limited v. , Domain Discreet Privacy Service / Igor Ivanov,WIPO Case No. D2014-0131. On the facts of this case, it is plain that Respondent was or ought to have been well aware of Complainant's rights in the VITAMIN WORLD marks, such that the use of the Disputed Domain Name cannot constitute a bona fide use.
Respondent does not rebut the above showing or make any contrary claim or assertion. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The evidence indicates that Respondent registered the Disputed Domain Name for the purpose of disrupting the business of Complainant, a competitor of Respondent, and used the Domain Name for the purpose of intentionally attracting Internet users for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement by Complainant of Respondent's website. Accordingly, the Disputed Domain Name was registered and is being used in bad faith.
In view of the extensive use of Complainant's VITAMIN WORLD trademarks, the choice of the Disputed Domain Name by Respondent could not have resulted from a mere coincidence. The Disputed Domain Name is used to sell products that are competitive with Complainant's products. By virtue of the unauthorized diversion of Internet traffic, the valuable goodwill subsisting in the VITAMIN WORLD marks was and continues to be harmed, constituting a disruption to Complainant. Under the circumstances, it is reasonable to infer that Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Complainant has established that Respondent knowingly and purposefully chose a domain name that was an obvious abbreviation of Complainant's VITAMIN WORLD trademarks. Respondent's unauthorized registration and use of the Disputed Domain Name resulted in actual confusion, as evidenced by Complainant's receipt of at least one complaint from a customer who requested a refund from Complainant after making a purchase from "www.". Accordingly, Respondent has derived financial benefit from the diversion of web traffic intended for Complainant.
Respondent does not rebut the above showing or make any contrary claim or assertion. The Panel finds that the Disputed Domain Name was registered and is being used in bad faith pursuant to 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 Complainant.
Michael A. Albert
Sole Panelist
Date: March 21, 2016
Full & Egal Universal Law Academy