WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Samson Distributing, Inc. v. Allan Primeu
Case No. D2005-1022
1. The Parties
The Complainant is Samson Distributing, Inc., Lake Worth, Florida, United States of America, represented by Newman & Newman, Attorneys at Law, LLP, United States of America.
The Respondent is Allan Primeau, Winnipeg, Canada.
2. The Domain Name and Registrar
The disputed domain name <d-bol.org> is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2005. On September 29, 2005, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On September 30, 2005, Schlund + Partner 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 14, 2005. The Center verified that the Complaint together with the amendment to 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 October 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2005.
The Center appointed Ana María Pacón as the Sole Panelist in this matter on November 28, 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.
The language of this proceeding is English.
4. Factual Background
The Complainant is a corporation in Florida, United States of America. It provides dietary and nutritional supplements. For the identification and promotion of its products the Complainant has registered the trademark “D-BOL” for “dietary supplement for nutritional benefit” in the United States of America, under registration number 2510601 dating from November 20, 2001. This trademark claims first use on August 15, 2000 and first use in commerce on August 31, 2000.
The disputed domain name <d-bol.org> was registered on July 22, 2005, according to a printout of the WHOIS database in favor of Allan Primeau.
5. Parties’ Contentions
The Complainant takes the position that the contested domain name is identical or at minimum confusingly similar to the Complainant’s trademark D-BOL. Hence satisfying the confusing similarity requirement in paragraph 4(a) of the Policy and paragraph 3(b) of the Rules. The addition of “.org” in the domain name is not sufficient to mislead the consumers into believing that the Respondent’s product is actually the Complainant’s product.
2. No legitimate interests
The Respondent does not have registration or pending trademark application for the mark “D-BOL.” Moreover, the Respondent has never been commonly known by the name D-BOL.
3. Bad faith
The use by the Respondent of an almost identical domain name to promote products directly competing with the Complainant’s without any reason, demonstrates bad faith of the Respondent using of the domain name <d-bol.org>, the Respondent is attempting to attract Internet users to his own website for commercial gain. This constitutes a violation of paragraph 4(b) of the Policy.
Moreover, it can be assumed that the Respondent has known the Complainant’s rights in the trademark “D-BOL.” In fact, by conducting a simple trademark search, the Respondent could have learned of the Complainant’s trademark registration.
Finally, the publicity used by the Respondent on his website (“D-BOL is a very popular steroid from Mexico ... so what athletes doing then flying to Mexico or Cuba well most are not, they come to Primolabs looking for products that have similar effect ...” as well as the expression “We do not condone the use of illegal steroids”) suggested that the Complainant’s product was an “illegal steroid” and that the Respondent’s products were superior. The Respondent’s disparaging comments regarding the Complainant’s products constitute further evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name.
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A Complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name are identical or confusingly similar to the mark.
The Complainant has provided sufficient evidence of its rights to the trademark D-BOL. The only difference between the Complainant’s trademark D-BOL and the domain name <d-bol.org> is the addition of the generic “org” domain.
The Complainant has demonstrated the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4a(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy sets out certain circumstances in particular but without limitation, which if found by the Panel to be proved on its evaluation of all the evidence presented, shall demonstrate rights or a legitimate interest on the part of the respondent. The Respondent has not submitted a response and has failed to invoke any circumstance that demonstrate any rights or legitimate interests in the domain name.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark. The Complainant has argued that the Respondent has no rights or legitimate interests to the domain name in accordance with paragraph 4(c) of the Policy, making out a prima facie case that the Respondent lacks such rights. The Respondent has defaulted and has thus not provided any evidence of any rights to the disputed domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and used the disputed domain names in bad faith. The language of Policy Paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
The Policy, Paragraph 4(b), indicates that certain circumstances may, “in particular but without limitation,” be evidence of bad faith.
In the present case, there are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of his registration of the domain name at issue. The Complainant’s trademark consists of an arbitrarily arranged letter and a word, which is not a known word. As already established, the contested domain name is almost identical with the registered trademark of the Complainant. The Complainant and the Respondent are working in the same specific business. It is common to know the trademarks of competitors. The combination of the above factors makes it inconceivable to the Panel that the Respondent was not aware of the Complainant’s trademark when he registered the contested domain name.
The content of the Respondent’s website is in the view of the Panel, an indication of the Respondent’s intent to attract consumers to its website by tarnishing the Complainant’s name and goodwill. The fact that the Respondent at one point removed the prominent reference to the trademark D-BOL at the top of the website and also removed the photograph of the product D-BOL, but soon after reverted to the prominent display of the trademark D-BOL reflects the Respondent’s bad faith. The Panel notes that the Respondent has used the website associated with the domain name to sell competing products to the Complainant’s products (Annex 4 of the Complaint). The Respondent has thus attempted to attract Internet users to its website for commercial gain by diverting customers away from the Complainant by creating a likelihood of confusion with the Complainant’s D-BOL trademark (paragraph 4(b)(iv) of the Policy).
The fact that the Respondent has offered to transfer the domain name at issue to the Complainant (apparently without seeking a monetary sum) is in the opinion of the Panel not in itself decisive evidence of good faith. In light of the fact that the Respondent must have been aware of the Complainant’s trademark rights at the time of the registration and use, its seeking to transfer the domain name to the Complainant does not take away from the fact that it acted in bad faith.
Thus, the Panel concludes that the disputed domain name was registered and being used in bad faith.
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, <d-bol.org> be transferred to the Complainant.
Ana María Pacón
Dated: December 12, 2005