Complainant is L-Nutra, Inc., of Los Angeles, California, United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, P.C., United States.
Respondent is Private Registration of Denver, Colorado, United States / Clay Womack of Austin, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC 1209 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2019. On February 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2019, the Registrar transmitted by email to the Center its verification response 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 6, 2019, 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 6, 2019.
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 7, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 28, 2019.
The Center appointed Frederick M. Abbott, Carol Anne Been, and Dennis A. Foster as panelists in this matter on March 18, 2019. The Panel finds that it was properly constituted. Each member of 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 is the owner of registration for the word trademark FASTING MIMICKING DIET on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 5,487,435, registration dated June 5, 2018, in international class 5, covering “Dietary supplements; nutritional supplement energy bars”, with application filed November 14, 2016, asserting first use and first use in commerce of December 21, 2017. Said registration disclaims exclusive rights to use the terms “fasting” and “diet” apart from the mark as shown.
Complainant appears to use the FASTING MIMICKING DIET trademark in connection with the marketing and sale of certain nutritional supplements, which appear also to be marketed and sold under other names. Complainant asserts that it has been using the FASTING MIMICKING DIET trademark in commerce since at least as early as December 21, 2017.
According to the Registrar’s verification report, Respondent is registrant of the disputed domain name. According to that report, the disputed domain name was registered in the name of Respondent on December 24, 2017.1
Respondent was an authorized reseller of Complainant’s products pursuant to an agreement with date of last signature of March 1, 2018. Complainant has submitted a heavily redacted copy of a document it refers to as a Referral Agreement, although the document itself includes a running footer referring to it as “L-Nutra Reseller Agreement”. The provisions that have been provided to the Panel include:
“Section 2.01 - License Grant: L-Nutra hereby grants RESELLER, a nonexclusive license to (i) promote and market the Product to Targets during the Term, subject to the terms of this Agreement, (ii) distribute Marketing Materials during the Term for purposes of promoting, marketing and advertising the Product to Targets, subject to the terms of this Agreement, and (iii) use the L-Nutra Marks in connection with promoting, marketing and advertising the Product to Targets during the Term, subject to the terms of this Agreement.”
“Section 5.01 - Ownership: Title to Proprietary Information, including (without limitation) all ownership rights to patents, copyrights, trademarks (including, without limitation the trademarks “PROLON” and “L-Nutra”), service marks and trade secrets in connection therewith, shall be the exclusive property of L-Nutra. RESELLER hereby assigns, transfers and conveys to L-Nutra any and all rights, title and interest RESELLER may have or accrue in the Proprietary Information including (without limitation) any and all ownership rights to patents, trademarks, copyrights and trade secrets in connection therewith. RESELLER shall not alter or modify the Proprietary Information without the prior written consent of L-Nutra.”
Respondent registered and used the disputed domain name in connection with a website that promoted and offered for sale products of Complainant. Complainant has provided evidence that this website was operational from at least February 3, 2018. Respondent’s website included reference to Complainant’s FAST MIMICKING DIET. According to Complainant, it terminated its reseller arrangement with Respondent on November 14, 2018, and requested return of the disputed domain name on that date. There is no evidence on the record of the proceeding as to the reason for Complainant’s termination of the reseller agreement.
By letter of December 12, 2018 (via email and certified mail) Complainant transmitted a cease-and-desist-and-transfer demand to Respondent with respect to the disputed domain name. There is no evidence of a response from Respondent to this demand letter.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the FAST MIMICKING DIET trademark, and that the disputed domain name is identical to the disputed domain name.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent without Complainant’s authorization or consent made an illegitimate commercial use of the disputed domain name with the intent to misleadingly divert consumers from Complainant’s website to Respondent’s own identically named website for commercial gain; (2) while Respondent was an authorized reseller, Respondent was not a trademark licensee of Complainant, and; (3) Respondent was not authorized to register Complainant’s trademark as its own domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name without Complainant’s consent; (2) while Respondent was authorized to resell Complainant’s trademarked goods, the Referral Agreement did not provide authorization for respondent to register the disputed domain name; (3) Complainant terminated its relationship with Respondent after having requested return of the disputed domain name, and Respondent refused; (4) Respondent continues to refuse to transfer the disputed domain name to Complainant, and; (5) Respondent is preventing Complainant from registering the disputed domain name to inhibit Complainant’s sales of its own products since “it is no longer authorized to sell Complainant’s FASTING MIMICKING DIET® goods.”
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier records indicate successful delivery of the Complaint to the address listed in Respondent’s record of registration. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the word trademark FAST MIMICKING DIET based on registration at the USPTO, and through use in commerce (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of rights in the trademark. The Panel determines that Complainant owns rights in the trademark FAST MIMICKING DIET.2
The disputed domain name directly and fully incorporates Complainant’s trademark, removing spaces and adding the generic top-level domain “.com”. The Panel determines that the disputed domain name is identical to Complainant’s trademark from the standpoint of the Policy.
The Panel determines that Complainant has established rights in the FAST MIMICKING DIET trademark, and that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests
The Panel determines in the following section that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith. As a matter of administrative panel efficiency, the Panel foregoes assessment of rights or legitimate interests. C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), 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.” Those are: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s]
documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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.”
Complainant has provided evidence that it entered into a reseller agreement with Respondent on or about March 1, 2018. That reseller agreement post-dates the date on which Respondent registered the disputed domain name. Inter alia, it “grants RESELLER, a nonexclusive license to … use the L-Nutra Marks in connection with promoting, marketing and advertising the Product to Targets during the Term, subject to the terms of this Agreement.” (Section 2.01) Complainant has neither pointed to nor provided any provision of the reseller agreement that restricts or prohibits Respondent from marketing the subject products through the registration of a domain name (including the disputed domain name) incorporating Complainant’s trademarks, the use of which is authorized by license. Complainant has referred to and provided another provision of the reseller agreement pursuant to which it retains ownership of its intellectual property, including trademarks (Section 5.01), and which may require Respondent to transfer ownership interest in intellectual property it may have acquired to Complainant. But, Complainant specifically authorized (i.e. licensed) Respondent to use its trademarks during the term of the reseller agreement. Therefore, while Complainant might have a basis to argue as a matter of contract law that Respondent should transfer the disputed domain name to Complainant following termination of the reseller agreement, this does not establish that Respondent registered the disputed domain name in bad faith.3
Even assuming that Complainant could establish that Respondent is obligated to transfer the disputed domain name to it as a matter of contract law, and/or even assuming that Respondent is currently infringing Complainant’s rights in its trademark, this does not establish that Respondent “registered” the disputed domain name in bad faith. Taking the limited evidence provided by Complainant at face value, the Panel concludes that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith within the meaning of the Policy.
The Panel finally notes that Complainant furnished only two sections of a nine-page reseller agreement, redacting the balance of the agreement. The Panel is constrained from offering any meaningful analysis of the reseller agreement beyond what might be inferred from the two sections that were provided.
Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Presiding Panelist
Carol Anne Been
Panelist
Dennis A. Foster
Panelist
Date: March 27, 2019
1 There is evidence in the record of this proceeding that the initial registration of the disputed domain name took place on November 26, 2017, but without disclosure of the individual registrant. The difference between the December 21, 2017 registration in the name of Respondent and the initial registration date is not material to this proceeding, and the Panel has not sought to further determine the reason for the difference between the two dates.
2 Complainant's trademark was registered on June 5, 2018, which is subsequent to the date the disputed domain name was registered in the name of Respondent. However, as a general proposition in the United States rights in a trademark date back to constructive use established by filing of an application, which was undertaken by Complainant on November 14, 2016 (as an intent-to-use application). Particularly in light of its determination in this proceeding, there is no need for the Panel to further explore the sequencing of the establishment of rights.
3 The Panel further notes that Complainant has provided evidence that Respondent was operating its website under the disputed domain name from at least as early as February 2018, and Complainant did not terminate the reseller agreement and demand transfer of the disputed domain name until November 2018. The Panel considers that Complainant must have been aware, or perhaps was negligently unaware, of Respondent’s use of the disputed domain name for at least 10 months prior to its decision to terminate the reseller agreement and demand transfer of the disputed domain name. To the Panel it appears that Respondent was maintaining its website at the disputed domain name with the consent of Complainant.
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