Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Dr. Oscar Vargas-Machuca Espinoza, Ambato, ECUADOR ("Complainant") represented by Lisa Trovato, of Baker & Hostetler. The Respondent is Manfred W. Gruber d/b/a Scientific Truth Corp., Ft. Lauderdale, FL, USA ("Respondent") represented by John Oltman, of Oltman, Flynn & Kubler.

The domain names at issue are "alennutrition.com", "alenfood.com", "alenusa.com", "alenusa.net" registered with Network Solutions.

On February 8, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 8, 2001; the Forum received a hard copy of the Complaint on January 8, 2001.

On January 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "alennutrition.com", "alenfood.com", "alenusa.com", "alenusa.net" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain name Dispute Resolution Policy (the "Policy").

On January 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@alennutrition.com, alenfood.com, alenusa.com, alenusa.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 5, 2001 an untimely Response was filed in violation of Rule 5. The Complainant subsequently submitted its objection to consideration of this Response. The Panel reviewed the Response, and determined that it would not alter the outcome in this case.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

word ALEN in stylized lettering). Complainant’s rights in these trademarks date back to at least as early as 1988. Further, Complainant is the owner of federal registrations in the United States and numerous other countries for the marks ALEN and ALEN & Design. Complainant sells his ALEN nutritional supplement in the United States and around the world and owns registrations for the ALEN trademark in twenty-seven countries throughout the world. Complainant is well and favorably known for his ALEN nutritional supplement that he has long sold in the Untied States and elsewhere around the world under his ALEN trademark.

Complainant operates his official Internet web site at <alen-eveliza.com>. Consumers can access information about Dr. Vargas-Machuca Espinoza, his nutritional products and his licensed distributors via his official web site. As such, the site is a vital and integral part of Complainant’s worldwide marketing and sales efforts for his ALEN product.

Scientific Truth Corp., the listed registrant of the domain names, is a company owned and controlled by Manfred W. Gruber; both are identified as Respondent in this action. In 1996, Gruber became an exclusive distributor of Complainant’s nutritional supplement products marketed under the trademarks ALEN and EVELIZA. However, the parties’ relationship began to deteriorate in spring of 1999 when Complainant learned that Mr. Gruber had engaged in a series of behaviors, which violated the parties’ distribution and license agreements. Mr. Gruber was involved with a company that was re-packaging and selling Complainant’s nutritional products under a different name. He also surreptitiously signed a contract on behalf of Complainant, granting rights to a third-party to distribute Complainant’s products and use Complainant’s trademarks.

Further, Complainant discovered that Mr. Gruber registered several domain names containing his trademark ALEN on April 9, 1999 and January 10, 2000. Each of the domain names – alennutrition.com, alenfood.com, alenusa.com and alenusa.net – is confusingly similar to Complainant’s trademark, ALEN. In addition, two of the domain names – alennutrition.com and alenfood.com – are descriptive of Complainant’s nutritional supplement products. All of the domain name registrations are held under the name of Mr. Gruber’s company, Scientific Truth Corp.

license. Notwithstanding the termination of Mr. Gruber’s right to use Complainant’s trademark ALEN, Mr. Gruber has continued to use the domain names. Currently, alenusa.com and alenusa.net have "under construction" notice pages that resolve to the Digital Media Network home page at <www.dmni.com>. Moreover, Respondent has posted infringing content at two of the domain names, alennutrition.com and alenfood.com. At each of these locations, Respondent has published a web page displaying Complainant’s trademark ALEN and Complainant’s ALEN & Design logo. Furthermore, Respondent is soliciting customers to purchase Complainant’s products using Complainant’s trademarks and the email address "info@alennutrition.com."

Complainant, through his attorney, contacted Respondent and his attorney on two occasions, demanding that Respondent cease the infringing use of ALEN as a domain name and trademark. Despite Complainant’s demands, Respondent refused to stop the infringing use of the domain names and trademarks.

Respondent has no rights or legitimate interests in respect to the domain names.

The domain names have been registered and are being used in bad faith. Respondent’s registration and use of the domain names was in violation of the then-existing distribution agreement and trademark license. Moreover, after these agreements were terminated for cause, Respondent continued to use the domain names in order to solicit orders for products that he has no right to sell.

B. A timely Response was not received by the Panel from Respondent. Respondents request for an extension was not timely filed.

The Rules for Uniform Domain name Dispute Resolution Policy (the "Rules") state the following with regard to default cases:

In this case, Respondent has not submitted a timely response, and therefore this Panel may infer, for the purposes of this decision, that the averments in the complaint are true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a timely response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Two of the domain names, alenusa.com and alenusa.net, combine the Complainant’s trademark ALEN and generic term "usa." Thus, these two domain names are confusingly similar to Complainant’s trademark. See VeriSign, Inc. v. Nandini Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s Verisign mark and the domain names "verisignindia.com" and "verisignindia.net" where Respondent added the word "India" to Complainant’s mark).

Another two of the domain names, alennutrition.com and alenfood.com, combine the Complainant’s trademark with words that describe the goods associated with the Complainant’s trademark, are also confusingly similar to the Complainant’s trademark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business). Therefore, the Complainant has satisfied the requirement of Policy ¶ 4(a)(i).

Complainant’s rights in the trademark date back to at least 1988. Respondent is not commonly known by the domain name. Policy ¶ 4(c)(ii). Respondent’s use of the domain name to redirect the Internet users to the Digital Media Network home page, and to solicit orders for Complainant’s products that he has no right to sell, are not bona fide offerings of goods or services, nor legitimate noncommercial fair uses. Policy ¶ 4(c)(i), 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services"). The distribution agreement that existed between the parties was terminated in May 2000 and therefore any rights conferred upon Respondent to use disputed marks no longer exists. Thus, the Complainant has met the requirement under Policy ¶ 4(a)(ii).

By registering several domain names for the purpose of disrupting the business of Complainant, Respondent demonstrates his bad faith. Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net and warneremi.org in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct).

Further, Respondent registered the domain name to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, endorsement, or affiliation of the website, which evidences Respondent’s bad faith registration and use. Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); Drs. Foster & Smith, Inc. v Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website.

Moreover, Respondent registered the domain name after he became a distributor of Complainant’s products. Respondent’s actual knowledge of the Complainant’s trademark evidences his registration and use of domain name in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Therefore, the complaint has satisfied the bad faith requirement of Policy ¶ 4(a)(iii).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "alennutrition.com", "alenfood.com", "alenusa.com" and "alenusa.net" be transferred from the Respondent to the Complainant.