Complainant is MET-Rx Substrate Technology, Inc. of Ronkonkoma, New York, the United States of America represented by Gowling Lafleur Henderson, LLP, Canada.
Respondents are Domains by Proxy, Inc. and eGumBall Inc. of Scottsdale, Arizona, United States of America, and Irvine, California, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 11, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On April 12, 2011, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 14, 2011, 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 April 18, 2011.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2011.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 7, 2011. 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. Due to exceptional circumstances the due date for the Decision to be sent to the Center was extended by the Panel. 4. Factual Background
Complainant was founded in 1991 and is a leading sports nutrition brand, providing nutritional supplements including protein-rich supplements, vitamin formulas and strength enhancing products, which have been sold in association with its trademark and trade name MET-RX since at least as early as 1994.
Complainant is the owner of numerous trademark applications and registrations comprised of, or containing, the element MET-RX in jurisdictions throughout the world, including in the United States, Canada, Argentina, Aruba, Australia, Austria, Bahrain, Belarus, Belize, Benelux, Bolivia, Bosnia and Herzegovina, Brazil, Bulgaria, Chile, the People’s Republic of China, Croatia, Dominican Republic, El Salvador, European Community, France, Georgia, Germany, Guatemala, Honduras, India, Indonesia, Ireland, Israel, Italy, Japan, Jordan, Kazakhstan, the Republic of Korea, Lebanon, Macedonia, Malaysia, Mexico, Moldova, New Zealand, Norway, Pakistan, Paraguay, Peru, Philippines, Romania, Russian Federation, Saudi Arabia, Serbia, South Africa, Spain, Sweden, Switzerland, Taiwan Province of China, Thailand, Turkey, Ukraine, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, Uruguay, and Viet Nam.
Complainant’s primary website is located at the domain name .
Respondent registered the Domain Name on July 24, 2010. 5. Parties’ Contentions A. Complainant
Complainant’s MET-RX brand products are sold to mass merchandisers, drug store chains, drug wholesalers, supermarket chains and wholesalers, as well as over the Internet. After nearly two decades on the market, MET-RX products have proven to have wide appeal and are now part of fitness enthusiasts’ fitness programs across the world. Complainant has a global consumer market base, including in Azerbaijan, Indonesia, Philippines, India, Australia, Tahiti, Canada, China, Brazil, Cayman Islands B.W.I, Colombia, Dominican Republic, El Salvador, Europe, Guatemala, Mexico, Panama, Paraguay, Peru, St. Lucia, West Indies., Chile, Israel, Kuwait, South Africa, and the United States.
For the fiscal year ending September 30, 2010, Complainant generated revenues in excess of USD 56 million in connection with its MET-RX brand products. Complainant has also expended significant resources in the promotion and advertisement of its MET-RX trademark. Since 2005, Complainant has incurred approximately USD 25 million in promotional expenses.
(1) Confusingly Similar to Complainant’s Trademark
Complainant submits that the Domain Name is identical to a mark in which Complainant has rights, and thus, the first condition of paragraph 4(b) of the Policy has been fulfilled. Complainant is the owner of trademark registrations for MET-RX in jurisdictions around the world. By virtue of these registrations, Complainant has rights in its MET-RX marks. The Domain Name is identical to Complainant’s MET-RX mark. It is well-established under the Policy that the domain extension, in this case the ccTLD “.co”, is to be ignored when making the comparison between a disputed domain name and trademark in which the complainant has rights. Further, the elimination of a hyphen in a domain name cannot avoid a finding of identical similarity.
(2) No Legitimate Interest
Complainant submits that Respondent has no legitimate interest in or right to the Domain Name, and accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled.
Complainant asserts that without its permission, Respondent registered the Domain Name on July 24, 2010. The Domain Name was made to resolve to a pay-per-click website displaying links to competitors of Complainant. Complainant issued a cease and desist letter on August 6, 2010, requesting transfer of the Domain Name. Respondent failed to comply with Complainant’s demands. Soon thereafter, the Domain Name was made to resolve to a website that indicated that the site is “Down For Maintenance...Check Back Later.”
Complainant issued a second cease and desist letter on November 12, 2010, again requesting transfer of the Domain Name. In response, Respondent indicated in an email exchange that he is not “reselling the domain or promoting it for any product or services”, that to his understanding “ is not a registered trademark domain” and that he would be forwarding Complainant’s correspondence to his attorney. No further communication was received from Respondent or his attorney. The website became inactive subsequent to the issuance of Complainant’s second cease and desist letter.
Between the dates of March 29, 2011 and April 3, 2011, while the Complaint was being finalized, the registrant information for the Domain Name was changed from John Bauer to “Registration Private, Domains by Proxy, Inc.” To the best of its knowledge, Complainant believes that John Bauer still owns the Domain Name but has concealed his identity by way of GoDaddy’s proxy service. In any event, irrespective of ownership of the Domain Name, its registration is unauthorized.
Complainant alleges that Respondent has never been, and is not currently, commonly known under the Domain Name. Nor is Respondent using the Domain Name is connection with any bona fide offering of products and services. The Domain Name was initially made to resolve to a pay-per-click website displaying links to competitors of Complainant. The use of a distinctive trademark to direct Internet users to a pay-per-click link parking page that offers goods or services competing with the mark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use. The Domain Name was subsequently used as the address of a single page indicating that it was “Down For Maintenance...Check Back Later.” A statement on a webpage indicating that the Domain Name has been reserved has been found not to amount to use in connection with a bona fide offering of goods or services Further, Respondent in this case has expressly admitted that he is not “promoting” the Domain Name for any product or services, and the question of noncommercial or fair use does not arise.
Bad Faith Registration and Use
Complainant submits that Respondent registered the Domain Name, which is identical to Complainant’s registered trademark, for the purpose of disrupting the business of Complainant. Respondent also registered the Domain Name in an attempt to sell it for a sum in excess of its out of pocket expenses and in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Further, in the circumstances of this case, the subsequent passive holding of the Domain Name by Respondent amounts to Respondent acting in bad faith.
Respondent argues it is well-established that the pointing of a domain name to a pay-per-click website that displays links to websites of businesses that offer goods and services that compete with, or rival, those goods and services offered by a complainant constitutes evidence of bad faith as per paragraph 4(b)(iii). A respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with, or rival, Complainant. The Domain Name was made to resolve to a pay-per-click website displaying sponsored links to competitors of Complainant. Respondent’s use of the Domain Name in connection with the pay-per-click website qualifies Respondent as a competitor of Complainant, because Respondent’s website provided links to direct competitors of Complainant. Further, the use of the Domain Name was disruptive to Complainant, as potential consumers were likely confused into believing that Respondent’s website was somehow affiliated with, or sponsored by, Complainant. As well, the misdirection of potential consumers to Respondent’s website, and to websites operated by competitors of Complainant, constitutes a disruption to Complainant and its business.
Complainant also contends that by virtue of the unauthorized diversion of Internet traffic, the valuable goodwill subsisting in Complainant’s MET-RX mark is harmed, thereby constituting a disruption to Complainant. The purpose behind the registration of the Domain Name was to exploit, for commercial gain, Internet traffic destined for 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. Accordingly, Complainant respectfully submits that Respondent deliberately set out to disrupt Complainant and its business. By actively undertaking the diversion of Internet traffic to its site, Respondent’s activities constitute prima facie evidence of bad faith falling squarely within paragraph 4(b)(iii).
As per paragraph 4(b)(iv), bad faith registration will be found where a respondent is using a domain name to intentionally attempt to attract, for commercial gain, Complainant’s mark as to source, sponsorship, affiliation, or endorsement. Respondent has used the Domain Name, which is confusingly similar to Complainant’s trademark, for a website containing sponsored links to competitors of Complainant. While the intention to earn click-through revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. Respondent has derived financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. Accordingly, it is submitted that Respondent has intentionally attracted, for commercial gain, Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of the Respondent website. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
Further, in the circumstances of the present case, the subsequent passive holding of the Domain Name may also be considered to be registration and use in bad faith. Inaction of Respondent is within the concept of paragraph 4(a) of the Policy. Panels have held that the bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion. The Domain Name is identical to Complainant’s trademark MET-RX which is an invented word. In the circumstances, the Domain Name, if ever put to use, once again, would likely result in potential consumers being confused or misled into believing that Respondent is somehow affiliated with, or endorsed by, Complainant, which is not the case. Further, Respondent is a company engaged in commercial activity. It is reasonable to conclude that it would use the Domain Name, once again, with a view to reaping some type of financial benefit or commercial advantage.
The trademark MET-RX is not only registered, but has been used extensively, not only internationally, but also in the United States for nearly 20 years in association with the nutritional-supplement goods of Complainant. It is therefore inconceivable that Respondent, having its place of business in the United States, was not aware of Complainant’s trademark and its products when registering the identical Domain Name. The lack of any good faith attempt to ascertain whether or not Respondent was registering and using someone else’s trademark, such as by conducting trademark searches or search engine searches, also supports a finding of bad faith. By registering the name “metrx” in the “.co” ccTLD, Respondent has prevented Complainant from registering its internationally registered and used trademark in that domain. This indicates that Respondent has acquired the Domain Name primary for the purpose of selling it to Complainant or to one of its competitors.
The fact that the Domain Name is not only identical to Complainant’s trademark but is also a common misspelling of Complainant’s domain name , adds yet another aspect indicating the bad faith of Respondent. The Panel may infer that the Domain Name was consciously chosen by Respondent and registered because it is identical with Complainant’s trademark and because its registration and use presents an opportunity to take predatory advantage of Complainant’s reputation and goodwill in the MET-RX mark.
Based on the foregoing, Complainant submits that the Domain Name has been registered and used in bad faith and, accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled. Complainant contends that under the circumstances, the transfer of the Domain Name to Complainant is warranted. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the registered trademark MET-RX. The fact that Respondent eliminated the hyphen and registered the term METRX as the Domain Name in the “.co” country code top-level domain is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Panel finds that Respondent is not commonly known under the Domain Name. Moreover, Complainant has not authorized the use by Respondent of the MET-RX trademark in the Domain Name or otherwise. The Domain Name is virtually identical to Complainant’s MET-RX trademark and was initially made to resolve to a pay-per-click website displaying links to competitors of Complainant, and then was later linked (after receiving notice from Complainant) to a page indicating the site was “Down For Maintenance...Check Back Later.” The use of a distinctive trademark to direct Internet users to a pay-per-click parking page that offers goods or services competing with the mark owner does not constitute a bona fide offering of goods or services. Nor does a statement on a webpage, posted after receiving a cease and desist letter, create any right or legitimate interest in the Domain Name.
The Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest to the Domain Name, which has not been answered by Respondent
The Panel thus finds that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Complainant's MET-RX trademark, which consists of an invented word, is well-known within the sports nutrition and supplements industry in the United States (where Respondent is located) and elsewhere. There is nothing in this case to suggest that Respondent was not fully aware of Complainant's mark at the time Respondent registered the Domain Name, nor did Respondent offer any evidence to that effect. Instead, it is quite clear that Respondent registered the Domain Name precisely because it did incorporate Complainant’s MET-RX mark in its entirety, merely omitting the hyphen. See Wal-Mart Stores, Inc. v. Po Ser, WIPO Case No. D2009-1450. Moreover, the fact that the Domain Name is not only identical to Complainant’s trademark but is also a common misspelling of Complainant’s domain name , adds weight to the conclusion that Respondent deliberately targeted Complainant’s mark and domain name.
There are several ways in which a complainant can demonstrate that a domain name was registered and used in bad faith. Here, Complainant has submitted unrebutted evidence that, pursuant to paragraph (4)(b)(iv) of the Policy, Respondent’s use of the Domain Name constitutes an intentional attempt to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's MET-RX mark as to source, sponsorship, affiliation or endorsement. In particular, Respondent has used the Domain Name, which is virtually identical to Complainant’s MET-RX mark, for a website containing sponsored links to competitors of Complainant. While the intention to earn click-through revenue is not in itself illegitimate, the use of the virtually identical Domain Name in this way is bad faith use. Moreover, the Panel finds that the misdirection of potential consumers to Respondent’s website, and to websites operated by competitors of Complainant, constitutes a disruption to Complainant’s business.
Therefore, the Panel finds that Respondent registered and used the Domain Name in bad faith in accordance with 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 Domain Name, , be transferred to Complainant
Christopher S. Gibson
Sole Panelist
Dated: July 20, 2011
Full & Egal Universal Law Academy