The Complainant is Nutri-Pet Research, Inc. of New Jersey, United States of America, represented by Law Offices of Barbara L. Waite P.C., United States of America.
The Respondent is Whois Privacy Protection Service, Inc. of Canada/ Jesse Padilla of the United States of America, Healthy Pets, Inc. of the United States of America, represented by Sonnabend Law, United States of America.
The disputed domain name <nupro.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2010. On May 5, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 6, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 10, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2010. The Response was filed with the Center on June 1, 2010.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 16, 2010. 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.
Complainant registered its trademark, NUPRO (the “Mark”), with the United States Patent and Trademark Office under registration number 3,351,854 on December 11, 2007, with first use in commerce as of April 1, 1990. Complainant also registered marks for “NUPRO All Natural Dog Supplement,” “NUPRO Custom Electrolyte Formula For Dogs,” and “NUPRO ALL Natural Ferret Supplement” with the New Jersey Department of State. Complainant owns and has operated a website at “www.nuprosupplements.com” (“Complainant's Website”) since 1998.
The Disputed Domain Name was registered on July 9, 2003. Respondent acquired the Disputed Domain Name sometime in late 2009 or early 2010. Respondent operates an e-commerce website at “www.entirelypets.com”, which sells a wide variety of pet-related products, including NUPRO products. The website at the Disputed Domain Name contains some text advertising NUPRO products that is identical to text found at Complainant's website, with many uses of first-person pronouns “we” and “our” used to describe the products. The website at the Disputed Domain Name links to “www.entirelypets.com” with a link that reads: “You can view and buy our products here.”
The Disputed Domain Name is identical to Complainant's Mark. The addition of “.com” to a trademark is insufficient to distinguish it from the underlying trademark. Complainant has the exclusive right to use the Mark in connection with pet supplements. Respondent's status as a purchaser and distributor of Complainant's NUPRO brand products for some nine years does not include any right to the Disputed Domain Name. Respondent registered the Disputed Domain Name in bad faith. Respondent had actual knowledge of Complainant's Mark through years of business dealings with Complainant. Respondent has offered to sell the Disputed Domain Name to Complainant, or alternatively, to license the Disputed Domain Name from Complainant for its own e-commerce website. Respondent acquired and uses the Disputed Domain Name for the purpose of deceiving the public into believing that by ordering NUPRO brand products from <nupro.com>, it is dealing with the source of NUPRO brand products. Respondent has intentionally created a likelihood of confusion in order to trade off of Complainant's trademark and the goodwill associated therewith. Respondent has even copied the text of Complainant's own website home page onto its website. Therefore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and of a product on Respondent's website.
Respondent does not dispute that the Disputed Domain Name is identical to Complainant's Mark. Respondent has a legitimate right to use Complainant's Mark through the nominative use and first sale doctrines. A trademark owner's rights to a mark do not extend to uses of the mark to identify genuine, branded products. Under the first sale doctrine, any purchaser of a trademark owner's product has an implied license to use the mark in connection with genuine resale transactions. Respondent, as authorized distributor of Complainant's NUPRO products, is therefore authorized to use the Mark in connection with bona fide sales of such products. Further, the allocation of intellectual property rights between a manufacturer and retailer is an issue that lies beyond the scope of the UDRP.
The Disputed Domain Name was neither acquired nor used in bad faith. Respondent subjectively believes that there is nothing wrong with its use of Complainant's Mark in connection with its website. Respondent is using the website in connection with a bona fide offering of goods. Respondent was authorized to use the Mark and did not acquire the Disputed Domain Name to attract Internet users through confusion.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Respondent does not dispute that the Disputed Domain Name is identical or confusingly similar to Complainant's Mark. Noting also the reproduction of the trademark NUPRO in the Disputed Domain Name, the Panel finds that Complainant has met its burden under the first element.
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 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 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 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 Complainant of absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Disputed Domain Name.
Here, Complainant argues that it has not authorized Respondent to acquire the Disputed Domain Name, notwithstanding Respondent's status as a bona fide reseller of NUPRO brand products. Respondent does not dispute that Complainant has not given it such permission, but argues that the circumstances of its use falls within Paragraph 4(c)(i) of the Policy.
Numerous panel decisions have reached the issue of a reseller's right to use a trademark owner's trademark in a domain name pointing to a website at which the reseller sells the trademark owner's goods or services. See Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (citing cases). The majority view was first set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which held that the use of a manufacturer's trademark as a domain name by an authorized reseller is only to be regarded as a bona fide offering of goods or services within the meaning of Paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
1 the respondent must actually be offering the goods or services at issue;
2 the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait internet users and then switch them to other goods;
3 the site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
4 the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Here, it is clear that Respondent has satisfied conditions 1 and 4 of the Oki Data test. Respondent directs visitors to the website at the Disputed Domain Name to its “www.entirelypets.com” website, where it appears to actually sell NUPRO brand products. Other than the Disputed Domain Name, Respondent does not own any other domain names featuring Complainant's Mark, and therefore cannot be said to be cornering the market. On the other hand, Respondent does not directly sell goods on the website associated with the Disputed Domain Name, but rather directs visitors to “buy our products here”, which links to a landing page at Respondent's “www.entirelypets.com” website. Although the landing page only features NUPRO products, it also contains numerous links to various other categories of products, including several pertaining to pet supplements. Such links feature many products that are competitive with Complainant's NUPRO products. Thus, this is a borderline case with respect to the second condition. However, the Panel need not make a determination on the second condition because the third condition clearly is not met.
The third condition of the Oki Data test, which the Response conspicuously oversimplifies as “[t]he Respondent must not claim to be the trademark owner,” expresses concern that the registrant must not use the website in a manner that would lead to public confusion as to the registrant's identity. Here, the Amended Complaint shows that Respondent's website at the Disputed Domain Name contains no disclosure as to the website's affiliation with Complainant, or lack thereof. Further, Respondent's website at the Disputed Domain Name appears to have copied text directly from Complainant's website, which is rife with first-person references to describe the NUPRO products, e.g. “[a]ll of our supplements are manufactured in our facility in the U.S.A.” and “[i]n all our years of production, we have exceeded the industry standard in holistic animal nutrition.” Thus, Respondent's website's failure to identify itself as that of a third-party distributor rather than the actual manufacturer and owner of the Mark can easily cause confuse to a visitor. See BNP Paribas v. eSeats.com, WIPO Case No. D2010-0104.
Also unavailing is Respondent's argument that the scope of intellectual property rights between a manufacturer and retailer is beyond the scope of the UDRP. In certain cases it is indeed appropriate for a panel to deny a complaint by a manufacturer against a distributor where there is a genuine dispute as to the distributor's right to make use of the manufacturer's mark in connection with a domain name. See Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447. However, Respondent here fails to even allege that it has ever acquired Complainant's permission to use the Mark. In this circumstance, the Panel finds it appropriate to consider the dispute under the Policy.
Based on the above reasons, the Panel concludes that Respondent lacks any right or legitimate interests in the Disputed Domain Name and finds in favor of Complainant under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Under paragraph 4(b)(iv) of the Policy, registration and use in bad faith is properly evidenced by use that “intentionally attempted to attract, for commercial gain, Internet users to [a respondent's] website  by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of [respondent's] website  or of a product or service.” Such “initial interest confusion,” occurring at the point where a consumer is attracted to a website and regardless of whether such confusion is alleviated at some point thereafter, is precisely the result of the content of Respondent's website at the Disputed Domain Name outlined supra. Respondent's blatant copying of Complainant's website's content without any notice that it is unaffiliated with Complainant can cause initial interest confusion, thus allowing Respondent to improperly trade on Complainant's goodwill associated with the Mark. Further, as Respondent has resold Complainant's NUPRO brand products for many years, it clearly acquired the Disputed Domain Name with knowledge of Complainant's Mark and the fact that Respondent did not have a license to use it.
Respondent's relevant arguments against a finding of bad faith registration and use lie chiefly in its assertions that it meets the criteria for establishing a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that it lacked any intention to create consumer confusion. Respondent's assertions with respect to the bona fide nature of its offering of goods and services (in terms of the second element, that is) in connection with the Disputed Domain Name have been found herein to be without merit. Moreover, as discussed supra, the requisite intent for a finding that Respondent intentionally attempted to attract or divert consumers to its website by creating confusion as to sponsorship or affiliation is properly inferred from the facts of the instant matter.
The Panel accordingly finds that Complainant has established Respondent's bad faith registration and use of the Domain Names and has thus satisfied its burden of proof under paragraph 4(a)(iii) 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 <nupro.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: July 5, 2010