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Generic Top Level Domain Name (gTLD) Decisions |
Mannatech,
Inc. v. K-Pro Marketing
Claim Number: FA0201000104189
PARTIES
The Complainant
is Mannatech, Inc., Coppell, TX
(“Complainant”) represented by Steven
Rains, of Mannatech, Inc. The Respondent is K-Pro Marketing, St. Cloud, MN (“Respondent”) represented by Kipp
Hoeft.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name
at issue is <mannatechinc.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict
in serving as Panelist in this proceeding.
Anne M. Wallace,
Q.C., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on January 30, 2002; the Forum received
a hard copy of the
Complaint on January 31, 2002.
On February 5,
2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain
name <mannatechinc.com> is
registered with Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 February 5,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of February 25, 2002 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@mannatechinc.com by e-mail.
A timely Response
was received and determined to be complete on February 22, 2002.
On March 5, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Mannatech develops and sells proprietary
nutritional supplements and topical products through a network marketing system
of independent
sales persons referred to as distributors or independent
associates. Mannatech has been in
business since 1993 and has used the trademark MANNATECH as its corporate name
since October 25, 1995. It has further established business
under the corporate name MANNATECH in Australia, Canada, Japan and the United
Kingdom.
Mannatech's goods have been sold in every
state of the U.S.A., Australia, Canada, Japan and the United Kingdom with
annual sales exceeding
$150 million (for fiscal year 2000).
As a result of Mannatech's use of the
trademark MANNATECH and the promotion and advertising thereof, Complainant
argues that the mark
MANNATECH has acquired significant goodwill and reputation
among potential purchasers of Mannatech's goods and distributors of those
goods
and constitutes an important asset of Mannatech's business.
Mannatech applied for registration of the
mark MANNATECH on March 9, 1998 . Mannatech argues that under Section
7(c) of the Federal Trademark Act, 15 U.S.C. § 1057(c), Mannatech's constructive
use of MANNATECH conveys a nationwide
right of priority in the trademark
MANNATECH effective from March 9, 1998.
On or about September 21, 2000, K-Pro
Marketing registered the domain name <mannatechinc.com> (the "Domain Name"). Respondent registered the Domain
Name and started to use the site despite his knowledge of Mannatech's
prior use
of the trademark MANNATECH as its corporate name and Mannatech's trademark
rights in the same.
Since Respondent has registered the
domain name, he has not used the site in any meaningful way, and has merely
posted a splash page
which reads as follows:
coming soon
the premiere
members only
adult club
members
must be 18 years of age
Complainant
says this splash page leaves the impression that what is coming is a
pornographic site and that somehow Complainant is
connected to this
pornographic site.
Complainant
submits that the domain name <mannatechinc.com> is confusingly
similar to its MANNATECH marks, that Respondent has no rights or legitimate
interests in the domain name and that
Respondent has registered and is using
the mark in bad faith.
B. Respondent
Respondent
describes himself as self-employed, and he carries on various businesses. In
the fall of 2000, he was approached by a Mannatech
sales member. Although he
was too busy to really do anything with the opportunity at the time, and he did
not have $1000 to sign
up to be part of the Mannatech organization, Respondent
thought that within six to twelve months he would be able to focus on the
products of Mannatech. Because a web site is an easy and inexpensive way to
promote a multi-level marketing program, Respondent searched
for availability
of <mannatechinc.com> and found that it was available. He called a
local hosting company, ReadyNetGo, Inc., which he had used in the past, and
registered
the domain name on September 21, 2000. The domain “sat empty” for a
while and then Respondent posted the “coming soon” splash page
which still
exists today. Otherwise, the site has never been active.
Respondent
acknowledges that the domain name is confusingly similar to Mannatech’s
trademark and acknowledges that was his intent.
Otherwise how could he
advertise Mannatech products on the Internet?
Respondent argues, however, that he has a legitimate interest in the
domain name and that he has not acted in bad faith.
FINDINGS
The
Panel finds as follows:
1.
The domain
name in question, <mannatechinc.com> is confusingly similar to
Complainant’s MANNATEC trademark.
2.
Respondent
has no rights or legitimate interest in the domain name; and
3.
Respondent
has acted in bad faith within the meaning of the UDRP.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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.”
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.
Identical
and/or Confusingly Similar
Respondent has conceded that the domain
name <mannatechinc.com> is confusingly similar to Complainant’s
MANNATEC trademark. Indeed, Respondent admits the reason for his registration
of the
domain name was to benefit from the goodwill of Complainant’s mark and
promote sale of products of Complainant.
Although Complainant has not provided
evidence that it holds a registered mark in MANNATECH, Complainant has acquired
sufficient rights
at common law and through its pending trademark application
to satisfy the trademark requirement of Policy 4(a)(i).
Complainant has satisfied the first
element of the policy.
Rights
or Legitimate Interests
Complainant asserts that Respondent holds
no trademark rights in MANNATECH and does not do any business under that mark.
While Respondent
says he intended to pursue a business as a sales member of the
Complainant, there is no evidence before me that he has taken any
steps to
become an active sales member of Complainant, nor is there any other evidence
to establish that Respondent has acquired
any right or legitimate interest in the
domain name. The Panel does not view Respondent’s splash page as establishing a
right or
legitimate interest.
Complainant has satisfied the second
element of the policy.
Registration
and Use in Bad Faith
With respect to this element, the
paragraph 4(b) of the Policy reads:
“For
the purposes of Paragraph 4(a)(iii), the following circumstances, in particular
but without limitation, if found by the Panel
to be present, shall be evidence
of the registration and use of a domain name in bad faith:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting,
or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to
a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to
the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in
a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or
other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation,
or endorsement of your web site or location
or of a product or service on your web site or location
On
a review of the evidence, the Panel finds the following with respect to the
four enumerated circumstances:
1.
There is no
evidence that the name was acquired primarily for the purpose of sale to
Complainant or a competitor.
2.
There is no
evidence of intent to prevent the owner from reflecting the mark, and in any
event there is no pattern.
3.
There is no
evidence that the primary purpose of the registration was to disrupt the
business of the Complainant nor does the Complainant
appear to be a
"competitor" of the Respondent within the meaning of the policy.
4.
There is no
site operating at this time.
Given that none of the four enumerated policy criteria with
respect to bad faith have been met, that leaves the Panel with the question
of
whether there is bad faith for some other reason. On our reading of the Policy,
each panel is responsible to determine whether
there has been bad faith. The
four cited examples are situations where, if the evidence exists, the Panel
must find bad faith. This
does not, however, preclude the Panel finding that
other circumstances amount to bad faith in a particular case. The paragraph
says,
"in particular but without limitation".
The Panel has examined all the evidence and arguments
carefully. Complainant argues that Respondent was well aware of Complainant’s
rights and interests in the MANNATECH mark when he registered and used the
disputed domain name. Respondent admits he knew of Complainant’s
mark. Indeed,
that knowledge was the reason he chose to register the domain name. Respondent
has not made any active use of the domain
name. He has merely displayed a
“coming soon” slash page at the site. While perhaps not all visitors to the
site would get the impression
that the advertised site would be a pornographic
site, objectively it is reasonable to assume from the nature of the words on
the
splash page that at least some Internet users would conclude that the
eventual site would be pornographic, thus connecting Complainant’s
mark with
pornographic activities. Lastly, Respondent has made no other use of the site
and has made no preparations to use the site
for a legitimate business purpose.
These circumstances, on a totality of the evidence, amount to bad faith within
the meaning of
the Policy.
Complainant succeeds on the third element.
DECISION
The
Panel finds in favour of the Complainant in this case, and in accordance with
Paragraph 4(i) of the Policy, the Panel requires
that the registration of the
domain name <mannatechinc.com> be transferred to the
Complainant.
Anne M.
Wallace, Q.C., Panelist
Dated: March 18, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/413.html