The Complainant is J & J Calder Company Pty Ltd, Australia, represented by IP Wealth Pty Ltd, Australia.
The Respondent is Switch Nutrition Pty Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2020. On August 28, 2020, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On August 31, 2020, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Further clarifications were received from GoDaddy.com, LLC on September 2 and 4, 2020. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 September 4, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2020. The Center appointed John Swinson as the sole panelist in this matter on October 6, 2020. 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 J & J Calder Company Pty Ltd, a company incorporated in Australia. The Complainant is a health, fitness and weight loss company trading under the name “Lean For Life”. According to the Complainant, the Complainant commenced trading under Lean For Life in 2016, and the brand and weight loss program was originally disseminated in 2004 by the father of one of the Complainant’s directors. The Complainant is the owner of Australian registered trade mark number 1967326 for KETO LEAN, registered on July 23, 2019 (the “Trade Mark”). According to the Complainant, the Complainant coined the Trade Mark in mid-2018, and has used it continuously from this date. The Complainant uses the Trade Mark for a keto program and product range that includes weight loss shakes. The Complainant also owns a domain name incorporating the Trade Mark, A keto diet is a very low-carb, high-fat diet. The term comes from the word “ketosis”. The Respondent is Switch Nutrition Pty Ltd, a company incorporated in Australia. The Disputed Domain Name was registered on June 2, 2018. The Respondent is the owner and operator of a health and supplements business trading as “Switch Nutrition”. At present and at the time of the Complaint, the Disputed Domain Name resolves to a parking page with pay-per-click (“PPC”) links relating to keto recipes, keto foods and other keto-related products and states in the header of the website “Interested in ketolean.com.au? Our Domain Broker Service may be able to get it for you. Find out how.” The Complainant and the Respondent both have their headquarters on the Sunshine Coast in Queensland, Australia, and are located within 20 kilometres from each other. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant owns the Trade Mark. The Complainant benefits from a reputation in the Trade Mark in relation to the claimed goods and services. The Disputed Domain Name is confusingly similar to the Trade Mark if the suffix “.com.au” is disregarded. The Disputed Domain Name is identical or confusingly similar to the Trade Mark as all the letters are identical. Rights or Legitimate Interests The Respondent is a health and supplements supplier in Australia, and a direct competitor of the Complainant. The Respondent has been trading for several years under Switch Nutrition. The Complainant’s business and the Respondent’s business are located less than 20 kilometers from each other, on the Sunshine Coast. The Sunshine Coast has a relatively small population of approximately 350,000 residents. One of the stockists of the Respondent is located in the same street as the Complainant. The directors/owners of the Complainant and the Respondent are known to each other. Under the brand Switch Nutrition, the Respondent offers a variety of supplements under various product marks, all of which contain the element “switch” e.g. KETO SWITCH, ADRENAL SWITCH, AMINO SWITCH, etc. Since acquiring the Disputed Domain Name on June 2, 2018, the Respondent has not used the Disputed Domain Name in any capacity. There is no live or active website. It has not been used in any commercial capacity since its registration. As at the date of the Complaint, the Disputed Domain Name has a parked page with a banner stating “Interested in ketolean.com.au? Our Domain Broker Service may be able to get it for you. Find out how.” The Respondent has not used the phrase “Keto Lean” in any commercial capacity before or after the registration of the Disputed Domain Name. The Disputed Domain Name is not the corporate name of the Respondent, nor is it a trade mark registered by the Respondent. The Respondent has not been authorised to use the Disputed Domain Name or the Trade Mark by the Complainant within Australia. The Respondent does not have a bona fide offering of goods or services under the Trade Mark (as evidenced by two years of non-use). Any future use would infringe the Complainant’s Trade Mark. Registered or Used in Bad Faith The term “Keto” has been a central part of the Complainant’s business and product development for over four years. The Complainant held discussions regarding potential brand names from early 2018, including with the Complainant’s network, from business advisors, and staff, to marketing professionals. These discussions included testing concepts with consumers, as well as effectiveness, recognition and penetrability of the brand into the marketplace. These discussions led to the Complainant coining the Trade Mark in mid‑2018 (based on the Complainant’s business name Lean to Life and the word “keto”). Since this time, the Complainant has developed a well-established reputation and accrued substantial goodwill in the Trade Mark. It is extremely common for competitors to monitor the branding and advertising practices of other businesses online and to anticipate and obtain valuable IP assets of their competitors to disrupt their business. The Complainant considers it unlikely that the Respondent genuinely coined the word “Keto Lean” before the Complainant. Since 2018, the Respondent has been put on notice by the Complainant of its use and intention to continue using the Trade Mark. The Complainant and the Respondent have discussed the Disputed Domain Name on the phone and via text message and Facebook Messenger. On April 28, 2020, the Complainant wrote to the Respondent, detailing its concern about misleading consumers and offering to compensate the Respondent for its time and fees for the transfer of the Disputed Domain Name to the Complainant. The Respondent rejected the Complainant’s offer on May 11, 2020, and requested USD 10,000 in return for the transfer. The Respondent clearly appears to have only acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring it to another person for valuable consideration in excess of the out-of-pocket costs directly related to the Disputed Domain Name. The Complainant’s business is predominantly online. The Respondent, in registering the Disputed Domain Name, is preventing and limiting the growth and expansion of the Complainant’s legitimate Trade Mark and related business and branded goods and services. It is clear that the Respondent has registered the Disputed Domain Name in order to prevent the owner of a name, trade mark or service mark from reflecting that name or mark in a corresponding domain name. The Complainant also considers that any future of use of the Disputed Domain Name by the Respondent would be to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant's Trade Mark name as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered or has subsequently been used in bad faith. The onus of proving these elements is on the Complainant, even though the Respondent failed to submit a Response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The generic Top-Level Domain “.com” and the country code Top-Level Domain “.au” are disregarded under the first element of the Policy (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)). Accordingly, the Panel finds that the Disputed Domain Name is identical to the Trade Mark. The fact that the Trade Mark was registered after the registration of the Disputed Domain Name is not relevant to the Panel’s decision under the first element. The relevant time by which the Complainant must establish its rights is at the time of the filing of the Complaint (see section 1.4 of the auDA auDRP Overview 1.0). The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. At present, the Disputed Domain Name resolves to a parking page with PPC links relating to keto recipes, keto foods and other keto-related products. Some of these products likely compete with the Complainant’s products, whose business is predominantly online. Use of a domain name to resolve to parking or landing pages, or to generate revenue through PPC links advertising, is generally not considered a bona fide offering of goods or services under the auDRP (see section 2.6 of the auDA auDRP Overview 1.0 and Freelife International Holdings, LLC and Freelife International Australia Pty Ltd. v. Nick Nastevski dba Health Doctor,WIPO Case No. DAU2012-0017). On the evidence before the Panel, the Disputed Domain Name has not otherwise been used by the Respondent. - The Complainant has not authorised, licensed or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. - The Respondent has not been 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 name or Trade Mark. At present and at the time of the Complaint, the Disputed Domain Name resolves to a parking page with PPC links relating to keto recipes, keto foods and other keto-related product. Presumably the Respondent earns some revenue from these links. The Disputed Domain Name contains two descriptive words, “lean” and “keto” which may be relevant to the Respondent’s business as a provider of nutritional supplements, including a product called “Keto Switch”. If a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word (see section 2.1A of auDA auDRP Overview 1.0). However, the Respondent has not responded to the Complaint and has not provided any evidence to suggest that the Respondent has any intention to use the Disputed Domain Name in connection with the terms comprising the Disputed Domain Name. The Panel is entitled to draw inferences from the Respondent’s failure to respond. The Panel also notes that the combination of the words “keto” and “lean” is not a particularly obvious combination for use in respect of nutritional products, and in any event, the Respondent could not rely solely on the fact the Disputed Domain Name is composed of dictionary words to ground the Respondent’s claim to rights or legitimate interests in it (see section 2.2 of auDA auDRP Overview 1.0). The Panel notes that the Trade Mark was filed by the Complainant after the Disputed Domain Name was registered by the Respondent on June 2, 2018. Based on the Panel’s finding below that the Respondent was likely aware of the Complainant and the Trade Mark at the time of registering the Disputed Domain Name, the mere fact that the Disputed Domain Name was registered by the Respondent before the Complainant filed its Trade Mark application does not give the Respondent rights or legitimate interests under the Policy. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. Registered or Subsequently Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith. Based on the Complainant’s undisputed submissions and the evidence before the Panel (which includes a statutory declaration from the co-owner and co-founder of the Complainant), the Panel concludes that: - the Complainant and the Respondent are competitors and are in close physical proximity; - the directors of the Complainant and the Respondent are known to each other; - the Respondent does not use, and has never used, the Trade Mark or the Disputed Domain Name in connection with any offering of goods or services; - the Complainant coined the Trade Mark in mid-2018; - prior to that, the term “Keto” had been a central part of the Complainant’s business and product development for over four years; and - the Complainant held discussions regarding potential brand names from early 2018, including with the Complainant’s business network, from business advisors, and staff, to marketing professionals. These discussions included testing concepts with consumers, as well as effectiveness, recognition and penetrability of the brand into the marketplace. The Complainant states that the Trade Mark was coined in mid-2018. The Disputed Domain Name was registered in June 2018. The Panel accepts the Complainant’s submission that it is unlikely that the Respondent coined the term “Keto Lean” on its own. “Keto Lean” is not a particularly obvious combination of words, and it also contains part of the Complainant’s name, who is a competitor of the Respondent in the same geographic area. It is even less likely to be a coincidence given that the Complainant was market testing its branding around this time. Without the benefit of a Response, the Panel considers that it is more likely than not that the Respondent was aware of the Complainant’s proposed use of the Trade Mark at the time of registering the Disputed Domain Name. The Panel also notes that the Respondent’s failure to use the Disputed Domain Name (apart from for PPC links) or launch a product corresponding to the Disputed Domain Name in over two years supports an inference that the Disputed Domain Name was registered in bad faith. In any event, the Panel finds that the Disputed Domain Name has been used in bad faith. In particular, the Panel finds that that the Respondent: - registered the Disputed Domain Name in order to prevent the Complainant from reflecting its Trade Mark in a corresponding domain name, within the meaning of paragraph 4(b)(i) of the auDRP; - registered the domain name primarily for the purpose of disrupting the business or activities of another person (namely, the Complainant) within the meaning of paragraph 4(b)(iii) of the auDRP; - by using the domain name for PPC links, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of that website within the meaning of paragraph 4(b)(iv) of the auDRP. The Panel could also make a finding with respect to paragraph 4(b)(i) of the auDRP, supported by the Respondent’s request for USD 10,000 in exchange for the Disputed Domain Name, which is well in excess of the Respondent’s likely out-of-pocket expenses. Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy. 7. Decision For all 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, John Swinson
Sole Panelist
Date: October 19, 2020
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