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NBTY, Inc. v. Modern Empire Internet Ltd. [2005] GENDND 1579 (30 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NBTY, Inc. v. Modern Empire Internet Ltd.

Case No. D2005-0832

1. The Parties

The Complainant is NBTY, Inc., Bohemia, New York, United States of America, represented by Edwards & Angell, LLP, United States of America.

The Respondent is Modern Empire Internet Ltd., Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <puritanpride.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2005. On August 4, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On August 4, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2005.

The Center appointed James A. Barker as the sole panelist in this matter on September 14, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The following uncontested facts are taken largely from the Complaint.

The Complainant markets vitamins and mineral supplements in the United States and in other countries. Since at least 1948, the Complainant or its predecessors have been using the marks PURITAN and PURITAN’S PRIDE in connection with nutritional supplements. The Complainant has a global consumer market base.

The Complainant operates a website at <puritan.com>, which offers products for sale, largely under its PURITAN’S PRIDE mark. That mark has a first registration date of July 6, 1982.

In the absence of a Response, no information is known about the Respondent, other than the information that is self-evident from the registration details for the disputed domain name. At the date of the decision, the disputed domain name reverted to a website providing links to other sites. The titles of those links included (under a heading for “More Categories”): “Puritan Pride Vitamin”, “Church Building”, “Puritan”, “Christian Religion”, “Mother Boards”, and “Faith”. At the top of the webpage is the heading “puritanpride.com” and “All the best resources on the net”. Links (under a heading for “Popular Searches”) included: “Vitamin”, “Herbal Product”, “Onlineshopping”, “Weight Loss”, “Puritan Pride”, and “Christians”.

The disputed domain name was registered on June 10, 2003.

5. Parties’ Contentions

A. Complainant

The following contentions, each in relation to the elements in paragraph 4(a)(i)-(iii) of the Policy, are summarised from the Complaint.

Identical or Confusingly Similar

The Complainant is the owner of numerous trademark registrations (evidence of which was attached to the Complaint) that contain the term “puritan”, as follows:

(a) PURITAN, Reg. No. 646,001 covering “vitamins” in Int’l Class 5;

(b) PURITAN’S PRIDE, Reg. No. 1,200,112 covering “vitamins, minerals and nutritional supplements,” in Class 5.

(c) PURITAN’S PRIDE.COM, Reg. No. 2,416,470 covering “computerized online ordering services featuring nutritional supplements and cosmetics,” in Class 35;

(d) PURITAN’S PRIDE ONE, Reg. No. 1,280,476 covering “nutritional supplements containing vitamins,” in Class 5.

The disputed domain name is confusingly similar to the Complainant’s PURITAN and PURITAN’S PRIDE marks. The disputed domain name incorporates a slightly misspelled version of the Complainant’s mark PURITAN’S PRIDE.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent (i) does not own any trademark or service mark registrations encompassing the disputed domain name, nor any variations thereof; (ii) is not commonly known by the disputed domain name; and (iii) is not making a legitimate noncommercial or fair use of the disputed domain name.

Rather, the Respondent is using the disputed domain name for commercial gain, to misleadingly divert consumers from the Complainant’s goods offered under its marks.

Bad Faith

The disputed domain name was registered and is being used in bad faith by the Respondent. By using the disputed domain name, the Respondent is intentionally redirecting Internet users to websites that offer products which compete with that of the Complainant, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, or endorsement of the products on the Respondent’s website. This conduct directly disrupts the Complainant’s ability to conduct business. Consumers looking for the Complainant’s products may guess at the domain name, thinking it likely to be controlled by the Complainant, and will instead be diverted to the Respondent’s website. That website, and its related links, are in no way affiliated with or sponsored by the Complainant.

The Respondent’s registration of the disputed domain name in 2003, which is a clear misspelling of the Complainant’s marks registered earlier, suggests that the Respondent knew of the Complainant’s use of its marks and that such a misspelling was intentional. Courts have described this conduct as “typosquatting” and deemed it a “classic example of bad faith domain name registration.” (Shields v. Zuccarini, [2001] USCA3 120; 254 F.3d 476, 3rd. Cir. 2001)

Furthermore, the Respondent has been a respondent in prior WIPO UDRP proceedings, where it was determined that the Respondent registered the domain names then in dispute in bad faith. (See Weld Racing, Inc. v. Modern Empire Internet Limited, WIPO Case No. D2005-0305; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.)

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

The Complainant provided evidence of its rights in the registered trademarks PURITAN and PURITAN’S PRIDE, and the Panel accordingly finds that it has those rights. The ownership of a registered trademark satisfies the threshold requirement of having trademark rights.  (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and the cases relevantly cited in that overview.) Those marks are registered on the principal register of the US Patent and Trade Mark Office. Previous panel decisions have indicated that such registration establishes a presumption of validity in U.S. trademark law. (The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh, WIPO Case No. D2003-0690.) The Respondent has not submitted any evidence to rebut these presumptions of validity.

It is well-established that the gTLD extension “.com” is to be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark.

The disputed domain name incorporates the Complainant’s PURITAN’S PRIDE mark, with the difference that it omits the possessive apostrophe and the associated “s”. Such a difference is immaterial for the purpose of the Policy. The dominant and obvious impression of the domain name is that it is virtually identical with the Complainant’s mark. That impression is not materially lessened by the omission of the possessive.

Accordingly, the Panel finds that the disputed domain name is virtually identical to the Complainant’s registered mark PURITAN’S PRIDE.

B. Rights or Legitimate Interests

The Respondent did not contest statements by the Complainant: that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Complainant has registered rights in its marks.

Nothing in the apparent identity of the Respondent, as indicated in the registrar’s Whois details, suggests that there is any legitimate relationship between the Respondent and the disputed domain name. Further, the Complainant disclaims that it has any relationship with the Respondent that might give it relevant rights in its trademarks.

Paragraph 4(c) of the Policy sets out matters by which a respondent may demonstrate that it has rights or legitimate interests in a domain name. Panels have consistently found that the burden is on the respondent to provide evidence of its rights or legitimate interests under paragraph 4(c). (See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.) That burden arises once a complainant establishes a prima facie case against the respondent, which the Complainant has done in this case.

The Respondent made no response in this case, either to rebut the Complainant’s prima facie case or otherwise. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy relevantly provides that there is evidence of bad faith where:

“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site…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.”

Paragraph 4(b)(iv) has, in essence, three elements that must be satisfied for a finding in the Complainant’s favour: that there is an intentional attempt to attract Internet users; the intention was for commercial gain; and there is a creation of a likelihood of confusion. Each of those elements are satisfied in this case.

Firstly, the Panel finds on balance that the Respondent knew of the Complainant’s marks when it registered the disputed domain name. For the reasons set out above, the disputed domain name is confusingly similar to the Complainant’s mark PURITAN’S PRIDE. Taking into account the content of the Respondent’s site, it is unlikely that this confusing similarity was accidental. The website to which the disputed domain name reverts includes links titled “Vitamin”, “Herbal Product”, “Onlineshopping”, “Weight Loss”, and “Puritan Pride”, each of which is identical or related in nature to the type of products offered by the Complainant. The link “Puritan Pride” reverts to a website advertising the Complainant’s products. It is clear from this that the Respondent is using the disputed domain name, intentionally, to attract Internet users to its website.

Secondly, the Respondent’s website advertises various products and services and includes links to further websites relating to those products and services. Most of those sites self-evidently operate for commercial gain. It is reasonable to infer from this that the Respondent intends to obtain some associated commercial gain.

Further, the website to which the disputed domain name refers, includes one link which reverts to the Complainant’s website. The Complainant’s website offers an “affiliate program”, under which other websites are invited to include links to the Complainant’s site, in return for commissions. In the absence of any reference to this by the Complainant, the Panel speculates that the Respondent may have sought to obtain commissions under the affiliate program by linking to the Complainant’s website. There would not seem to be any other self-evident reason why such a link would be included. This possibility gives further support to the appearance that the Respondent opportunisticly operates for commercial gain. (And the Panel notes that, if the Respondent is a member of the Complainant’s affiliate program, it would clearly be in breach of the terms of that membership. Those terms, available on the Complainant’s website, impose restrictions on uses of the Complainant’s trademarks and do not give any rights to affiliates to use the Complainant’s trademarks in a domain name.)

Thirdly, the disputed domain name is virtually identical to the Complainant’s mark. The difference between the Complainant’s mark and the disputed domain name is trivial. The likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, is therefore obvious.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith, for the purpose of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <puritanpride.com> be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: September 30, 2005