DECISION

Nature's Path Foods Inc. v. Natures Path, Inc.

Claim Number:  FA0402000237452

PARTIES

Complainant is Nature's Path Foods Inc. (“Complainant”), represented by Paul Smith, of Paul Smith Intellectual Property Law, 1508 West Broadway, Suite 330, Vancouver, BC, V6J 1W8, Canada.  Respondent is Natures Path, Inc. (“Respondent”), 5621 Reiserstown Rd., North Port, FL 34287.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <naturespathinc.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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 16, 2004; the Forum received a hard copy of the Complaint on February 17, 2004.

On February 18, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <naturespathinc.com> is registered with Network Solutions, Inc. and that 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 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 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@naturespathinc.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 Forum transmitted to the parties a Notification of Respondent Default.

On March 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <naturespathinc.com> domain name is confusingly similar to Complainant’s NATURE’S PATH mark.

2. Respondent does not have any rights or legitimate interests in the <naturespathinc.com> domain name.

3. Respondent registered and used the <naturespathinc.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a Canadian company that manufactures and sells various organic and natural food products in the United States and around the world.  Complainant has used the NATURE’S PATH mark in the United States since at least as early as 1984. Complainant holds Registration No. 2,069,075, registered on June 10, 1997 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the NATURE’S PATH mark.  At its website located at the <naturespath.com> domain name, Complainant uses its mark to promote good health, as well as its products which include ingestible nutritional products and health publications.  Complainant has not authorized Respondent to used the NATURE’S PATH mark in its domain name.   

Previously, Respondent registered the <naturespath.com> domain name, which wholly incorporated Complainant’s mark.  After negotiations and the filing of a Complaint in the United States Federal Court, Respondent agreed to relinquish control of the <naturespath.com> domain name to Complainant. 

Unbeknownst to Complainant, Respondent registered the <naturespathinc.com> domain name on July 21, 1998.  Respondent is using the domain name to sell various ingestible nutritional products and health publications.  Respondent’s website also features numerous links to other websites. 

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the NATURE’S PATH mark through registration of the mark with the USPTO.  See 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”); Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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 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”).

Respondent’s <naturespathinc.com> domain name wholly incorporates Complainant’s NATURE’S PATH mark, except Respondent removed the apostrophe and eliminated the space between the two words that comprise Complainant’s mark.  However, the removal of apostrophes and spaces from a registered mark is not a distinguishing difference when determining the similarity between a domain name and a mark under the Policy.  Respondent also added the suffix “inc” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The addition of the suffix “inc” does not distinguish Respondent’s domain name from Complainant’s mark.  Furthermore, the addition of a gTLD such as “.com” is insignificant in the Panel’s determination since every domain name must include a top-level domain name.  Thus, the Panel finds that Respondent’s minor alterations to Complainant’s mark are not sufficient to distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Accordingly, the Panel finds the Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Respondent has not submitted a Response in this proceeding.  Thus, the Panel chooses to view the Complaint in the light most favorable to Complainant and accepts as true all assertions made by Complainant.  Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <naturespathinc.com> domain name.  See 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 rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

In its WHOIS contact information, Respondent lists its name and its administrative contact as “Natures Path, Inc.”  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.  Moreover, Complainant’s first use of the NATURE’S PATH mark in commerce and its registration of the mark predates Respondent’s registration of the domain name.  Furthermore, Respondent has not been authorized by Complainant to use the NATURE’S PATH mark in its domain name.  Thus, the Panel concludes that Respondent has not been commonly known by the domain name pursuant to Policy ¶ 4(b)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent’s use of the infringing <naturespathinc.com> domain name to sell nutritional products and health publications, which are similar to products that Complainant offers at its website, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is using the infringing domain name to sell prescription drugs it can be inferred that Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website); 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).

Accordingly, the Panel finds the Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent is using Complainant’s mark in a domain name to attract Internet users to its competing website.  Since both Respondent and Complainant operate in the same line of business and market their similar products via the Internet, Respondent knew or should have known of the Complainant’s business under its registered mark.  Based on the foregoing, the Panel presumes that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business.  Thus, the Panel finds that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  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)

It is likely that Internet users will be confused by the products offered for sale at Respondent’s website since the products are similar to products offered by Complainant, and the domain name hosting Respondent’s website wholly incorporates Complainant’s mark.  Thus, the Panel finds that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Furthermore, the Panel in this proceeding may consider criteria beyond those listed in Policy ¶ 4(b) in its bad faith use and registration analysis.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).

Panels have consistently held that registration of a mark with knowledge of another’s rights in the mark is evidence of bad faith registration under Policy ¶ 4(a)(iii).  In this case, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the NATURE’S PATH mark when it registered the <naturespathinc.com> domain name since Respondent had previously agreed to relinquish the infringing <naturespath.com> domain name to Complainant.  In addition, Complainant’s registration of the mark on the Principal Register of the USPTO confers constructive notice on Respondent.  Thus, the Panel finds that Respondent had knowledge of Complainant’s rights in the mark and Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) when it registered the domain name.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).  

Accordingly, the Panel finds the Policy ¶ 4(a)(iii) has been satisfied. 

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 <naturespathinc.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  April 2, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/529.html