WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Nutricia v. Domains by Proxy, Inc. / Nutritional Biochemistry, Inc.
Case No. D2011-0284
1. The Parties
The Complainant is N.V. Nutricia of Zoetermeer, the Netherlands, represented by Dreyfus & associés, France.
The Respondents named in the Complaint are Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America (“USA”) and Nutritional Biochemistry, Inc. of Bozeman, Montana, USA, represented by Wittich Law Firm, P.C., USA.
2. The Domain Name and Registrar
The disputed domain name <asknutricia.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011, naming Domains by Proxy, Inc. and Nutritional Biochemistry, Inc. as the Respondents.
The Center transmitted its request for registrar verification to the Registrar on February 11, 2011. The Registrar replied on February 14, 2011, stating that it had not received a copy of the Complaint; that the Domain Name was registered with it; that Domains by Proxy, Inc., was not the registrant of the Domain Name; that the registrant of the Domain Name was Nutritional Biochemistry, Inc.; that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name; that the Domain Name would expire on December 15, 2014; that the Domain Name would remain locked during this proceeding, but the lock would expire on its receipt of an order dismissing or suspending the case or upon expiration of the registration; that the registration agreement was in English; and that the Domain Name was registered with a privacy service.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 15, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 7, 2011. The Response was filed electronically with the Center in the evening of March 7, 2011, according to Montana time, or in the early morning of March 8, 2011, according to Geneva time. The Complainant submitted a Supplemental Filing on March 8, 2011.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 11, 2011. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the real Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Procedural rulings
A. The Response
As stated above, the Response was filed on the due date according to the time in Montana, where the Respondent, Nutritional Biochemistry, Inc., and its representative are located, but on the following day according to the time in Geneva, where the Center is located. It is therefore necessary to consider whether the Response was filed in time and, if not, whether it should nevertheless be admitted.
In general, time limits in dispute resolution refer to the location of the court or the seat of the arbitration. On the other hand, paragraph 2(f) of the Rules (as currently in force) states: “Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable”. The reference to the date of transmission in this Rule suggests that the relevant date is that at the place of transmission, particularly as the verification would normally be a record made at that place.
Furthermore, the Center’s notification of the Complaint to the Respondent stated, in accordance with its standard form, “In the absence of any extension, the last day for sending any Response (copied to the Complainant) to us is March 7, 2011”. The natural interpretation of this would be that the Response must be sent at the latest on March 7, 2011, at the location from which it is sent.
The Panel therefore inclines to the view that the Response was in time. In any case, even if the Response was out of time, it was out of time by only a few hours. The Panel considers this to be immaterial and, de bene esse, the Panel extends the time for filing the Response to March 8, 2011, under paragraph 10(c) of the Rules. It follows that the Response is admitted.
B. The Complainant’s Supplemental Filing
The Complainant submitted a Supplemental Filing, firstly objecting to the admission of the Response, and secondly (in the event that it was admitted) drawing to attention to certain details and evidence omitted from it.
As stated by the Panel in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447,
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels in WIPO Case No. D2000-0166 <plazahotel.com>, WIPO Case No. D2000-1151 <goldline.com>, WIPO Case No. D2000-1571 <tdwatergouse.com> et al., WIPO Case No. D2000-0270 <htmlease.com> and, recently, WIPO Case No. D2003-0229 <pepsibabies.com> et al. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In this case, the Panel considers it appropriate to admit the first part of the Complainant’s Supplemental Filing, setting out its objection to the admission of the Response. However, for the reasons stated above, the Panel finds against the Complainant on this point.
The Panel does not consider it appropriate to admit the second part of the Complainant’s Supplemental Filing. The Panel considers that this part of the Filing consists essentially of matters which the Panel could and would discern for itself as a matter of course without the assistance of additional submissions.
C. Identification of the Respondent
The Panel is satisfied that the real Respondent to the Complaint is Nutritional Biochemistry, Inc.; the entity named as the Respondent, Domains by Proxy, Inc., is merely a privacy service used by that Respondent. The Panel has prepared this Decision on this basis.
5. Factual Background
The Complainant supplies baby food and medical nutrition under the mark NUTRICIA. The Complainant’s business was started in 1896 and NUTRICIA is now a leading international brand for baby food. The Complainant has registered NUTRICIA as a mark in a number of countries including the USA, where it was first registered in 1984. The Complainant operates a website at “www.nutricia.com”.
The Domain Name was registered on December 15, 2009, and has been directed to a parking page containing pay-per-click links, some of which connect to websites relating to foodstuffs such as cereals and cheese.
The Complainant’s representative sent a cease-and-desist letter to Domains by Proxy, Inc., on March 30, 2010, followed by a reminder on April 7, 2010. Domains by Proxy, Inc., replied on April 7, 2010, stating that it had forwarded the Complainant’s representative’s letter to the registrant of the Domain Name and requested the latter to contact the Complainant’s representative by April 19, 2010, failing which Domains by Proxy, Inc., could disclose the latter’s identity and contact details. Having received no evidence that the registrant had contacted the Complainant’s representative, Domains by Proxy, Inc., disclosed its identity and contact details to the representative on April 21, 2010. The registrant so identified was the Respondent, Nutritional Biochemistry, Inc., of Bozeman, Montana, USA.
The Complainant’s representative sent a cease-and-desist letter to the Respondent on May 26, 2010. The Respondent’s representative replied on June 2, 2010, asking the Complainant’s representative to provide any evidence that she had for the allegation that the Domain Name was registered in bad faith, any confusion which had occurred, and details of any damage claimed by the Complainant. According to the letter, the Respondent had no knowledge of the Complainant’s NUTRICIA trademark when developing the Domain Name; the name was from an actual person who could have responded to questions concerning the nutritional supplements manufactured and sold by the Respondent; and no one had contacted the Respondent believing it was a contact for the Complainant’s Nutricia product. The email went on to say that the Respondent was in the early stage development of its business and would be willing to discuss a settlement whereby it would develop the business through a different name, but such a settlement would require the Complainant to pay for the Respondent’s current investment in its project as well as its representative’s fees for responding to the Complainant’s allegations.
By email of June 28, 2010, the Complainant’s representative asked the Respondent’s representative to provide information regarding the Respondent’s project relating to the Domain Name, including the full name of the person allegedly called “Nutricia”. The Respondent’s representative replied by letter dated June 29, 2010, stating that its client makes and sells proprietary nutritional supplements and that it initially acquired the Domain Name because it was in discussions with Ms. Tricia Emmons, a local nutrition consultant, whereby prospective customers or patients could ask for recommendations on nutritional supplements. The letter invited the Complainant’s representative to call the Respondent’s representative if the Complainant was willing to purchase the Domain Name from the Respondent.
The Complainant’s representative informed the Respondent’s representative by email of August 3, 2010, that the Complainant would be ready to reimburse the registration fees for the Domain Name. The Respondent’s representative replied by letter of August 25, 2010, stating that the mere payment of the registration fee for the Domain Name was inadequate, that the Respondent had significant plans for the Domain Name and that its relinquishment would impose a significant burden on its business strategy. The Respondent’s representative also expressed confidence that virtually no damage could be established by the Complainant in an infringement claim. Nevertheless, the representative continued, the Respondent was willing to relinquish its rights in the Domain Name for a payment of USD 100,000, which would be adequate compensation for the investment and the necessity to alter its activities in the future.
6. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its trademark NUTRICIA, pointing out that “ask” is a non-distinctive word in English and that Internet users with questions to ask the Complainant would believe that the Domain Name resolves to a website set up by the Complainant to answer those questions.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the Domain Name. The Complainant states that the Respondent is not affiliated with the Complainant and has not been authorized to register and use a domain name incorporating its trademark. The Complainant points out that the registration of its NUTRICIA trademark preceded the registration of the Domain Name by years.
The Complainant submits that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Domain Name. According to the Complainant, the Respondent has not provided the Complainant with relevant information on why it chose a domain name consisting of the fanciful word “Nutricia” rather than “Nutritional” which corresponds to its company name. The Complainant considers the alleged discussion with a Tricia Emmons to be far from convincing, that it did not lead to any concrete project and that, even if it did, the link between this person’s name and the Domain Name was not obvious.
The Complainant adds that the Respondent is not commonly known by the name “Nutricia” and that the Respondent did not show demonstrable preparations to use the Domain Name before receiving notice of the dispute or even after the Complainant’s representative’s cease–and-desist letter. The Complainant also refers to the Respondent’s suggestion that it required USD 100,000 to compensate it for the unsubstantiated investment and lost opportunity in relation to the Domain Name as a further indication that it has no legitimate interest in the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It contends that it is implausible that the Respondent was unaware of the Complainant when it registered the Domain Name, given the extent of the Complainant’s reputation, including in the USA where the Respondent is located. The Complainant also refers to the Respondent’s alleged discussion with a “Tricia Emmons” and its use of a privacy service even though it is a company. The Complainant regards the Respondent’s use of the Domain Name to direct Internet users to a website displaying sponsored pay-per-click links, including links to competing products, as being in bad faith. The Complainant further submits that the Respondent’s offer to sell the Domain Name for USD 100,000 constitutes use in bad faith.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent disputes the jurisdiction. According to the Response, the Respondent does not believe that the Domain Name is confusingly similar to the Complainant’s trademarks and the Respondent was truly unaware of these trademarks when it registered the Domain Name. The Response adds that noone has contacted the Respondent believing it was a contact for the Complainant or the Complainant’s products.
The Response states that the Respondent registered the Domain Name with a legitimate interest in using it and that it did not do so in bad faith or to mislead or redirect users to other websites. The Response explains that the idea for the website was developed after the Respondent entered into discussions with a Ms. Tricia Emmons, a local nutrition consultant, for an online site where users could ask questions and get answers regarding nutrition questions. In the Respondent’s view, the Domain Name is simply a combination of the words “ask”, “nutrition” and “Tricia”.
The Response adds that the Respondent’s resources are not vast and that it has therefore put its significant plans for the Domain Name on hold until the resolution of this dispute. The Response affirms that the USD 100,000 for which the Respondent was willing to give up the Domain Name would be necessary to change its business plan and to cover the time and expenses incurred in this matter.
The Response does not annex any evidence substantiating any of the statements in it.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. It is clear that these are cumulative requirements and it is therefore appropriate to consider each of them in turn.
In accordance with paragraph 5(b)(ix) of the Rules, the Respondent is required to annex to its Response any documentary or other evidence on which it relies. The Panel does not regard the absence of any such evidence as a bar to the admission of the Response, but does regard it as a factor to be taken into account in assessing the weight to be attached both to the factual assertions in the Response, particularly where these assertions appear to be inherently unlikely and contrary to the factual assertions in the Complaint, particularly where these could readily be contradicted by evidence which would be available to the Respondent if they were untrue.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the mark NUTRICIA.
The Panel further finds that the Domain Name is confusingly similar to this mark. It is well established that the generic top level domain suffix should be discounted when making the comparison required by paragraph 4(a)(i) of the UDRP. The Panel considers that the characters “ask” at the beginning of the Domain Name would be understood by many Internet users as the English word “ask” and as indicating that the Domain Name identifies a website at which members of the public can ask for information from the company responsible for the Nutricia brand.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the totality of the evidence that the Respondent has not made demonstrable preparations to use the Domain Name or any corresponding name in connection with any offering of goods or services. No evidence of any such preparations is provided in or annexed to the Response. Had such preparations taken place, the Respondent would have been in a position to provide such evidence; and, had they justified the amount of compensation which the Respondent sought for relinquishing the Domain Name, such evidence would have been copious. In these circumstances, the Panel accepts the Complainant’s contention that no such preparations have been made even now, let alone before any notice to the Respondent of the dispute.
It is clear that the Respondent is not commonly known by the Domain Name. Nor has the Respondent engaged in any legitimate non-commercial or fair use of the Domain Name. On the contrary, the Respondent has directed the Domain Name to a web page displaying sponsored links to a variety of websites, including websites promoting products which compete to some extent with those supplied by the Complainant. This use is neither non-commercial nor fair, but rather misleadingly diverts consumers and enables the Respondent to profit from confusion between the Complainant’s mark and the Domain Name.
As discussed further below, the Panel does not accept the Respondent’s account of an alleged conversation with a Tricia Emmons. However, even if it were correct, it would still not confer on the Respondent any right or legitimate interest in the Domain Name in the absence of any use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
In all the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds the Respondent’s explanation for its choice of the Domain Name implausible. Given the Complainant’s extensive reputation under the mark NUTRICIA it is not credible that the Respondent, which claims to make and sell proprietary nutritional products, would not have known of it. Furthermore, the Respondent’s claim to have based the Domain Name on the Christian name of its consultant appears to be contrived. In these circumstances, in the absence of any evidence substantiating the existence and participation of the alleged consultant, the Panel rejects the Respondent’s account and finds that the Domain Name was registered on account of its inclusion of the Complainant’s mark together with the descriptive word “ask”.
In the light of this finding, it must follow that the Domain Name was registered and is being used in bad faith. This conclusion is further supported by the circumstances, which the Panel also finds, that the Respondent registered the Domain Name primarily for the purpose of sale to the Complainant at a price substantially in excess of its out-of-pocket costs directly related to the Domain Name; and that the Respondent has used the Domain Name intentionally to attract Internet users to its web page, for commercial gain in the form of click-through commissions on sponsored links, by creating a likelihood of confusion with the Complainant’s mark as to the source of that web page. In accordance with paragraph 4(b)(i) and (iv) of the UDRP these circumstances constitute further evidence that the Domain Name was registered and is being used in bad faith.
The third requirement of the UDRP is therefore satisfied.
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 <asknutricia.com> be transferred to the Complainant.
Dated: March 21, 2011