The Complainant is Universal Protein Supplements Corporation d/b/a Universal Nutrition of New Brunswick, New Jersey, United States of America, represented by Marshall, Gerstein & Borun LLP, United States.
The Respondent is Complete Sports Nutrition, Vaidas Radzevicius of Dublin, Ireland, represented by Sean Costello and Company Solicitors, Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with IE Domain Registry Limited (“IEDR”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2013 via email and on May 6, 2013 by courier. On May 2 and May 7, 2013, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On May 8, 2013, IEDR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 16, 2013 by email and on May 22, 2013 by courier.
The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on May 23, 2013. In accordance with the Rules, paragraph 5.1, the due date for Response was June 21, 2013. The Respondent filed a Response on May 27, 2013 by email and on June 3, 2013 by courier. The Complainant filed a Supplemental Filing to the Center on May 31, 2013 by email and on June 5, 2013 by courier.
The Center appointed James Bridgeman as the sole panelist in this matter on June 18, 2013. 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 was incorporated in 1983 in the State of New Jersey, United States, and has since established a substantial business as a seller of nutritional supplements using the ANIMAL PAK trademark in the United States and other countries throughout the world including Ireland. The volume of sales has grown to exceed 20 million USD each year since at least 2003.
The Complainant is the owner of the ANIMAL PAK trademark and holds numerous trademark registrations throughout the world for the ANIMAL PAK mark including Community Trademark ANIMAL PAK, registration number 4046521 which was filed on September 27, 2004 and entered on the register on January 18, 2006 for goods in class 5 being “Dietary supplements, food supplements; nutritional supplements”. The Complainant is also the owner of United States trademark ANIMAL PAK registration NUMBER 2,437,306 which was filed on March 28, 2000 and registered on the Principal Register on March 20, 2001 in international class 5 for “dietary food supplements, a nutritional supplement comprised of but not limited to vitamins, minerals and training nutrients in class 5” in the name of Universal Labs which is an associated corporate name of the Complainant.
On March 17, 2000, the Complainant registered the generic Top-Level Domain (“gTLD”) domain name in the name of Universal Labs and has since continuously offered products bearing the ANIMAL PAK trademark on its company website to which the domain name resolves.
Over a period of time the Complainant has supplied its ANIMAL PAK products to the Respondent for resale. There was no formal distributorship agreement.
The Respondent has been a reseller of the Complainant’s products into the Irish market since initial contact was made between the Parties in 2005.
The disputed domain name was registered on September 14, 2005 and resolves to a website maintained by the Respondent to carry on business selling dietary and nutritional supplements. 5. Parties’ Contentions A. Complainant
The Complainant states that the “Respondent has apparently been a customer of the Complainant’s products in the past” but denies that the Respondent has or ever had permission to use the Complainant’s ANIMAL PAK trademark or register and use domain names incorporating the trademark.
The Complainant submits that the Respondent is also the registrant of gTLD domain names and which are the subjects of a UDRP complaint filed simultaneously to this action.
The Complainant asserts that the Respondent registered the disputed domain name on September 14, 2005 without the authorization or knowledge of the Complainant more than five years after the Complainant registered its domain name and more than 22 years after the Complainant began using its ANIMAL PAK mark.
The Complainant asserts that the Respondent without authorization uses the Complainant’s ANIMAL PAK mark to sell goods that are in direct competition with the Complainant’s products. In this regard the Complainant refers to the content of the Respondent’s website as of October 4, 2012 and April 22, 2013, which have been furnished as an annex to the Complaint.
The Complainant submits that the Respondent has continued to use the disputed domain name which is identical to the Complainant’s ANIMAL PAK mark to lure traffic from the Complainant’s website, thereby preventing the Complainant’s rightful registration and use of the disputed domain name and profiting from the unauthorized use of the Complainant’s ANIMAL PAK mark.
The Complainant submits that the disputed domain name is identical to a Protected Identifier in which the Complainant has rights. The Complainant relies on its above-mentioned trademark registrations and in particular Community Trademark ANIMAL PAK, registration number 4046521. Citing the decision of the Panel in The Service Master Company v. Maud McGuckin,WIPO Case No. DIE2011-0001 (recognizing the Complainant’s rights in a protected identifier based upon ownership of Community Trademark registrations).
The Complainant furthermore relies on its rights at common law in the goodwill that it claims to have established by virtue of its longstanding use of the ANIMAL PAK mark in trade in nutritional supplements. In a statutory declaration the Complainant’s Vice-President (Marketing) states that the Complainant’s sales constitute 4% of the sports nutrition health market in the United States and 7% of the global market. The Complainant’s sales volume has amounted to at least 20 million USD each year since 2003. Its world-wide advertisement expenditures on products sold under its ANIMAL PAK and UNIVERSAL marks exceeded 1 million USD for each of the last 5 years.
The Complainant argues that the disputed domain name is identical in sound, appearance, meaning, and commercial impression to the Complainant’s ANIMAL PAK trademark which is a Protected Identifier in Ireland.
The Complainant further argues that the country-code Top-Level Domain (“ccTLD”) domain name suffix “.ie” element may be ignored for the purpose of the comparison. In this regard the Complainant cites the decision of the panel in Diversified Dynamics Corporation d/b/a Cat Pumps v. Euroquipe (Cork) Limited,WIPO Case No. DIE2012-0002 (finding identical to CAT PUMPS and stating that “[t]he ‘.ie’ ccTLD extension may be ignored for the purposes of comparison” for Policy 1.1.1). In a similar case, it has been ordered the transfer of in a UDRP proceeding based on the rights the Complainant asserts here. Universal Protein Supplements Corporation d/b/a Universal Nutrition v. FH Holdings, NAF Claim No. 1440998. Authority concerning UDRP proceedings may be considered by the panel in ieDRP cases given the many similarities between the two policies. Citing Simon Buckley v. Adrian Demian,WIPO Case No. DIE2012-0001.
The Complainant accordingly submits that it has met the first condition of Policy, paragraph 1.1.
The Complainant submits that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name. The Complainant’s registration and longstanding use of its ANIMAL PAK mark predates any rights the Respondent may claim in ; the disputed domain name is identical to the Complainant’s registered ANIMAL PAK trademark and this negates any presumption of the Respondent’s legitimate use. Citing eBay, Inc. v. Sunho Hong d/b/a ,WIPO Case No. D2000-1633 (stating that the Respondent’s use of the Complainant’s entire mark in the domain name makes it difficult to infer a legitimate use).
The Complainant submits that while the Complainant must make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of proof is light since evidence of this element lies most directly within the Respondent’s own knowledge. Citing Ebay Inc. v. Wangming,WIPO Case No. D2006-1107. Once the Complainant meets that light burden, the burden of production shifts to the Respondent to rebut the showing. Citing Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited,WIPO Case No. DIE2006-0001.
The Complainant refers to Policy paragraph 3.1 and submits that in the present case, the evidence shows that the Respondent lacks any rights or legitimate interests in the disputed domain name.
The Complainant argues that the Respondent cannot demonstrate good faith preparation or use of disputed domain name or any name associated with it in connection with a good faith offering of goods or services. The Complainant argues that the Respondent uses the disputed domain name to divert users away from the Complainant’s website at and toward its own website, which in turn provides a link to a website to which the domain name resolves, with the statement: “to order animal products in Ireland visit www.”. The Complainant in this regard refers to copy of the Respondent’s website annexed to the Complaint.
The website to which the domain name resolves offers both the Complainant’s nutritional and fitness supplements and other products competitive with the Complainant’s products. The Complainant submits that the Respondent’s use of the disputed domain name to steer visitors to a site “offering services related to and competing with the Complainants’ site” cannot be deemed a good faith offering of goods or services under Policy paragraph 3.1.1. Citing Ameritrade Holdings Corporation and Ameritrade, Inc. v. Polanski, NAF Claim No. 0102715 (finding that such use of a domain by a respondent did not constitute a bona fide use for UDRP purposes - akin to the ieDRP element of “good faith” at issue here); and Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu, NAF Claim No. 0157321 (ordering transfer of , finding that “[r]espondent’s appropriation of [The Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”).
The Complainant submits that because the Respondent’s use of the disputed domain name is not in good faith it follows that the Respondent cannot satisfy the requirements of Policy paragraph 3.1.1. that he has made good faith preparations or use of the disputed domain name in connection with a good faith offering of goods or services.
Additionally, there is no evidence to show that the Respondent’s personal name or pseudonym corresponds with the disputed domain name as per paragraph 3.1.2. In this regard the Complainant refers to the WhoIs listing for the disputed domain name.
Furthermore, the Complainant argues that the disputed domain name is not identical or misleadingly similar to a geographical indicator in Ireland and so the Respondent has no basis to claim legitimate rights based on Policy paragraph 3.1.3.
The Complainant submits that the Respondent has not engaged in a legitimate noncommercial or fair use of the disputed domain name. The website to which the disputed domain name resolves is a purely commercial enterprise.
The Respondent’s knowledge of the Complainant’s mark prior to registration of the disputed domain name evinces the Respondent’s lack of rights or legitimate interests in the disputed domain name. At the time of registration, the Respondent was aware of the Complainant’s rights in its ANIMAL PAK mark. Citing Katherine Quinn, The Executrix of the Anthony Rudolfo Quinn Estate v. Konstantinos Zournas, NAF Claim No. 0610713.
The Complainant submits that at the very least, the Respondent had constructive knowledge of the Complainant’s rights, given that the Complainant’s Community Trademark application had been filed and was pending at the time the disputed domain name was registered and the ANIMAL PAK trademark had been registered in the United States for over four years. The Complainant had an established website to which its domain name resolved. Citing Monster Worldwide, Inc. Monster Worldwide Ireland Limited v. Monster Finance Limited,WIPO Case No. DIE2009-0001 (finding use of the complainant’s trademark on respondent’s own website, in operation at time of registration of the disputed domain name, to be evidence that respondent had trademark in mind when registering the domain name).
Moreover, the Complainant argues that when the Respondent registered the disputed domain name, the Complainant was entering its twenty second year of using ANIMAL PAK in connection with nutritional and fitness supplements.
The Complainant submits that it has satisfied the second condition of Policy paragraph 1.1. The Respondent has no rights in law or legitimate interests in the disputed domain name.
The Complainant argues that the disputed domain name was registered or is subsequently being used in bad faith.
The Complainant submits that the Respondent’s bad faith is evinced by use of the Complainant’s trademarks primarily for the purpose of interfering with or disrupting the Complainant’s competing business. The Respondent has intentionally attempted to interfere with and disrupt the Complainant’s business and is presently succeeding. The Respondent does so by using a domain name identical to the Complainant’s ANIMAL PAK mark to market goods directly competitive with the Complainant’s products. This is exactly the type of use contemplated by Policy paragraph 2.1.3. Citing Cartridge World Australia Pty Ltd. v. Kerry Recharge Limited,WIPO Case No. DIE2011-0003 (Cartridge World) (finding bad faith where the registrant used the domain name for business competing directly with the complainant and ordering transfer); and Haas Automation, Inc. v. Machine Tools, NAF Claim No. 1405779 (Haas) (stating that “Respondent’s conduct in registering and using a domain name that contains the protected mark of another and in using that domain name to compete with the Complainant by selling Complainant’s own products under the Complainant’s protected mark along with goods of Complainant’s competitors, supports findings of bad faith registration and use”).
As in Cartridge World and Haas, the Respondent’s use of the disputed domain name to market goods competing with those produced and sold by the Complainant demonstrates both its bad faith registration and subsequent use.
The Complainant argues that the Respondent intentionally attempted to divert the Complainant’s customers by creating a likelihood of confusion. The Respondent is using the disputed domain name to distract potential customers of the Complainant’s products by capitalizing on mistaken or confused Internet users. Use of a domain name intentionally to attract consumers, for commercial gain, to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith as per Policy paragraph 2.1.4. Here, the Respondent’s registration of constitutes such bad faith according to the Complainant. In order to drive traffic to its online fitness supplements store, the Respondent uses a domain name identical to ANIMAL PAK to distract consumers who incorrectly assume an affiliation with the Complainant. As a result, the Respondent profits from the improper association, thereby generating revenue through the misappropriation of the Complainant’s goodwill. The Complainant submits that the Respondent’s actions are therefore in bad faith. Citing Diversified Dynamics Corporation d/b/a Cat Pumps v. Euroquipe (Cork) Limited,WIPO Case No. DIE2012-0002 (ordering transfer of domain name registered without authorization of owner of trademark and used “as bait for Internet users who are aware of the Complainant’s goods”). See also Williams-Sonoma, Inc. v. Kurt Fees c/o K Fees, NAF Claim No. 0937704 (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use).
The Complainant asserts that the Respondent knew of the Complainant’s prior use and rights in ANIMAL PAK trademark. Therefore by registering, renewing and using with actual knowledge of the Complainant’s rights in the mark amounted to a registration made in bad faith. Citing The Service Master Company v. Maud McGuckin,WIPO Case No. DIE2011-0001 (ordering transfer of where registrant had knowledge of the complainant’s MERRY MAIDS mark when registering the domain name). See also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios c/o Tamer Malekames, NAF Claim No. 1031703 (finding bad faith registration where the respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
Based on the strong, distinctive nature of ANIMAL PAK along with its age, it is highly improbable that the Respondent registered this identical domain name without knowledge of the Complainant’s interests in the mark. Citing Kelkoo SA v. Lina Musinkiene,WIPO Case No. DIE2007-0002 (finding that was registered in bad faith given the highly distinctive nature of the KELKOO mark and the fact the domain name was used to compete with the complainant’s business). Even assuming lack of actual knowledge, the Respondent nevertheless had a duty to investigate prior to registering the disputed domain name. Collegetown Relocation, L.L.C. v. Mamminga, NAF Claim No. 0095003 (stating that “[w]hen registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a thirdparty’s rights”); and Slep-Tone Entertainment Corporation d/b/a/ Sound Choice Accompaniment Tracks v Sound Choice Disc Jockeys, Inc., NAF Claim No. 0093636 (finding that “[t]he domain name ‘’ should be considered as having been registered and being used in bad faith because Respondent failed to discharge its responsibility to select, register and use a domain name that does not infringe the rights of a third party”).
The Complainant argues that even a most basic investigation by the Respondent would have revealed the Complainant’s rights in the ANIMAL PAK mark. The Complainant had been using the mark for more than 22 years, owned numerous trademark registrations protecting its mark throughout the world, and registered its domain name in 2000, over five years prior to the Respondent’s registration of the identical disputed domain name. Regardless of whether the Respondent failed to investigate or investigated and then disregarded the Complainant’s longstanding, strong rights in the mark, the Respondent’s actions evince bad faith.
The Complainant argues that the Respondent’s registration and continued use of is preventing the Complainant from registering its Protected Identifier in the “.ie” ccTLD space. As early as November 2011, the Complainant communicated with the Respondent regarding the disputed domain name, placing the Respondent on notice of the Complainant’s specific interest in the disputed domain name. The Respondent’s registration and continued use prevents the Complainant’s registration of its ANIMAL PAK mark for the “.ie” extension and is evidence of both registration and use in bad faith pursuant to Policy paragraph 2.1.2.
The Complainant argues that the Respondent registered or used the disputed domain name in bad faith because it (1) intentionally attempted to disrupt the Complainant’s business; (2) intentionally attempted to attract, for commercial gain, the Complainant’s customers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website; (3) actually knew of, or failed to make a cursory investigation into, the Complainant’s rights in its ANIMAL PAK mark; and (4) registered and has used the disputed domain name to prevent the Complainant’s rightful registration of it.
Accordingly, the Complainant argues that it has satisfied the third and final condition of Policy paragraph 1.1.
Subsequently in Supplemental Submissions which have been admitted and considered by this Panel, in order to give each party a fair opportunity to present its case, the Complainant argues that the inter partes correspondence adduced in evidence in the Response contains a “fragmented documentary record” and requests the Panel to consider additional email’s within the exchanges of correspondence in order to give context to those submitted by the Respondent. These have been analysed by the Panel and are discussed below. This Panel notes that the Respondent did not request to file supplemental filings. B. Respondent
The Respondent submits that he is “a registered distributor of the Claimant’s ‘Animal’ products within Ireland.”
In 2005 an initial contact was made between the Respondent and Mr. Patton, a Senior Account Executive of the Complainant, and a business relationship commenced with the Respondent purchasing and distributing the Complainant’s products in Ireland. The Respondent states that at that time, he expressly informed Mr. Patton that he intended to create an Internet shop or ‘E’ shop for the purpose of retailing the said product to the public and Mr. Patton made no objection.
The Respondent also expressly informed Mr. Patton, who was a servant and/or agent of the Complainant, that he wished to use the disputed domain name as the name for his website. Mr. Patton raised no objection to the said domain name being used and accordingly, the Respondent endeavored to purchase the disputed domain name.
A working relationship began between the Respondent and Mr. Patton and the Respondent began placing regular large orders of the Complainant’s products. The Respondent enquired into possibly becoming an agent of the Complainant in Ireland, however Mr. Patton informed him that the Complainant was not awarding any exclusive distributing deals. On foot of same, the Respondent sought to become a recognised distributor for Ireland and made enquiries regarding same with Mr. Patton.
In response to the said enquires, by email dated June 22, 2006, Mr. Patton states as follows: “I think it is important that I get you on the website too. Please let me know exactly how you would like your contact information to appear on the website. Regarding registering the products you might try starting with one product that will be easy to register and go from there...”
On August 29, 2006, the Respondent by email made further queries regarding ordering the Complainant’s products and at paragraph 3 therein outlines as follows: “My new registration details are as follows: […]
“www. animalpak. Ie” ([ ]@ [ ]@ — this one will be up and running in a few days.)”
At paragraph 4 therein, the Respondent further requested: “The last thing is the website. Is it possible, that you could send me on your website? Or maybe your IT guys could put it in, if I give all details for server?”
By email dated August 18, 2006, Mr. Patton responded as follows: [Person named] “works for [another company] now. As long as you stay in the parameters of Animal Marketing there should be no problems. If you follow the model of our site or the Polish site that would be good. I think the Polish distributor also makes his own clothes and promotional items”.
On or about September 2006, the Respondent once again sought to clarify ordering products from the Complainant and the status of his website. In response to same, by email dated September 7, 2006, Mr. Patton stated at paragraph 3 therein as follows: “To be honest, if I ask the marketing department to send you the website it will really get bogged down on red tape. I would just try to model your website like the Polish version.”
The Respondent was at this point to have his website organized in compliance with the Complainant’s standards and regulations and was doing so via the Complainant’s Senior Account Executive. However the Complainant’s representative failed to assist and further stated that “it would really get bogged down on red tape”. Upon this representation, together with the lack of any previous objection, the Respondent continued operating his Internet shop using the disputed domain name.
The Respondent submits that he was recognised as a distributor for Ireland within the Complainant’s website.
The Respondent requested the ‘Animal’ jpeg logo to use on his website and by email dated September 8, 2006 the said logo was provided to him. The following correspondence between the Complainant’s executives and the Respondent is set out below and need not be recited here.
The Respondent submits that the email correspondence is evidence that he registered the disputed domain name with the Complainant’s knowledge or authorization. He took every reasonable step to ensure that he was complying with the Complainant’s standards. The Complainant refused to clarify the Respondent’s website queries as there would be “too much red tape involved” and instead allowed the Respondent to carry on his business for five years without raising any objection regarding the website within this time period.
As the Respondent has operated his business using this website name uninterrupted for a period of five years, the Complainant has seriously delayed in trying to assert their rights.
It cannot be denied that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. However the disputed domain name was used to date over a period of 8 years and during this 8 years, the Complainant was on full notice (as outlined above) of its existence. The Respondent established the website for the sole purpose of distributing the Complainant’s products only and no other products.
The Respondent has operated its business which distributes the Complainant’s products via the disputed domain name for a period of 8 years. He has formed a legitimate expectation that he has been conducting his business in an orderly manner.
Prior to the Respondent receiving any notice of the dispute, there is evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business;
The Complainant makes reference to . This is a website controlled by the Respondent that only sells the Complainant’s products and “Gatorade” which is not a direct competitor to the Complainant.
The disputed domain name was not registered by the Respondent in an intentional attempt 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. 6. Discussion and Findings
Paragraph 1.1 of the IEDR Policy places on the Complainant the obligation to prove that:
1.1.1 the domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and
1.1.2 the Respondent has no rights in law or legitimate interests in respect of the domain name; and
1.1.3 the domain name has been registered or is being used in bad faith.
Paragraph 1.3.1 of the IEDR Policy provides inter alia that the concept of “Protected Identifiers” for the purpose of the IEDR Policy includes trade and service marks protected in the island of Ireland. A. Identical or Misleadingly Similar
The Complainant has furnished evidence of its ownership of the registered trademark ANIMAL PAK, which is a Protected Identifier for the purposes of the IEDR Policy, paragraph 1.1.
The disputed domain name is identical to the Complainant’s trademark and this is accepted by the Respondent.
The Complainant has therefore succeeded in the first element in the test in paragraph 1.1 of the Policy. B. Rights in Law or Legitimate Interests
The Respondent claims to have rights or legitimate interests in the disputed domain name and this is denied by the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent registered the disputed domain name without the knowledge or authority of the Complainant, that the Respondent cannot demonstrate any good faith preparations to use the disputed domain name prior to being notified of the Complainant’s interests, that the Respondent does not have a personal name or pseudonym corresponding to the disputed domain name; the disputed domain name is not a protected geographical indicator and it is not being put to a noncommercial use.
In the circumstances the burden of production shifts to the Respondent who has based his defence on his claim that he is “a registered distributor of the Claimant’s ‘Animal’ products within Ireland”; that the disputed domain name was registered with the knowledge and/or authority of the Complainant; that he has used the disputed domain name since its registration with the knowledge of the Complainant. This is denied by the Complainant.
Inexplicably neither the Complaint nor the Amended Complaint make any reference whatsoever to the email communications between the Parties. This is particularly surprising given that the Complaint states that the “Respondent has apparently been a customer of the Complainant’s products in the past.”
The Respondent furnished a number of emails in the Response in support of its submissions. The Complainant then addressed this issue and furnished copies of additional emails with the Supplemental Submissions. Presumably there is now a complete record before the Panel.
Having analysed the emails submitted by both Parties, this Panel finds that the following excerpts from the correspondence reflects the narrative of the communications:
The September 2006 email from Mr. Patton Senior Account Executive to the Respondent, which was preceded by the exchanges set out above in the Respondent’s submissions:
September 8, 2006, Mr. Patton to the Respondent: “FW: Animal Logo JPEG […] Here is the Animal Logo”.
The May 14/15, 2009 exchange between Mr. Patton and the Respondent:
May 14, 2009, Mr. Patton to the Respondent: “Are you the registered owner of the website domain “www.” ... ?”
May 14, 2009, the Respondent to Mr. Patton: “Yes I am. Why?”
May 15, 2009, Mr. Patton to the Respondent: “Nothing is wrong. One of my marketing people may be in contact with you to help you with content on your website. We are trying to make a consistent marketing message for our brands throughout the world.”
May 15, 2009, the Respondent to Mr. Patton: “OK, the plan was to keep the main articles up to date with www., but just never got time to do it…”
The June 19, 2009 exchange between Mr. Swartz, Brand Manager of Complainant, and the Respondent:
June 19, 2009, Mr. Swartz to the Respondent: “[…] In our efforts to improve our worldwide presence and to assist you with your marketing, we need your help. If you would please provide us with the following information, we would greatly appreciate it. Specifically, we are seeking information concerning websites with our company name and trademarks […] Can you please tell us: 1. Have you registered the domain names in your country? If so can you give me the full web address? 2. Which websites are currently “live” (e.g., in operation)? 3. What websites are you thinking about/planning on developing? 4. Do you sell direct to consumers through these websites?”
June 19, 2009, the Respondent to Mr. Swartz: “I have only www. It’s still kind of in process, as at the moment.”
June 19, 2009, Mr. Swartz to the Respondent: “ We are not looking to change your business, in fact we will help enhance it […] We would like to own the domain name since it is our trademark. We would pay any transfer fees that are applicable. Can you help us with that?”
June 19, 2009, the Respondent to Mr. Swartz: “What you would be offering? I bought this domain about 5 years ago and Animal/Universal name is known pretty well here at the moment.”
The December 8, 2011/January 12, 2012 exchange between Mr. Patton and the Respondent:
December 8, 2011, Mr. Patton to the Respondent: “Yes. They did not realize that the site was run by you. We are trying to take control of our website domains around the worlds so that we may provide a consistent marketing message internationally. We would like to know if you could transfer the domain name over to us. Of course we will pay any transfer fees. We would like to work out a deal with you where you can run the domain for o certain period of time (e.g., 1 year) then we would administrate (sic) the site. Please let me know if this is amenable to you.”
January 12, 2012, Mr. Patton to the Respondent: “I never received a reply from you on this.”
January 17, 2012, the Respondent to Mr. Patton: “Forgot about this one. I think it would be ok to transfer the domain name, but not with that kind of deal. As domain name and hosting was payed (sic) for a number of years and just to give it up like that I wouldn’t like.” (The email proceeds to place a value on the domain name at approximately “5K” which presumably refers to USD).
The February 22, 2012 exchange between Mr. Patton and the Respondent:
February 22, 2012, Mr. Patton to the Respondent: “Have you made a decision about this? Please let me know soon […] Please let me know what amount of money you would be satisfied with for the transfer of the web domain.”
February 22, 2012, the Respondent to Mr. Patton: “Didn’t think much about it. Got advise to ask big sum and I know he is right, but as I told you before - I’m not looking for big bucks from Universal on this. I’m paying for this domain around 155€ + vat (at 23%) I think. Then to other company I pay hosting charges. I’s 350€ + VAT, I think it was 8th or 9th year that I payed (sic) for the domain and hosting.”
The March 13/20, 2012 exchange between Mr. Patton and the Respondent:
March 13, 2012, the Respondent to Mr. Patton email enquiring about availability of certain product lines.
March 13, 2012, Mr. Patton to the Respondent: “Also is $ 1,000 acceptable as an offer for the web domain transfer?”
March 20, 2012, the Respondent to Mr. Patton: “As for the domain name, that offer is not really acceptable.”
March 21, 2012, Mr. Patton to the Respondent: “Regarding the domain name…we are merely trying to have control of the content of what appears on websites bearing our name around the world. Our intent is to improve the content and make it consistent with the US website so that it ultimately benefits your sales. Our marketing department will work with you to strategize the best way to improve your sales in Ireland. Frankly, most of our partners have given us the domain without money changing hands. It is not a lottery ticket. It is a way to improve our partnership.”
March 20, 2012, the Respondent to Mr. Patton: “As to domain name. I don’t look at is as you called it – lottery ticket :-) […] Look, at serious note, I want to do e-shop there and that’s it. I’m sure we can do similar way as UK website is set up – with links to US website and that’s it.”
Having considered the email correspondence adduced by the Parties, this Panel finds on the balance of probabilities that:
- the Respondent was a legitimate reseller of the Complainant’s products since in or about 2005 and was supplied directly with products by the Complainant for resale into the Irish market;
- the Respondent did not register the disputed domain name in any surreptitious manner, but did so in order to sell the Complainant’s goods online in the Irish market to their mutual benefit;
- from at least September 2006 the Complainant’s Senior Account Executive was aware that the Respondent was using the disputed domain name;
- the Complainant acquiesced in the use of the disputed domain name by the Respondent for many years and during that time benefitted from the orders placed by the Respondent and the Respondent’s efforts to resell the Complainant’s products;
- the Respondent did not however have the permission of the Complainant to register the disputed domain name;
- when the disputed domain name was registered on September 14, 2005 the Complainant had no policy about resellers registering its trademark as a domain name and it appears that a number of resellers in other jurisdictions also registered ccTLD domain names incorporating the ANIMAL PAK mark;
The Complainant’s Senior Account Executive was aware of the Respondent’s website on September 8, 2006 and facilitated the setting up of the Respondent’s website by sending a logo in “.jpeg” format for the website and thereby acquiesced not only in the Respondent’s use of the disputed domain name but also in the Respondent’s use of the Complainant’s logo and trademark on the website.
Notwithstanding the important differences between the IEDR Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), there are obviously many similarities between the two Policies and IEDRP panelists have in many cases indicated a willingness to apply the approach taken by UDRP panelists where relevant, particularly as it is expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). See for example Adidas AG and Adidas (Ireland) Limited v. Gabor Varga and Jozsef Petho,WIPO Case No. DIE2006-0004; ASOS PLC v. Page 7 Media Ltd.,WIPO Case No. DIE2010-0003; Palmerston Limited, Hutchison 3G UK Limited, Hutchison 3G Ireland Limited and Hutchison Whampoa Limited v. Alan Mahon,WIPO Case No. DIE2005-000; B & S Limited v. Gabor Varga and Jozsef Petho, WIPO Case No. DIE2006-0005.
As the present case centres on the claimed rights of a reseller of the Complainant’s products, it is of particular significance that in Comité Interprofessionel du Vin de Champagne (CIVC) v. Richard Doyle, WIPO Case No. DIE2007-0005 this Panelist reviewed the UDRP decisions on rights of resellers and adopted the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi,WIPO Case No. D2007-0645. The same approach to the rights of resellers was subsequently adopted and applied by the panel in Fatboy the original B.V. v. Padraig Beirne,WIPO Case No. DIE2008-0003.
The WIPO Overview 2.0 at paragraph 2.3 considers how panels appointed under the UDRP have addressed the question: “[c]an a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?” as follows:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., ). [See further View 1 in paragraph 2.4 below regarding impersonation.]…
Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a right to use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”
Applying the OKI Data test therefore to the facts in the present case:
While there has been an actual offering of goods at issue by the Respondent, this Panel notes that the Respondent has established a separate website at the domain name address. The disputed domain name resolves to a webpage with the following text “to order Animal products in Ireland: click here”. If Internet users click on that link, the disputed domain name redirects to a separate website at “www.”, where the Complainant’s products are on sale.
Furthermore, this Panel notes that the Respondent has not restricted the use of the website to which the disputed domain name resolves to sell only the trademarked goods. While the print-outs of the Respondent’s website furnished by the Complainant do not disclose any offerings of third party goods, the Respondent has admitted that he offers Gatorade products as well as ANIMAL PAK products on the “www.” website. While the Respondent states that Gatorade products do not compete with the Complainants product range, this is not the point under the Oki Data criteria, the point is that the Respondent is using the goodwill in the Complainant’s mark to attract Internet users to his “www.” website on which he is offering third party products.
Finally, the “www.” website does not expressly, accurately and prominently disclose the Respondent’s relationship with the trademark holder.
In the circumstances, the criteria of the Oki Data test are not met and therefore the Respondent has failed to demonstrate he has rights in law or legitimate interests in respect of the disputed domain name. C. Registered or Used in Bad Faith
The initial registration of the disputed domain name was done in a casual manner without objection from the Senior Account Executive of the Complainant with whom the Respondent was in communication. It was only subsequently that the Complainant developed a policy to take control of domain names across the world that incorporated its trademark.
The Respondent has however since then used the disputed domain name as the address of a website which offers products which are not supplied by the Complainant. It is irrelevant in the circumstances that the Respondent was not offering products that were actually competing with the Complainant’s products. It is sufficient that he is using the Complainant’s goodwill in its trademark to sell third party products.
The Respondent has acknowledged that the Complainant’s trademark has become well-known. The disputed domain name is identical to the Complainant’s well-known trademark. Such an offering of products must be categorized as bad faith use of the domain name for the purposes of the IEDR Policy and so this Panel finds that the Complainant has succeeded in the third and final element of the test of the IEDR Policy paragraph 1.1 and is entitled to succeed in this Complaint.
For completeness, the Complainant’s references to the gTLD domain names and are outside the scope of this proceeding and have not been considered by the Panel. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: June 30, 2013
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