Complainant is Grenade (UK) Ltd, United Kingdom, represented by Barker Brettell LLP, United Kingdom.
Respondent is Jinling Wu, China. 2. The Domain Name and Registrar
The disputed domain name (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 August 8, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 20, 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
Complainant is a company registered in England. Complainant owns, inter alia, the following trademark registrations:
GRENADE, International Trademark Registration No. 1030202, registered on October 20, 2009, based on European Union Trademark Application 005182019, filed on July 6, 2006, covering food and dietary supplement, et cetera, in International Class 5.
GRENADE, United Kingdom Trademark Registration No. UK00003137637, registered on March 11, 2016, filed on November 24, 2015, covering personal care products and preparations, et cetera, in International Class 3.
GRENADE, European Union Trademark Registration No. 005182019, registered on April 11, 2007, filed on July 6, 2006, covering food and dietary supplement for sports and performance enhancement, et cetera, in International Class 5, and protein based, nutrient dense snack bars and drinks in International Class 29.
GRENADE, European Union Trademark Registration No. 012722096, registered on August 20, 2014, filed on March 24, 2014, covering diverse goods in International Class 9, gymnastic and sporting articles, apparatus and equipment, et cetera, in International Class 28, and operating, running and management of leisure center, health club, fitness center, et cetera, in International Class 41.
The Disputed Domain Name was registered on December 6, 2018.
The Disputed Domain Name resolves to a website displaying a page where steroids, hormones, and similar products are advertised under the titles “Muscle Grenade” and “The Army Strength”. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to the GRENADE trademark, in which Complainant has rights. The Disputed Domain Name uses the mark GRENADE as a whole. The use of the term “muscle” is purely descriptive, since Respondent’s area of business is selling steroids to help and assist with muscle gain. Therefore, the Disputed Domain Name is very confusingly similar to Complainant’s earlier trademark rights.
Complainant also contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The trademark GRENADE is highly distinctive in respect of the goods and services covered by the registrations of Complainant since 2006. Complainant’s use and registration of the GRENADE marks predates Respondent’s use of “grenade” in the Disputed Domain Name. The GRENADE trademark denotes trade origin of Complainant’s goods and services; it functions as a badge of commercial origin enabling consumers to repeat their purchase of Complainant’s goods and services. Given the longstanding use of the GRENADE trademark by Complainant – and only Complainant or its authorized representatives – this trademark is highly distinctive and representative of Complainant. As such, any use of the GRENADE trademark in respect of nutritional performance-enhancing products, would be considered as being use by either Complainant or someone authorized by Complainant. Respondent’s use of this trademark in the same commercial market, in which Complainant operates, is a clear attempt to piggyback on the reputation of the GRENADE trademark, and to hijack Complainant’s brand.
Complainant argues that the Disputed Domain Name was registered and is being used in bad faith. Respondent has intentionally chosen to use the terms “muscle” and “grenade” in the Disputed Domain Name to create a likelihood of confusion with Complainant’s mark and ultimately, to confuse its consumers into believing that Respondent is in some way affiliated with Complainant solely for commercial gain. Therefore, there is a risk that a consumer may believe the Disputed Domain Name is managed by Complainant, given it manufactures, distributes, and sells nutritional and dietary supplements, in the form of powders, drink mixes, tablets, capsules, beverages, as well as food products, sports performance drinks, energy drinks, weight management products, weight gain products, muscle supplements and performance enhancement products. Respondent is using the Disputed Domain Name to advertise steroid products also used for muscle building.
Complainant says it does not want to be associated with Respondent’s company because possession or sale of steroids without a valid prescription is illegal. Respondent’s website advertises for sale steroids without the need for a prescription, which is illegal. Any association between Complainant and Respondent will be detrimental to Complainant’s brand image.
Lastly, Complainant observes that it was successful in Grenade (UK) Ltd. v. Proxy Protection LLC / Danupon Cilli,WIPO Case No. D2019-0919, where the panel ordered that the domain name be transferred to Complainant. The domain name in issue in that case was virtually identical to the Disputed Domain Name. The contents of both websites was the same and as such, they were clearly operated by the same entity. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts taken from the corresponding official trademark databases, Complainant has shown to the satisfaction of the Panel that it has rights in the GRENADE trademark. See section 4 above.
The Panel notes that the Disputed Domain Name incorporates the GRENADE trademark in its entirety, to which the dictionary term “muscle” and the generic Top‑Level Domain “.net” are added. It is well established that where the relevant trademark is recognizable within the Disputed Domain Name the addition of other terms would not prevent a finding of confusing similarity under the first requirement of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Panel concludes that the Disputed Domain Name is confusingly similar to Complainant’s trademark GRENADE. B. Rights or Legitimate Interests
According to the relevant data on the corresponding WhoIs database, the name of the registrant of the Disputed Domain Name is “Jinling Wu”. There is no evidence that this person is known – commonly or otherwise – by the name “Muscle Grenade”. Therefore, prima facie the application of Policy paragraph 4(c)(ii) should be discarded.
The Panel notes that at the Disputed Domain Name resolves to a website on which various drugs and products presumably intended for developing physical fitness are being advertised, including drugs or products presumably used for muscle building, growth, or nutrition.1 According to Complainant, Respondent's advertising of anabolic steroids for sale without the need for a prescription is illegal, while possession or sale of anabolic steroids without a valid prescription is equally illegal. Complainant says it does not want to be associated with Respondent’s company because any such association would be detrimental to Complainant’s brand image.
The Panel notes that rather than offering products to end-users, the website at the Disputed Domain Name appears to call for resellers or agents in various countries. Within the limited scope of these proceedings, the Panel cannot determine the nature, quality, or legality of the drugs and products advertised or offered on the website at the Disputed Domain Name. However, the fact remains that, as shown by Complainant, such products are being advertised on a website at a domain name confusingly similar to Complainant’s mark, without any evidence of authorization or license from Complainant, and in competition with Complainant’s Grenade products. Moreover, on the website at the Disputed Domain Name there is no disclaimer as to the lack of any relationship to Complainant. Since Internet users presumably looking for Complainant’s Grenade products can easily be misled by the website at the Disputed Domain Name, the Panel concludes that Respondent is not making a bona fide offering under Policy paragraph 4(c)(i) or a fair or legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers, under Policy paragraph 4(c)(iii).
Thus, Complainant has succeeded in raising a prima facie case that Respondent lacks any rights or legitimate interests in the Disputed Domain Name. Since Respondent failed to present the Panel with any arguments or reasons for having registered and using the Disputed Domain Name as shown, the Panel finds that Respondent does not have any rights or legitimate interests in the Disputed Domain Name. See WIPO Overview 3.0., section 2.1 (“… (W) here 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.”) C. Registered and Used in Bad Faith
Complainant has shown that its registrations for the GRENADE trademark, with a first filing in July 2006, predate the registration of the Disputed Domain Name by several years. See section 4 above. The Panel also notes that in the Disputed Domain Name the term “muscle” is added to Complainant’s mark GRENADE, thus pointing to goods clearly covered by this mark, i.e., muscle-developing drugs and dietary products in general. In addition, the products advertised on the website at the Disputed Domain Name are being offered in competition with the products covered by Complainant’s trademark registrations. From these facts and circumstances, the Panel concludes that Respondent knew of, and targeted Complainant at the time of registering the Disputed Domain Name. In the circumstances of this case, this means that the registration of the Disputed Domain Name was in bad faith.
The Disputed Domain Name resolves to a website on which, under the legends “Muscle Grenade” and “The Army Strength”, various drugs and products in competition with Complainant are being offered without any authorization or license from Complainant, and without clearly disclosing its relationship with Complainant (if any).
As stated at section 6.B. above, within the narrow scope of these proceedings and on the available evidence, the Panel cannot determine whether Respondent’s storage or sale of anabolic steroids is made – as contended by Complainant - without authorization from competent authority and/or whether this sale is made without medical prescription, or whether any such storage or sale is in fact illegal, and in which jurisdiction, et cetera.
In any case, by using the Disputed Domain Name as shown, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark GRENADE as to the source, sponsorship, affiliation, or endorsement of its website or location and/or of drugs and other products on its website or location. Pursuant to Policy paragraph 4(b)(iv), this is a circumstance of registration and use of the Disputed Domain Name in bad faith.
Lastly, the Panel notes that Respondent failed to respond to the Complaint and to provide the Panel with any evidence or element in its own favor.
Considering all of the above, the Panel concludes that the Disputed Domain Name has been registered and is being 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: October 4, 2019
1 The drugs and/or products offered on the website at the Disputed Domain Name are Boldenone undecylenate, Nandrolone decanoate, Drostanolone propionate, Methenolone enanthate, Testosterone blend, Testosterone propionate, Testosterone enanthate, Trenbolone acetate, Trenbolone enanthate, Super micronized stanozolol, Oxymetholone, Clenbuterol HCL, Oxandrolone, Stanozolol, 191AA Human Growth Hormone, Growth Hormone Releasing Peptide-6 and Insulin-like Growth Factor-1.
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