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Generic Top Level Domain Name (gTLD) Decisions |
Lane-Labs USA, Inc. v. Dynasty
International
Claim Number: FA0312000220029
PARTIES
Complainant is Lane-Labs USA, Inc., Allendale, NJ (“Complainant”) represented by Peter S. Sloane, Esq., of Ostrolenk, Faber,
Gerb & Soffen, LLP, 1180 Avenue of the Americas, New York, NY 10036. Respondent is Dynasty International, 1300 West Olympic Blvd., Station 400, Los
Angleles, CA 90015 (“Respondent”) represented by Chun H. Kim, of Dynasty International.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <mgn-3.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he or she
has acted independently and impartially and to the best of his or her knowledge
has no known
conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on December 15, 2003;
the Forum received
a hard copy of the Complaint on December 18, 2003.
On December 19, 2003, Network Solutions,
Inc. confirmed by e-mail to the Forum that the domain name <mgn-3.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 December 22, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of January 12, 2004 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@mgn-3.com by e-mail.
A timely Response was received and
determined to be complete on January 11, 2004.
On January 16, 2004, the Complainant
Lane-Labs USA, Inc. filed a reply to the response previously filed by the
Respondent, Dynasty
International. The
reply was received in a timely manner and forwarded to the Panel which has
considered it in full. No additional response material
has been received from
Dynasty International.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The Complainant alleges a violation of
Policy ¶ 4(a)(i) claiming that the disputed
domain name registered by Respondent is identical or confusingly similar to its
trade mark. Complainant asserts rights
in the MGN3 trademark as a result of registration with the United States Patent
and Trademark Office and
continuing use in commerce since 1997 under
Registration Number 2,521,937. In
addition, it claims that the mark was used in connection with nutritional
supplements in its regular course of business and has
become widely recognized
by consumers of nutritional supplements.
Complainant alleges that the Respondent
has no rights to nor legitimate interests in the disputed domain name in that
Complainant
never authorized the use of its long established registered mark.
Complainant further alleges that the Respondent previously used
the disputed
domain name to promote and sell a competing nutritional supplement product and
as such, is not a bona fide offering
of goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use of the name pursuant to
Policy ¶ 4(c)(iii). For all of these
reasons Complainant argues that the Respondent has no rights nor legitimate
interests in the disputed domain name
as per Policy ¶ 4(a)(ii).
Complainant has alleged that the Respondent is guilty of registration and use
in bad faith in violation of Policy
¶ 4(a)(iii). In support of this
allegation, Complainant has entered into evidence a ‘cease and desist’ letter
sent to Respondent on March 18, 2003,
demanding the transfer of the disputed
domain name. Respondent claims that in
response to that letter, Dynasty
International discontinued use of a website located at <mgn3.com>, and by
doing so implicitly acknowledged that it had
infringed upon Complainant’s
rights in the MGN3 mark. Thereafter,
Complainant filed an arbitration proceeding with the National Arbitration Forum
and as a result Complainant states that
Respondent subsequently agreed to
transfer the <mgn3.com> name to
Complainant. Complainant further
asserts that Respondent has refused its request to transfer the domain name at
issue in this arbitration and therefore
results in evidence of Respondent’s bad
faith registration and use.
In addition thereto, Complainant
argues that Respondent is not only a competitor but through its actions is
disrupting Complainant’s
business in violation of Policy ¶ 4(b)(iii). Additionally, Complainant would show that
Respondent has attracted customers to its own website by creating confusion in Complainant’s
registered mark, which further evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).
Complainant also alleges that
Respondent has violated its rights by registering the domain name <mgn-3.com> in that it is
identical to the MGN3 trademark held by Complainant. Complainant points out that the name incorporates the mark in its
entirety and merely adds a hyphen, which is inconsequential under
the Policy.
B. Respondent
The Respondent
denies all wrong doing in respect to the disputed domain name and has filed
three Exhibits claiming that the trademark
MGN-3 belongs to Daiwa Health
Development, Inc., a California corporation.
Exhibit “B”
supplied by Respondent would show that Daiwa Pharmaceutical Company, Limited,
of Tokyo Japan, authorized Respondent to
export a product known as Mgn-3 (a
lentin product) and that Dr. Lane, then CEO of the Complainant had agreed to
allow Dynasty International,
Inc. to continue to sell the Mgn-3 product. Exhibit “3” attached to the Response is an
abstract book of the compound Mgn-3 (arabinoxylane) and testing its toxicity.
C.
Additional Submissions
On January 16, 2004, the Complainant
supplied a reply to the response and the Panel has received no additional
submissions from Respondent. In that
reply, Complainant states that Dynasty International has acknowledged that MGN
3 is a registered trademark of Lane-Labs as
set out in the response on page 5
and admits that Lane-Lab owns the registration of that mark. Lane-Labs contends that this is prima facia
evidence of its ownership of the Mgn3 mark and its exclusive right to use that
mark in
connection with the goods specified in the registration of the
certificate. The Complainant points out
that in Respondent’s Exhibit “A”, Daiwa Pharmaceuticals had abandoned its
pending US application on December
4, 1997 and that its application under
Serial No. 75/018,455 is now a dead application. Complainant also points out that Exhibit “B” to the response
shows that Daiwa may have had prior dealings with Dynasty but that this
evidence is irrelevant in that Lane-Labs, not Daiwa is the owner of the
registered mark MGN 3 in the United States.
Complainant dismisses Exhibit “C” in that it merely demonstrates that
Daiwa is the manufacturer of the product sold under the mark. It is, however, alleged by Complainant that
it is well settled that one need not actually manufacture goods in order to
acquire and
own a valid trademark for those goods. Complainant in its reply restates arguments that Dynasty’s
registration and use of the <mgn-3.com>
domain name will cause a likihood of confusion and disrupt the business of
Lane-Labs. Complainant further contends
that the actions of the Respondent in previously transferring the domain name <mgn-3.com> to Lane-Labs
acknowledges its recognition that confusion will result in its continuing use
of the disputed mark.
The
Panel finds that the domain name, <mgn-3.com>
is identical or confusingly similar to the trademark used by Complainant in its
regular course of business in violation of Policy
¶ 4(a)(i).
The
Panel finds that the Respondent has no rights nor legitimate interests in the
disputed domain name in violation of Policy ¶ 4(a)(ii).
The
Panel finds that Respondent’s registration and the use of the disputed domain
name is in bad faith in violation of Policy ¶ 4(a)(iii).
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.
The Panel finds that Complainant does
have legitimate rights in the MGN3 trademark by virtue of its registration with
the United States
Patent and Trademark Office.
In addition, its continuous use in commerce since 1997 bolsters this
finding. The Panel finds that
Complainant’s use of the trademark in connection with the sale of nutritional
supplements has become widely recognized
among the consuming public. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept.
19, 2000) (finding that the failure of Complainant to register all possible
domain names that surround its
substantive mark does not hinder Complainant’s
rights in the mark. “Trademark owners are not required to create ‘libraries’ of
domain
names in order to protect themselves”).
The Panel finds that the disputed
domain name <mgn-3.com> is
identical to Complainant’s MGN3 trademark because the mere addition of a hypen
is inconsequential under Policy ¶ 4(a)(i). See
Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the
fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish
identical or confusing similarity for purposes of the
Policy”); see also Nikon, Inc. v.
Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark
in the
domain name); see also Magnum Piering,
Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding
that confusing similarity under the Policy is decided upon the inclusion of a
trademark
in the domain name); see also
Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000)
(“the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is
identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000)
( “[the] addition of a hyphen to the registered mark is an insubstantial
change. Both the mark and
the domain name would be pronounced in the identical
fashion, by eliminating the hyphen"); see
also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain
name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition
of a hyphen and .com are not distinguishing features”).
The Panel finds that Respondent
lacks no rights to nor legitimate interests in the disputed domain name because
it had no authorization
to use the registered trademark of Complainant. See State Farm Mut. Auto. Ins. Co. v.
LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“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”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO
Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests
in the domain name because Respondent
was not authorized by Complainant to use
its trademarks and the mark was distinct in its nature, such that one would not
legitimately
choose it unless seeking to create an impression of an association
with Complainant). The Panel further
finds that Respondent’s previous use of the disputed domain name to promote and
sell competing nutritional supplement
products is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair
use of the name pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that
compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat.
Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests
in a domain name that
utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO
Aug. 21, 2000) (finding that the disputed domain names were confusingly similar
to Complainant’s mark and that
Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods).
Disruption of business by a
competitor and disrupting the competitor’s business through the use of a domain
name as indicated in this
dispute is found by the Panel to be a violation of
Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent
likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see
also S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant's marks
suggests that Respondent,
Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business).
The Panel concludes that a review of
the evidence sustains Complainant’s allegation that Respondent attracted
potential customers
to its own website by creating confusion with Complainant’s
registered mark and that as such it is evidence of bad faith registration
and use
pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name
in question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally
attempted to attract Internet users to his website for commercial
gain by
creating a likelihood of confusion with Complainant’s mark and offering the
same services as Complainant via his website);
see also Scholastic Inc. v. Applied Software Solutions, Inc.,
D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent initially used the domain name at issue
to resolve to a
website offering similar services as Complainant into the same market).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mgn-3.com> domain name be TRANSFERRED from Respondent to
Complainant.
ROBERT T. PFEUFFER, Senior District Judge
(Retired), Panelist
Dated: January 28, 2004
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