The Complainants are Glanbia Nutritionals (Ireland) Limited, Ireland, and Optimum Nutrition, Inc., the United States of America (“United States”), represented by Dentons Europe AARPI, France.
The Respondent is Protection of Private Person / Sergei Golovin, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 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 the Complainants on July 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 2, 2019, by Center. On August 2, 2019, the Center transmitted an email in English and Russian to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on August 2, 2019. On August 3, 2019, the Respondent requested that Russian be the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on August 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2019. The informal Response was sent on August 28, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on September 4, 2019. 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 Glanbia Nutritionals (Ireland) Limited is an Irish company established in 1948 and affiliated with Glanbia Performance Nutrition, a leading manufacturer of food, sports nutrition and dietary supplement products under various brand names. Glanbia Performance Nutrition is a subsidiary of a leading dairy and nutritional ingredients group, which collectively owns and operates many premium sports nutrition companies including the Complainant Optimum Nutrition, Inc., founded in 1986, which manufactures and markets in the United States a full range of performance nutrition products in nearly 10,000 specialty retail stores, gyms and fitness centers, major grocery chains and drug stores. The products of the Complainant Optimum Nutrition, Inc. are also distributed in over 130 countries worldwide, including in the European Union and in the Russian Federation.
The Complainant Glanbia Nutritionals (Ireland) Limited is the registered owner of the following trademark registration for the sign “ON” (the “ON trademarks”):
- the EU trademark ON with registration No. 8176042, registered on September 9, 2013 for goods in International Class 5;
- the trademark ON with registration No. 555885, registered in the Russian Federation on October 27, 2015 for goods in International Class 5; and
- the trademark ON with registration No. 551020, registered in the Russian Federation on August 21, 2015 for goods in International Classes 5 and 30.
The Complainants operate the domain name , registered on November 1, 2018.
The disputed domain name was registered on May 21, 2019. It resolves to an English language website that offers consumers to check the authenticity of the Optimum Nutrition products they have purchased. 5. Parties’ Contentions A. Complainant
The Complainants submit that the disputed domain name is confusingly similar to the ON trademark in which they have rights. The Complainants point out that the disputed domain name reproduces the ON trademark with the addition of the descriptive element “authentic”, which does not prevent a finding of confusing similarity of the disputed domain name to the ON trademark. The Complainants also point out that the disputed domain name is the exact reverse of the Complainants’ domain name .
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it is not commonly known by the disputed domain name, the registration of the ON trademark preceded the registration of the disputed domain name for years, the registration of the disputed domain name was not authorized by the Complainants, and there is no business relationship between the Complainants and the Respondent.
The Complainants also submit that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of the disputed domain name. The Complainants state that their ON branded products supplied to many parts of the world, including the Russian Federation, Ukraine and Belarus, have a protective sticker with an authentication code. Consumers are encouraged to scratch off the foil from the seal to reveal the code, and then to verify the authenticity of the products by entering the code on the website at www., operated by an affiliate of the Complainants. The disputed domain name resolves to an active website that is an almost exact copy of the website at “www.” and which also offers a way to authenticate products and a list of authorized retailers. Internet users are thus misled into thinking that the Respondent’s website is official and that the products which are verified on it are authentic, when in fact there is no relation between this website and the Complainants.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. They maintain that the Respondent was aware of the Complainants and of the ON trademark and had them in mind when it registered the disputed domain name, because the ON trademark is well-known throughout the world and because the disputed domain name entirely reproduces the ON trademark with the addition of the generic term “authentic”, thus being the exact reverse of the Complainants’ domain name , and the website at the disputed domain name is an almost exact copy of the Complainants’ own website. In addition, the Respondent’s website refers to the Complainant Optimum Nutrition, Inc. when users are invited to tick in a box indicating “I agree to accept promotional offers through email from Optimum Nutrition”.
According to the Complainants, the disputed domain name is being used to copy and mirror the Complainants’ website for a fraudulent scheme that aims at misleading customers into thinking that the products that they have bought from the Respondent are authentic when they are not. Many Internet users attempting to visit the Complainants’ website would reach the Respondent’s website and mistakenly believing that it belongs to the Complainants, they may provide their contact details to the Respondent who may offer them goods instead of the Complainants and earn profit from this. B. Respondent
The Respondent did not submit a formal Response. In its informal email to the Center of August 28, 2019, the Respondent states that the website at the disputed domain name offers the Respondent’s customers an opportunity to verify that the goods supplied to them by the Respondent have been imported from the United States. The Respondent adds that it is not using any registered brands, tradenames, logos or trademarks. 6. Discussion and Findings 6.1. Procedural issue – Language of the proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. It argues that the translation of the Complaint would burden the Complainant and points out that the content of the website at the disputed domain name is in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has objected to the Complainant’s request that the proceedings be held in English. It requests the proceeding to be in Russian with the argument that it has difficulties to communicate in English. As pointed out by the Complainant, the website at the disputed domain name is in English, and the Respondent has confirmed that this website allows the Respondent’s customers to verify the authenticity of the goods they have purchased from the Respondent. This shows that the Respondent communicates with its customers in English, which is sufficient to satisfy the Panel that the Respondent has good command of this language.
Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all Russian language evidence and statements of the Respondent in the case file. 6.2. Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” A. Identical or Confusingly Similar
The Complainants have provided evidence and have thus established that the Complainant Glanbia Nutritionals (Ireland) Limited is the owner of the ON trademark. As summarized in section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. In view of this, the Panel is satisfied that the Complainant Optimum Nutrition, Inc., being and affiliate of the Complainant Glanbia Nutritionals (Ireland) Limited, also has standing to file the Complaint in this proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “on-authentic”. It consists of the elements “on” and “authentic”. The “on” element reproduces the word element of the ON trademark, which is recognizable in the disputed domain name. As summarized in section 1.10 of the WIPO Overview 3.0, to the extent that design elements would be incapable of representation in domain names, the Panel will not take into account the design elements in the ON trademark for purposes of assessing identity or confusing similarity under the first element of the Policy. The “authentic” element is a descriptive word whole inclusion in the disputed domain name does not prevent a finding that it is confusingly similar to the ON trademark.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ON trademark in which the Complainants have rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainants contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it is not commonly known by it, that the registration of the disputed domain name was made years after the registration of the ON trademark and was not authorized by the Complainants, and that there is no business relationship between the Complainants and the Respondent. The Complainants also point out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of the disputed domain name. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not submitted any evidence. It has only stated that the website at the disputed domain name offers the Respondent’s customers an opportunity to verify that the goods supplied to them by the Respondent have been imported from the United States, and that the Respondent is not using any registered brands, tradenames, logos or trademarks.
The disputed domain name incorporates the ON trademark and its elements mirror the elements of the Complainants’ domain name in reverse order. It resolves to an active website that is an almost exact copy of the Complainant’s website at www., and refers to the Complainant Optimum Nutrition, Inc. The Respondent confirms that it uses the website at the disputed domain name to offer authentication services to its clients to whom it supplies products, and the circumstances of the case make it likely that these products either originate from the Complainants or copy their products (the Respondent does not explicitly state whether it is selling original products of the Complainants, and the Complainants have not provided any evidence in this regard).
In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the ON trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill by impersonating the Complainants and to attract Internet users to the Respondent’s website for commercial purposes without the consent of the Complainants. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name fully incorporates the word element of the ON trademark in combination with the element “authentic” which reproduces in reverse order the elements of the Complainants’ domain name . The disputed domain name resolves to an active website that is an almost exact copy of the Complainant’s website at “www.”, and refers to the Complainant Optimum Nutrition, Inc. There is no dispute between the Parties that the website at the disputed domain name offers authentication services for products that either originate from the Complainants or copy their products.
Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainants and targeting the ON trademark. It is likely that by creating a likelihood of confusion with the Complainant’s ON trademark and with the Complainants’ website at “www.”, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainants and are purchasing the Complainants’ products from an online location authorized by the latter, likely for commercial gain.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Complainants.
Assen Alexiev
Sole Panelist
Date: September 17, 2019
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