WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe
Case No. D2008-0642
1. The Parties
The Complainant is World Natural Bodybuilding Federation, Inc., of United States of America, represented by Greenberg Traurig, LLP, United States of America.
The persons named in the Amended Complaint as Respondents are Daniel Jones, TheDotCafe, Victoria McCann, and Robert Hope, all of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <pronaturalmuscle.com> (“the Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. The original named Respondents were Ms. McCann and Messrs. Jones and Hope. On April 25, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On April 25, 2008, eNom transmitted by email to the Center its verification response, advising that TheDotCafe is the organization which is listed as the registrant, and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 29, 2008, adding “TheDotCafe” as an additional Respondent. 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 Complaint to “Daniel Jones TheDotCafe”, and the proceeding commenced on April 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2008. Neither Mr. Jones nor “TheDotCafe” submitted any response. Accordingly, the Center notified the Respondents’ default on May 21, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on May 23, 2008. 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.
As no response has been filed, the Panel has checked the record to ensure that the Center has discharged its responsibility under the Rules to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
Under the Rules, “the Respondent” is defined to mean “the holder of a domain-name registration against which a complaint is initiated”. The various Whois reports produced by the Complainant, and eNom’s verification response, all show the holder of the registration (the registrant), as “TheDotCafe Daniel Jones”. No mention is made of Ms McCann or Mr. Hope. In those circumstances the proper Respondent is “The Dot Cafe Daniel Jones”, and it appears that the Amended Complaint and Notice of Commencement of Administrative Proceeding were successfully delivered to that party (or parties) at the Shropshire and North Lincolnshire addresses provided for them in the Whois reports. It was not necessary to separately notify the Amended Complaint to Ms. McCann or Mr. Hope.
In this decision, therefore, references to “the Respondent” are references to “TheDotCafe Daniel Jones”. TheDotCafe, Daniel Jones, Ms. McCann, and Mr. Hope, are collectively referred to in this decision as “the named Respondents”.
4. Factual Background
The following uncontested facts are taken from the Amended Complaint.
The Complainant is an international natural bodybuilding federation, based in the United States of America. It was established in 1989 to address and counter the prevalence of the use of steroids in professional body building.
Since 1989, it has staged at least 70 bodybuilding, fitness and figure contests for men and women. It has awarded approximately $850,000 in total prize money for its competitions.
The Complainant is the registered proprietor of the word mark PRO NATURAL in the United States of America, in connection with “conducting bodybuilding championships among drug-free athletes and bodybuilding exhibitions”. That registration has been in effect since June 1992. The Complainant also holds a United Kingdom registration for the PRO NATURAL mark, covering the same services. The United Kingdom registration has been in effect since October 6, 2006.
The Complainant says that it has used its PRO NATURAL mark in commerce continuously since 1989, in connection with bodybuilding championships. It says that it has spent thousands of dollars advertising and marketing its bodybuilding championships, and that it has used its PRO NATURAL marks in its advertising and promotional materials.
The Complainant produced a number of sample advertisements and magazine extracts showing that it has indeed promoted its championships and competitions under the PRO NATURAL mark.
The Named Respondents and the Domain Name
According to the Complaint, Victoria McCann is a female bodybuilder, and a former competitor in competitions run by the Complainant. In 2000, she established the British Natural Bodybuilding Federation (“BNBF”). The Complainant says that Ms. McCann ceased to participate in the Complainant’s competitions in June 2006, following a World Natural Bodybuilding Federation (“WNBF”) competition in which she was placed fourth. Until June of 2006, BNBF was affiliated with the Complainant; since June of 2006, it has been affiliated with one or more of the Complainant’s rival associations.
Robert Hope, is a professional body builder, and holds the title of “Pro Natural Universe 2006”. Mr. Hope was also the champion in various other competitions conducted by the Complainant, including the Mr. Universe award which he won in 2004.
BNBF operates a website at “www.bnbf.co.uk”, and from September 2006, Ms. McCann and Mr. Hope began posting derogatory comments about the Complainant and its services on the user forum of the website at “www.bnbf.co.uk”. The Complainant objected, and when its complaints were not resolved, it filed suit in the High Court of Justice in the United Kingdom of Great Britain and Northern Ireland against BNBF and Ms. McCann.
The Domain Name was registered on or about November 23, 2005. The Domain Name resolves to a website (“the Respondent’s website”) which features the body building activities of Ms. McCann and Mr. Hope, and promotes various services and/or goods marketed by them.
The Complainant produced screenshots of the Respondent’s website, taken on December 28, 2007. On that date, the Respondent’s website featured Ms McCann and Mr. Hope as “world class bodybuilders holding the Pro Natural Universe titles”. The Complainant says that Mr. Hope, as the winner of a PRO NATURAL Universe competition, was entitled to identify himself in that manner, but that Ms. McCann had no right to do so.
Sub pages of the Respondents’ website included pages entitled “History”, “Gallery”, “Events”, “Ask us”, “Store”, “Services”, “Contact”, and “Links”.
On December 28, 2007, the “Store” subpage offered various bodybuilding-related products for sale through “The Pronaturalmuscle shop”. However when the Panel visited the Respondent’s website on May 26, 2008, the “Store” sub page only provided a recommendation to two online stores – one being a store operated by the supplements company which was said to be a sponsor of Ms. McCann and Mr. Hope. Direct selling through the “store” at the Respondent’s website appeared to have ceased.
The “Services” sub page of the Respondent’s website listed a number of services provided by Ms. McCann and Mr. Hope, including personal appearances, guest spots, and public speaking. Other advertised services included the provision of nutrition advice, and the provision of educational courses relating to bodybuilding. Site visitors were invited to “contact Rob and Vicky” to obtain the listed services. There does not appear to have been any material change in this subpage, since the Complainant’s site visit of December 28, 2007.
On both December 28, 2007 and May 26, 2008, a disclaimer appeared at the bottom of the first page of the Respondent’s website. The disclaimer advised that the Respondent’s website was the “official website of Professional Natural bodybuilders Rob Hope & Vicky McCann. This website is not associated or affiliated with any sporting federation including but not limited to the WNBF, BNBF, IFBB, OCB this list is not exhaustive”.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s PRO NATURAL service mark. The Domain Name incorporates that mark in its entirety, with the addition of the generic word “muscle” and the generic top level domain “.com”. The additional descriptive matter in the Domain Name is not enough to avoid the likelihood of confusion. Indeed, the use of the word “muscle” increases the likelihood of confusion, because the word relates directly to the Complainant’s widely known bodybuilding competitions and related services. The addition of “.com” is irrelevant in determining whether the Domain Name is confusingly similar to the Complainant’s mark.
2. The disclaimer displayed at the bottom of the pages on the Respondent’s website does not lessen the initial confusion of internet users seeking a website operated by the Complainant. Users will see the disclaimer (if they notice it at all) only after selecting the confusingly labeled Domain Name, and being directed to the Respondent’s website.
3. The Respondent cannot demonstrate any right or legitimate interest in the Domain Name, for the following reasons:
(i) Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name on the respondent, but rather constitutes bad faith. In a case such as this, where the Complainant’s mark is so well known and so widely recognized in the bodybuilding industry, there can be no legitimate use by the Respondent.
(ii) Given the history of the parties in this case, the named Respondents had actual knowledge of the Complainant’s PRO NATURAL trade marks when the Respondent registered the Domain Name. The choice of the Domain Name can be explained only as a misappropriation of the Complainant’s trade marks. Intentionally trading on the fame of another cannot constitute a bona fide offering of goods or services.
(iii) The Domain Name directs internet users to the Respondent’s website, which offers services in direct competition with those offered by the Complainant. That is evidence of the named Respondents’ use of the Domain Name to misleadingly divert consumers away from the Complainant’s business, and constitutes a prima facie showing for the purposes of paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the Domain Name.
(iv) There exists no relationship between the Complainant and the named Respondents that could give rise to any license, permission, or authorization by which the named Respondents could own or use the Domain Name. The Complainant has not licensed or otherwise authorized any of the named Respondents to use its PRO NATURAL marks, and none of the named Respondents is commonly known by the Domain Name.
4. The Respondent has registered and has been using the Domain Name in bad faith:
(i) The registration of a domain name “so obviously connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith” (citing Veuve Cliquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co, WIPO Case No. D2000-0163).
(ii) The named Respondents are intentionally using the Domain Name to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s PRO NATURAL trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
(iii) The named Respondents wrongfully refer to Ms McCann and Mr Hope (on the Respondent’s website) as “world class bodybuilders holding the Pro Natural Universe Titles”, when only Mr. Hope is entitled to refer to himself with that title.
(iv) The use of the PRO NATURAL trade marks in the Domain Name is likely to confuse consumers as to the source and sponsorship of the Respondent’s website.
(v) The named Respondents clearly knew of the fame of the Complainant and its PRO NATURAL marks when the Respondent registered the Domain Name. Further, under United States trade mark law, the Respondent is deemed to have been on actual notice of the Complainant’s rights in the PRO NATURAL mark before he or it registered the Domain Name. Given that awareness, it is evident that the registration and use of the Domain Name has been in bad faith.
(vi) The fact that the Respondent has registered and used the Domain Name to direct internet users to a website that provides competitive goods, is further evidence of bad faith.
(vii) In addition, the Respondent registered and has used the Domain Name primarily to disrupt the Complainant’s business (citing PRL USA Holdings Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings - General
A. Relevant Provisions of the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved that it is the proprietor of the registered word mark PRO NATURAL, both on the principal register maintained by the United States Patent and Trade Mark Office, and in the United Kingdom of Great Britain and Northern Ireland.
That mark is of course incorporated entirely within the Domain Name, and numerous panels deciding cases under the Policy have found that circumstance sufficient to establish confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. See, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the 3-member Panel decision The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, and by this Panel in Quintessentially UK Limited v. March Schnorenberg/Quintessentially Concierge, WIPO Case No. D2006-1643, and in Neteller plc v. Prostoprom, WIPO Case No. D2007-1713.
The addition of the word “muscle” to the Complainant’s PRO NATURAL mark, only serves to increase the likelihood of confusion between that mark and the Domain Name. Forming a domain name by adding to a complainant’s mark a word which is descriptive or suggestive of the very services offered by the complainant under that mark, effectively ensures that the domain name will convey the same idea, or impression, as the mark. In this case, the word “muscle” is clearly evocative of the services provided by the Complainant under its PRO NATURAL mark.
Numerous panel decisions in cases decided under the Policy have established that the “.com” suffix is non-distinctive (because it is required for registration of the domain name), and is therefore not to be taken into account in the comparison which is required by paragraph 4(a)(i) of the Policy (see, for example, RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540).
For the foregoing reasons, the Panel concludes, without difficulty, that the Domain Name is confusingly similar to the PRO NATURAL mark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that the Respondent does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the named Respondents (or any of them) to use the Complainant’s PRO NATURAL mark, or any expression confusingly similar thereto, whether in a Domain Name or otherwise. Nor is there sufficient evidence in the record for the Panel to conclude that the named Respondents (or any of them), or any business or organization run by the named Respondents or any of them, has been commonly known by the Domain Name. First, the Respondent’s website is stated to be the official website of Mr. Hope and Ms. McCann personally, not the website of some business called “Pronaturalmuscle”. Secondly, “Pronaturalmuscle” appears to be the name given to the Respondent’s website itself (e.g. “Pronaturalmuscle has been created to give you a look into our lifestyles …”, and “Pronaturalmuscle gives you an introspective look into the background and lifestyle of these top level professional athletes …”.) To obtain any of the services listed on the “Services” subpage, visitors to the Respondent’s website are invited to “contact Rob and Vicky” (not to contact a business or organization called “Pronaturalmuscle”).
It is true that the “Store” subpage of the Respondent’s website (as it stood on December 28, 2007) stated that “Pronaturalmuscle have also decided to donate a percentage of all supplement sales to the BNBF …”. Also, the Panel noted in the course of his visit to the Respondent’s website, that some of the subpages contained the claim “Copyright 2005 Pronaturalmuscle. All rights reserved”, and on a number of subpages the expression “Pronaturalmuscle” does appear to be used as a trade mark. Those references to “Pronatural muscle” are consistent with the existence of a business or organization known as “Pronaturalmuscle”. However the “Contact” subpage of the Respondent’s website (where one might have expected to find contact details for any such business or organization if it existed), merely says: “To contact Rob and Vicky click here.” Clicking on that link takes the browser to an email form addressed to “firstname.lastname@example.org”.
None of the foregoing is sufficient for the Panel to conclude that one or more of the named Respondents has a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. In the case of Sanderling Pty Ltd trading as Thimblelady v. Roxanne International, WIPO Case No. D2007–0385, this Panel said:
“The Panel is mindful of the need to take care when considering claims by respondents that they have “been commonly known” by an at-issue domain name. It is a claim which is very easily made, and of course if the claim is upheld it is sufficient on its own to defeat a complainant’s complaint under the Policy. The Panel agrees with the approach adopted by the Panel in Banco Espirito Santo S.A. v. Bancovic; WIPO Case No. D2004-0890, where the Panel said:
“Since a ‘legitimate interest’ is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has ‘been commonly known’ by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been ‘commonly known’ by the domain name. See, e.g., Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by nickname ‘Red Bull’ since childhood because Respondent did not provide any evidence to support contention. See also, e.g., DIMC Inc, & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by nickname ‘Krylon’ due to absence of evidence when alleged nickname was adopted and how it was used.’”
Applying that “careful” approach in this case, the evidence falls well short of showing that there exists some organization or business which is commonly known by the Domain Name. Use of the expression “Pronaturalmuscle”, in a trade mark sense, on the Respondent’s website, does not of itself prove that the Respondent, or any business or organization represented by him or it, is “commonly known” by that expression, and the copyright claims and the statement that “Pronaturalmuscle” has taken a particular decision, are not sufficient on their own to establish that there exists a business or organization which has become commonly known by that name. Most of the Respondent’s website suggests that Ms. McCann and Mr. Hope are operating their business under their personal names.
Quite apart from those considerations, which relate generally to the quality of the evidence which is necessary to establish the “commonly known by” defense, the Panel has come to the view that the Domain Name was registered by the Respondent in bad faith. The reasons for that view are set out in Section 6D of this decision. As this Panel said in Neteller plc v. Prostoprom, WIPO Case No. D2007-1713:
“But there is an even more fundamental reason why Paragraph 4(c)(ii) of the Policy can have no application. It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.
In the Panel’s view, the better interpretation of Paragraph 4(c)(ii) is that, to come within the safe harbor of that provision, a respondent (or his/her organization or business) must have been commonly known by the at-issue domain at the time of registration. There is no evidence of that in this case.”
Likewise in this case, there is no evidence that any business or organization called “Pronaturalmuscle” existed as at November 23, 2005, when the Domain Name was registered.
There is nothing in the record to suggest that the Respondent might have rights or a legitimate interest under paragraph 4(c)(iii) of the Policy. The Respondent’s website appears to be commercial in nature, so the Respondent could not bring itself (or himself) within the “without intent for commercial gain” wording of paragraph 4(c)(iii) of the Policy. The Panel’s finding of bad faith (Section 6D below) also means that the Respondent’s use of the Domain Name cannot be regarded as “fair”, or “legitimate”, for the purposes of paragraph 4(c)(iii), nor as a use in connection with a bona fide offering of goods or services under paragraph 4(c)(i).
For the reasons set out above, the Panel considers that the Complainant has clearly made out a prima facie case of “no rights or legitimate interests”, and the evidentiary onus therefore shifts to the Respondent to show that he or it does have some right or legitimate interest in respect of the Domain Name. The Respondent has elected not to respond to the Complaint, and the Panel finds that the Complainant therefore succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Complainant has sufficiently proved this part of the Complaint. The Panel has come to that view for the following reasons:
1. The Domain Name completely incorporates the Complainant’s registered trade mark, and it is confusingly similar to that mark.
2. The Respondent’s website is primarily concerned with the activities of Ms. McCann and Mr. Hope, and products marketed by them. In the absence of any Response, the Panel can only conclude that the Respondent registered the Domain Name on behalf of Ms. McCann and Mr. Hope and at their direction, and that the Respondent’s website has been created and maintained either by them or at their direction. In those circumstances, the knowledge and intentions of Ms. McCann and Mr. Hope must be treated as the knowledge and intentions of the Respondent. If it were otherwise, a cybersquatter would be able to achieve his or her bad faith ends by the simple expedient of arranging for an “innocent” registrant to register the disputed domain name and allow the cybersquatter to control its use.
3. The Panel is satisfied that Ms. McCann and Mr. Hope were well aware of the Complainant and its PRO NATURAL mark when the Domain Name was registered in November 2005. Although the United Kingdom registration of the PRO NATURAL mark was not effected until October 2006, the Complainant’s United States registration has been in force since 1993. The Complainant used its PRO NATURAL mark in connection with bodybuilding championships through the 1990s and into the early years of this century, and both Ms. McCann and Mr. Hope had been competitors in competitions run by the Complainant prior to November 2005. The Complainant’s evidence is that Ms. McCann established BNBF as early as 2000, and that BNBF was affiliated with the Complainant until June 2006. That evidence has not been challenged. Overall, the evidence points overwhelmingly to the conclusion that Ms. McCann and Mr. Hope were both well aware of the Complainant and its PRO NATURAL mark when the Domain Name was registered in November 2005. For the reasons set out in paragraph 2 above, that knowledge must also be attributed to the Respondent.
4. The apparently descriptive nature of the Complainant’s mark has given the Panel some cause for pause in its consideration of the “bad faith” issue. First, it appears (from the language used in the Complainant’s advertising materials, and on the Respondent’s website) that the word “natural” may be commonly used in the world of bodybuilding, to describe musculature which has been developed without the aid of steroids or other chemicals. Secondly, the word “Pro” is a common abbreviation for the word “professional”, and both Mr. Hope and Ms. McCann appear to be professional bodybuilders. Thirdly, the word “muscle” is clearly generic or descriptive.
5. Against those considerations, the evidence is clear that the trade mark authorities in both the United States of America and the United Kingdom of Great Britain and Northern Ireland have accepted PRO NATURAL for registration as a word mark. In those circumstances, the mark must be regarded as being distinctive of the Complainant’s services for which it has been registered. (In a summary administrative proceeding such as this, it is not for the Panel to second guess the decisions of national trade mark authorities: see the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 1.1, where the consensus view is said to be that ownership of a registered trade mark is sufficient to satisfy the threshold requirement of having trade mark rights, for the purposes of paragraph 4(a)(i) of the Policy).
6. However a complainant whose mark is comprised of descriptive or generic words may still find it difficult to show that a domain name which consists of or includes those words, has been registered in bad faith. In such cases, the answer to the “bad faith” question generally depends on whether the respondent has targeted the Complainant or its mark, seeking to trade off the goodwill the Complainant has established in its mark, or whether the respondent has merely chosen the disputed domain name because of its attraction as a descriptive phrase or expression (see for example, The Perfect Potion v Domain Administrator, WIPO Case No. D2004-0743, followed and applied by this Panel in Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008. Those cases, and numerous other cases to similar effect, demonstrate that, to establish bad faith registration and use, there must be an element of “targeting” of the complainant or its mark, or at very least the respondent must have had the complainant or its trade mark in mind when selecting the disputed domain name).
7. In this case, the Respondent’s website appears to be primarily (almost totally) concerned with the personal lives and exploits of Ms. McCann and Mr. Hope, and one might have expected them to choose a domain name which would immediately alert the Internet browser to the specific nature of the site content. That has not been done. On the contrary, the Respondent has registered a domain name (the Domain Name) in the “.com” top level domain, which does not identify the (British-resident) Ms. McCann and Mr. Hope at all. Rather, it incorporates the Complainant’s registered trade mark in circumstances where there is no obvious reason to do so. The BNBF (whose championship events are advertised on the “Events” sub-page of the Respondent’s website), has its own website.
8. Furthermore, the Respondent (through Ms. McCann and Mr. Hope) must have appreciated that a number of Internet users who were familiar with the Complainant and its activities, would assume that a domain name which consisted of the Complainant’s apparently well-known service mark combined with a word which was suggestive or evocative of the very services provided by the Complainant under that mark, would be in some way connected with the Complainant. Indeed, the existence of the disclaimer on the Respondent’s website confirms that the Respondent (through Ms. McCann and Mr. Hope) did appreciate that possibility (why else would they have considered it necessary to post a disclaimer?) Nevertheless, they went ahead and registered the Domain Name, and established the Respondent’s website at the Domain Name. In the absence of any response, the only sensible inference the Panel can draw from the circumstances just described, is that Ms. McCann and Mr. Hope (and therefore the Respondent) intended that a number of Internet viewers looking for sites run by or associated with the Complainant, would mistakenly come to the Respondent’s website.
9. The disclaimer which appears on the Respondent’s website does not affect the Panel’s conclusion that the Respondent has registered and used the Domain Name in bad faith. First, the disclaimer is at the foot of the home page, and it is quite difficult to read: it is in fairly small grey type against a dark background. It could quite easily be missed altogether. Secondly, and more importantly, the misleading choice of the Domain Name, suggesting as it does some connection with the Complainant, will have already achieved the desired result by the time an Internet browser arrives at the Respondent’s website. The Domain Name “bait” will have already successfully “hooked” the Internet browser – by the time the browser realizes that he or she has not arrived at a web site operated by the Complainant, he or she will have already been exposed to the promotional material relating to Ms. McCann and Mr. Hope. The Respondent’s choice of the Domain Name has thus created a likelihood of confusion between the Domain Name and the Complainant’s mark, of the kind commonly referred to as “initial interest confusion” (as found, for example, in the very recent decision of David Foox v. Kung Foox and Bill Hicks, WIPO Case No. D2008-0472). Confusion of that kind cannot be “cured” by posting a “fine print” disclaimer on the Respondent’s website. The disclaimer comes too late to negate the effect of the browser’s initial mistaken impression.
10. It is not at all clear why the Domain Name was not registered by Ms. McCann or Mr. Hope. The Respondent’s website is clearly theirs, and the Panel has not been provided with any explanation of the role (if any) played by Daniel Jones and “TheDotCafe”, or why that person or organization was named as registrant.
11. The Respondent’s website does appear to have a commercial element: services are offered through the Respondent’s website, presumably for commercial reward, and (at least before the Complaint was filed in this proceeding) various products were offered for sale through the “Store” sub-page of the Respondent’s website.
12. The Respondent has failed to file a Response. That fact reinforces the Panel’s conclusion drawn from the matters traversed at paragraphs 1 – 11 of this list, that the greater likelihood is that Ms. McCann and Mr. Hope were, through the Respondent, targeting the Complainant’s goodwill in its PRO NATURAL mark, and that they did not register the Domain Name purely because of its attractiveness as a generic or descriptive expression. That finding leads inevitably to the conclusion that they have intentionally attempted to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s PRO NATURAL mark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. That is, of course, the kind of bad faith registration and use described at paragraph 4(b)(iv) of the Policy.
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 <pronaturalmuscle.com> be transferred to the Complainant.
Dated: June 6, 2008