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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

2253964 Ontario Inc. v. David Matos

Case No. D2011-0480

1. The Parties

The Complainant is 2253964 Ontario Inc. of North York, Ontario, Canada, represented by Riches, McKenzie & Herbert LLP, Canada.

The Respondent is David Matos of Toronto, Ontario, Canada, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <bulldognutrition.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2011. On March 16, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 16, 2011, eNom 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 March 18, 2011, providing the registrant and contact information disclosed by eNom and inviting the Complainant to submit an amendment to the Complaint by March 23, 2011. The Complainant filed an amended Complaint on March 21, 2011.

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 March 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2011. On April 4, 2011, the Respondent requested by email an extension of this day to file a Response. On April 6, 2011, the Complainant sent an email to the Center, indicating its objection to the request of the Respondent. The Response was filed with the Center on April 11, 2011.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 20, 2011. 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 Complainant and the Respondent sell nutritional supplements and vitamins.

The Complainant indicates that the domain name <bulldognutrition.ca> was registered on August 19, 2010 by the Complainant, which is not disputed by the Respondent.

By virtue of the Canadian Trademarks Database, the trademark BULLDOG NUTRITION & DESIGN was filed by the Complainant on November, 3, 2010 under the application number 1502350 for the services of retail sales of foods; retail sales of nutritional supplements; retail sale of vitamins; operation of a website featuring the retail sale of nutritional supplements and vitamins.

Since at least November 4, 2010, the trademark has been used by the Complainant in relation to these services.

The Complainant also uses the terms “Bulldog Nutrition” as its trade name.

According to the publicly available WhoIs database, the disputed domain name was registered on November 20, 2005. The Complainant indicates that the disputed domain name was acquired by the Respondent at the end of December 2010, which is not disputed by the Respondent.

The Respondent is apparently in the same business as the Complainant and sells comparable products through three (3) franchises of Popeye’s Supplements Canada Corporation, including a store located across the street from the Complainant’s store.

5. Parties’ Contentions

A. Complainant

First of all, the Complainant contends that the disputed domain name is identical to the trademark and trade name BULLDOG NUTRITION by incorporating in its entirety its trade name and trademark BULLDOG NUTRITION.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name since before this procedure there was no evidence of the Respondent’s use of the domain name in association with bona fide offering of goods or services. The Complainant also contends that the Respondent is not commonly known by the disputed domain name and he has no trademark rights in the disputed domain name.

The Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith. At first, the Complainant notes that the Respondent is a competitor and that one of the Respondent’s franchises is located across the street from the Complainant’s store. The Complainant submits that the Respondent acquired the disputed domain name for the purpose of disrupting the business of the Complainant. It adds that by displaying, on the website at the disputed domain name, an advertisement which mentions the Respondent’s website “www.popeyescanada.com”, the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark.

Therefore, the Complainant requests the Panel to issue a decision stating that the disputed domain name be transferred to the Complainant.

B. Respondent

First of all, the Respondent contends that the Complainant has no rights in the trademark BULLDOG NUTRITION because the words “bulldog nutrition” are generic terms, which cannot distinguish the goods of any particular trader and cannot identify goods relating to human health supplements but it is descriptive for canine food. Beside, the Respondent claims that he is preparing to use the disputed domain name for canine food. The trademark rights extend only to the word with the Complainant’s particular design. Furthermore, the Respondent claims that the Complainant did not have a registered trademark.

The Respondent argues that the Complainant has failed to prove that the trademark BULLDOG NUTRITION has become synonymous with its business before the Respondent’s domain name registration. Therefore, the Complainant cannot allege that the disputed domain name <bulldognutrition.com> is being used to confuse Internet users.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must convince the Panel of three elements if it wishes to have the disputed domain name transferred. It is incumbent on the Complainant to show:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name incorporates parts of the Complainant’s trademark BULLDOG NUTRITION & DESIGN. The use of a particular design in a trademark is irrelevant for purposes of evaluating the similarities between the trademark and the domain name.

The Respondent alleges that the words “bulldog nutrition” are generic terms and, as such, untrademarkeable. However, generic terms may be untrademarkeable mainly if they are intended to protect products of services in association with the generic terms themselves (see Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, WIPO Case No. D2000-0461). In this case, the Complainant’s trademark is used to describe human health supplements and not canine food. Anyway, it is not for the Panel to rule on the validity of a trademark.

The Respondent also notes that the Complainant’s trademark was formalized on November 4, 2010 but is still unregistered. According to Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, “The Policy requires that a Complainant have ‘rights’ in a trademark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a trademark be registered by a governmental authority for such rights to exist”.

Furthermore, it was considered in Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239, that “common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy” (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions; Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).

In this case, the Complainant demonstrates that (i) it has filed the trademark BULLDOG NUTRITION & DESIGN and that (ii) it is using this trademark for the services indicated on the trademark data, namely retail sale of foods, retail sale of nutritional supplements, retail sale of vitamins in the operation of a website featuring the retail sale of nutritional supplements and vitamins, since at least the beginning of November 2010.

In addition, the fact that the Complainant’s domain name <bulldognutrition.ca>, registered on August 19, 2010, exactly reproduces the terms “bulldog nutrition”, which as explained above is also the Complainant’s trade name, is a supplement element to prove unregistered trademark rights (See Robilant & Associati Srl v. POWERLAB snc (ROBILANT6-DOM), WIPO Case No. D2006-0991).

Therefore, the Panel considers that the Complainant has established trademark rights in the BULLDOG NUTRITION & DESIGN mark for purposes of this proceeding.

Lastly, the Panel reminds that paragraph 4(a)(i) of the Policy does not deal with the question of priority of the Complainant’s trademark rights. Indeed, “registration of a domain name before a complainant acquires corresponding trade mark rights does not prevent a finding of identity or confusing similarity: the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired rights” (Reckitt Benckiser Plc, supra. See also MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544).

Accordingly, the Panel finds that the Complainant has correctly stated that the disputed domain name is identical or confusingly similar to its trademark BULLDOG NUTRITION.

B. Rights or Legitimate Interests

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) 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 trademark or service mark rights; or

(iii) 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 trademark or service mark at issue.

According to the rule of prima facie showing, once a complainant has proved that the domain name is identical or confusingly similar to its trademark and that it has not authorized the respondent to use the domain name, the respondent must come forward with proof that it has some rights or legitimate interests in the domain name to rebut this presumption (see Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 and Auto-C, LLC v. MustNeed.com WIPO Case No. D2004-0025).

In this case, the Complainant argues that, before any notice to the Respondent, the Respondent did not prove use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Indeed, Annex 16 to the Complaint, which consists in a screen print from the Respondent’s website at the disputed domain name as it was before the notice to the Respondent of the dispute, includes nothing else than an advertisement for the Respondent’s other website “www.popeyescanada.com”, which is directly concurrent of the Complainant’s website.

The Respondent contends that he is preparing to use the disputed domain name in relation with canine food. To prove a legitimate use, the Respondent must give the Panel some evidence; acceptable evidence may include business plans or documented expenses (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

In this case, the Respondent offers no evidence to support his argument and he does not deny the screen print from the Respondent’s website, provided by Annex 16 to the Complaint.

Therefore, the Panel finds that the Respondent does not demonstrate any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy outlines in paragraph 4(b) circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith.

These circumstances are:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark 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 domain name; or

(ii) The Respondent has registered the disputed 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 have 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 Respondent is a competitor of the Complainant as they sell the same products (nutritional supplements and vitamins) on the same geographic area. Indeed, it is undisputed that the Respondent and the Complainant have their business in Canada and one of the Respondent’s franchises is located across the street from the Complainant’s store.

Therefore, in the Panel’s view, it is highly unlikely that the Respondent did not take into account the Complainant’ business before registering the disputed domain name, and this is indicative of bad faith, especially as the Complainant had already started its business at that time, according to invoices attached to the Complaint.

Furthermore, the website at the disputed domain name includes an advertisement which mentions the Respondent’s other website “www.popeyescanada.com”, on which the Respondent sells the same products as the Complainant.

By using the trademark of his competitor as a domain name and making advertisement for its own website that directly competes with the Complainant, the Respondent is attempting to divert Internet traffic from the Complainant’s website. Thus, in the Panel’s view, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.

Therefore, the Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain name in bad faith.

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 disputed domain name <bulldognutrition.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Dated: May 5, 2011

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