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Generic Top Level Domain Name (gTLD) Decisions |
MedaBiotics Laboratories, L.L.C. v.
NOLDC, Inc.
Claim
Number: FA0410000346252
Complainant is MedaBiotics Laboratories, L.L.C. (“Complainant”),
represented by Robert W. Smith, of McCarter & English, LLP,
Four Gateway Center, 100 Mulberry Street, Newark, NJ 07102. Respondent is NOLDC, Inc. (“Respondent”), 838 Camp St. 4th Floor, New
Orleans, LA 70130.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <anxietol7.com>, <anxietol7.net>,
<cortiburn.net>, <cortizide.net>, <cortiburnreview.com>
and <cortizidereview.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
15, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 18, 2004.
On
October 18, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that
the domain names <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com> are
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
Respondent is the current registrant of the names.
Intercosmos Media Group,
Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a
Directnic.com 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
October 19, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 8, 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@anxietol7.com,
postmaster@anxietol7.net, postmaster@cortiburn.net, postmaster@cortizide.net,
postmaster@cortiburnreview.com
and postmaster@cortizidereview.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 30, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Judge Harold Kalina (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute
Resolution Policy (the "Rules")
"to employ reasonably available
means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com> domain
names are confusingly to Complainant’s CORTIBURN, CORTIZIDE and ANXIETOL 7
marks.
2. Respondent does not have any rights or
legitimate interests in the <<anxietol7.com>, <anxietol7.net>,
<cortiburn.net>, <cortizide.net>, <cortiburnreview.com>
and <cortizidereview.com> domain names.
3. Respondent registered and used the <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Medabiotics laboratories, L.L.C., is engaged in the manufacturing and sale of
nutritional and dietary supplements.
Complainant has trademark registration applications for the CORTIBURN,
CORTIZIDE and ANXIETOL 7 marks currently pending with the United
States Patent
and Trademark Office (e.g., Serial No. 78/382,209, filed March 11, 2004, Serial
No. 78/382,723, filed March 11, 2004,
Serial No. 78/409,143, filed April 27,
2004). Complainant has used the CORTIBURN,
CORTIZIDE and ANXIETOL 7 marks in connection with the sale and advertisement of
its dietary and
nutritional supplements since at least as early as October of
2003.
Respondent is a
domain name escrow service engaged in the business of facilitating the sale of
domain names belonging to third parties.
Complainant’s former employee, Alexander Best, d/b/a Nutrition Citizen,
registered the <anxietol7.com>, <anxietol7.net>, <cortiburn.net>,
<cortizide.net>, <cortiburnreview.com> and <cortizidereview.com>
domain names on Complainant’s behalf. Mr.
Best registered the <anxietol7.com> and <anxietol7.net>
domain names on April 27, 2004, <cortiburn.net> and <cortizide.net>
on April 28, 2004 and <cortiburnreview.com> and <cortizidereview.com>
on May 4, 2004. Mr. Best’s
registration of the disputed domain names granted him access to the passwords
and codes necessary to effect a transfer
of the domain names.
Complainant
terminated Mr. Best’s employment in May of 2004, and Mr. Best then transferred
the disputed domain names to Cerreto.
Upon learning that the registration records for the disputed domain
names listed Cerreto as the registrant, Complainant contacted
Mr. Best. Mr. Best informed Complainant he would
transfer the disputed domain names to Complainant with the stipulation that
Complainant agree
to merge with Mr. Best’s business. Mr. Best then represented that he would transfer the disputed
domain names to Complainant on or about August 1, 2004, but has failed
to do
so.
Instead, since
early August, the disputed domain names have been used to redirect Internet
users to various websites offering for
sale dietary and nutritional supplements
baring names similar to the CORTIBURN, CORTIZIDE and ANXIETOL 7 marks. Additionally, the registrants for the disputed
domain names have changed on several occasions with the present registrant
being Respondent. Respondent is
currently offering the disputed domain names for sale on their respective
websites.
Complainant has
filed a Complaint alleging violation of the Anticybersquatting Consumer
Protection Act of 1999, the Lanham Act, New
Jersey state common law unfair
competition, unjust enrichment and tortuous interference in the United States
District Court for the
District of New Jersey.
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 Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a) of
the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) 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.
Complainant, a
fairly new company engaged in the manufacturing and selling of nutritional and
dietary supplements, asserts rights
in the CORTIBURN, CORTIZIDE and ANXIETOL 7
marks, which it has been using in connection with its nutritional and dietary
supplement
business since as early as 2003.
Although Complainant does not have trademark registration rights in the
CORTIBURN, CORTIZIDE and ANXIETOL 7 marks, Complainant has
diligently applied
for trademark registration for the marks with the United States Patent and
Trademark Office as a part of its efforts
to establish rights in the
marks. The Panel finds that
Complainant’s pending trademark applications and its continuous use of the
marks in commerce in connection with
the manufacturing and sale of nutritional
and dietary supplements suffices to establish Complainant’s rights in the
CORTIBURN, CORTIZIDE
and ANXIETOL 7 marks.
See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th
ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the
reference to a trademark or service
mark ‘in which the complainant has rights’
means that ownership of a registered mark is not required–unregistered or
common law trademark
or service mark rights will suffice” to support a domain
name Complaint under the Policy); see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’
but only that
Complainant has a bona fide basis for making the Complaint in the first place).
Additionally,
the Panel finds Complainant has established that it has rights in the
CORTIBURN, CORTIZIDE and ANXIETOL 7 marks because
they are sufficiently
distinctive. See Western Holdings,
LLC v. JPC Enter., LLC et, al., D2004-0426 (WIPO Aug. 5, 2004) (“Although
Complainant’s [TRIVESTIN] mark is not registered, the mark appears to be
inherently distinctive
and subject to use in commerce sufficient to create
common law trademark rights”).
Furthermore,
Complainant was the first initial registrant of the <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com>
domain names before the institution of this proceeding. The Panel finds that Complainant’s previous
registration of domain names reflecting Complainant’s CORTIBURN, CORTIZIDE and
ANXIETOL
7 marks evidences Complainant’s rights in the marks. See
Am. Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that Complainant held the
domain name prior to Respondent’s registration,
as well held a pending
trademark application in the mark, evidences rights in the domain name and the
mark therein contained).
Moreover, the <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com>
domain names are confusingly similar to Complainant’s CORTIBURN, CORTIZIDE and
ANXIETOL 7 marks. The Panel finds that
the addition of the generic top-level domains “.com” and “.net” do not distinguish
the domain names from Complainant’s
marks.
See Phone-N-Phone Serv.
(Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-0040 (WIPO Mar. 23, 2000)
(finding that the domain name was identical or confusingly similar to
Complainant’s pending service
mark application); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Snow
Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding
that the domain name <termquote.com> is identical to Complainant’s
TERMQUOTE
mark); see also Little
Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE
trademark and service mark).
The Panel also
finds that the addition of the generic word “review” to Complainant’s marks
does not negate the confusing similarity
between the domain names with Complainant’s
marks. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to Complainant’s
THE BODY SHOP trademark); see also Quixtar Inv., Inc. v. Smithberger,
D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety Complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interest in the disputed
domain names. Due to Respondent’s
failure to respond to the Complaint, it is assumed that Respondent lacks rights
and legitimate interests in the
disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has
no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate
interest does exist).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[i]n the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint”);
see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact
in the allegations
of Complainant to be deemed true).
Respondent is
using the <anxietol7.com>, <anxietol7.net>, <cortiburn.net>,
<cortizide.net>, <cortiburnreview.com> and <cortizidereview.com>
domain names to redirect Internet users to a website that advertises and offers
nutritional supplements similar to those offered
by Complainant. Respondent’s use of domain names that are
confusingly similar to Complainant’s CORTIBURN, CORTIZIDE and ANXIETOL 7 marks
to lead Internet
users to a commercial website that offers nutritional
supplement products is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use of the domain names pursuant to Policy
¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation
of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's site to a competing website).
Moreover,
Respondent has not offered any evidence and there is no proof in the record
suggesting that Respondent is commonly known
by the <anxietol7.com>,
<anxietol7.net>, <cortiburn.net>, <cortizide.net>,
<cortiburnreview.com> and <cortizidereview.com>
domain names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because
it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i)
because Respondent is presently offering the
disputed domain name registrations
for sale on the Internet. See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (“general offers to sell the domain name, even if no certain
price is demanded, are evidence
of bad faith”); see also Diners
Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839
(Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes
that it is “available for lease or sale,”
evidence that the domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred
from the fact that
“the sole value of the [<wwwdinersclub.com] domain name
is dictated by its relation to Complainant’s registered DINERS CLUB mark).
Respondent has also
intentionally diverted Internet users who are attempting to reach Complainant’s
website, to various competing websites offering for
sale nutritional and vitamin
supplements–related products similar to those manufactured and sold by
Complainant. Respondent’s use of the
disputed domain names to redirect consumers to competing websites evidences
Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and
Complainant were in the same line of business in
the same market area); 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 Franpin SA v. Paint Tools S.L.,
D2000-0052 (WIPO May 25, 2000) (finding bad faith where Respondent, a company
financially linked to Complainant’s main competitor,
registered and used the
domain name in question to disrupt Complainant’s business).
Policy ¶
4(a)(iii) is established for Complainant.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED
Accordingly, it
is ordered that the <anxietol7.com>, <anxietol7.net>,
<cortiburn.net>, <cortizide.net>, <cortiburnreview.com>
and <cortizidereview.com> domain names be TRANSFERRED
from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
December 7, 2004
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