World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NU Science Corporation v. Mike Henkel and Robert Henkel

Case No. D2012-1063

1. The Parties

Complainant is NU Science Corporation of Los Angeles, California, United States of America, represented by Jacobson, Russell, Saltz & Fingerman LLP, United States of America.

Respondents are Mike Henkel and Robert Henkel of Davenport, Iowa, United States of America, represented by Stephen E. Abraham, Esq., United States of America.

2. The Domain Name and Registrar

The disputed Domain Names – <d2so4online.com>, <evstorey.com>, <kevin-negrete.com>, <nuscience.org> and <uncle-evs.com> – are registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2012. On May 21, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Names <d2so4online.com>, <evstorey.com> and <uncle-evs.com>. On May 24, 2012 , Melbourne IT Ltd. transmitted by email to the Center its verification response confirming the registrant information for these domain names and providing the contact for the Domain Names <d2so4online.com>; <evstorey.com>; and <uncle-evs.com>. An Amended Complaint was filed with the Center on June 1, 2012 adding two additional Domain Names. The Center transmitted to Melbourne IT Ltd. a request for registrar verification in reference to the additional Domain Names <kevin-negrete.com> and <nuscience.org> on June 4, 2012. On June 5, 2012, Melbourne IT Ltd. transmitted to the Center its verification response confirming the registrant information for these additional domain names. 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 Respondents of the Complaint, and the proceedings commenced on June 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2012. The Response was filed with the Center on June 8, 2012.

The Center appointed David H. Bernstein as the sole panelist in this matter on June 28, 2012. 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 filed a Supplemental Filing with the Center, entitled “Complainant’s Reply to Respondents’ Response to Complaint” (the “Reply”) with the Center on June 20, 2012.

Because the parties submitted nearly 600 pages of materials for the Panel to review, the Panel requested, and the Center granted, a one-week extension for submission of the Decision to July 19, 2012.

4. Factual Background

Complainant is a California corporation that owns a proprietary trade secret, which it uses to produce and market an oxygen and nutrient supplement called “Cellfood”. Complainant owns trademark registrations for the marks EVERETT STOREY and DEUTROSULFAZYME. The EVERETT STOREY trademark application was filed on February 20, 2001, and registered on May 28, 2002. The DEUTROSULFAZYME trademark application was filed on July 14, 2003, and registered on June 8, 2004.

Respondents Mike and Robert Henkel are brothers. The <evstorey.com> Domain Name was registered on April 19, 2009. The <d2so4online.com> Domain Name was registered on May 24, 2008. The <nuscience.org> Domain Name was registered on May 19, 2012. The <kevin-negrete.com> Domain Name was registered on April 22, 2012. Respondent Mike Henkel is listed under “Admin Name” and “Organization Name” for these four Domain Names. The <uncle-evs.com> Domain Name was registered on March 11, 2008. On May 15, 2012, “M.H,” was listed as the “Admin Name” for the <uncle-evs.com> Domain Name. On May 29, 2012, Respondent Robert Henkel was listed as the “Admin Name” for the <uncle-evs.com> Domain Name.

The parties have a history of litigation. A default judgment was entered against Mike and Robert Henkel by the United States District Court for the Central District of California, Western Division (the “District Court”) on April 14, 2009 (Annex B of Complaint). The judgment enjoined Respondents from:

(1) possessing, using, selling, or transferring NuScience’s trade secrets, including the formula or its ingredients;

(2) claiming to third parties that it has knowledge of the trade secret formula;

(3) recording in any way the trade secret formula;

(4) using [Complainant’s] trademarks or variations of them in connection with the sale of any mineral supplement for human consumption; and

(5) engaging in unfair competition or interference with [Complainant’s] business relationships by contacting [Complainant’s] customers.

Respondents filed a Motion to (1) Vacate Default Judgment and to (2) Dismiss for Lack of Personal Jurisdiction with the District Court on May 10, 2012. The District Court denied the motions on June 15, 2012, and entered sanctions against Respondents. Complainant included this order in the Reply. In its denial of Respondents’ motions, the District Court ordered Respondents to take down the websites which are the subject of this Complaint. The order to take down the sites relates to the parties’ dispute regarding Complainant’s trade secret; it is not based on any allegations of cybersquatting. The court did not order transfer of the Domain Names.

5. Parties’ Contentions

A. Complainant

Complainant argues that it has the right to bring this action against the two Respondents in a single action because the Respondents are brothers and are coordinating their actions with respect to these Domain Names. Although the Domain Names are not registered under a single entity or individual, Complainant asserts that there can be no separation between Respondents Mike and Robert Henkel and that the Domain Names are under their common control. It argues that Respondents work in concert, have always been joined throughout the course of litigation against Complainant, and have been held jointly-and-severally liable by a District Court (Annex B to the Complaint). Complainant claims that the “Respondents…changed the ‘Admin Name’ for the <uncle-evs.com> Domain Name from ‘M.H.’ (a/k/a Michael Henkel a/k/a Mike Henkel) to ‘Robert Henkel.’” Complainant provided a WhoIs database printout showing that, on May 15, 2012, “M.H.” was listed under “Admin Name” (Annex A of Complaint). Another WhoIs printout shows that, on May 29, 2012, just ten (10) days after the filing of this Complaint, “Robert Henkel” was listed under “Admin Name” (Annex G of Complaint).

Complainant asserts that it has acquired common law trademarks over the mark NU SCIENCE and the name of Complainant’s President, Kevin Negrete. Complainant contends that it has consistently used and marketed the mark NU SCIENCE for the past fifteen (15) years, has made over USD 350 million in global retail sales, and spends over USD 2 million annually in global retail advertising and promotion. It further claims that people associate the mark in connection with nutritional products, thereby establishing secondary meaning. Complainant maintains that Kevin Negrete has been employed by Complainant for thirteen years and has been its President since 2005. Complainant provided a YouTube printout of one of Kevin Negrete’s speeches in connection with “Cellfood” as evidence that Kevin Negrete is the “face and voice of Complainant and is known world-wide as an educational speaker regarding bio-cellular nutrition” (Annex M to the Complaint).

Complainant argues that the Domain Names <evstorey.com>, <uncle-evs.com>, <d2so4online.com>, <nuscience.org>, and <kevin-negrete.com> are identical or confusingly similar to its federally registered marks, EVERETT STOREY and DEUTROSULFAZYME, and its common law marks, NU SCIENCE and KEVIN NEGRETE. It asserts that Respondents’ registered Domain Names “almost exact[ly]” match Complainant’s marks phonetically, visually, and in meaning. Complainant further asserts that both its marks and the Domain Names relate to an Internet-based “sale of goods in the mineral and nutrition industry” targeted to the same customers.

Complainant alleges that the Respondents have no legitimate interests in the Domain Names. It claims that Respondents are “neither licensees nor authorized users of Complainant’s marks,” and that they are not authorized to promote or sell Complainant’s goods. Complainant claims that it has no relationship with, nor has it ever done business with, Respondents.

Complainant asserts that the Domain Names were registered in bad faith because their primary purpose is to disrupt the business of a competitor. It further asserts that Respondents intend to benefit commercially from Complainant’s goodwill and reputation through the use of the Domain Names. Complainant claims that the Domain Names create a “likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites,” which cast doubt upon Complainants original formula. It also contends that it is being attacked and disparaged by the websites to which the Domain Names direct and that Respondents registered the Domain Names to prevent Complainant from using them.

Complainant seeks transfer of all five Domain Names.

B. Respondent

Respondents assert that the joining of Michael and Robert Henkel as Respondents violates Paragraph 3(c) of the Rules, which provide that a complaint may relate to more than one domain name as long as they are registered by the same domain-name holder. Respondents argue that their relationship as brothers is not a legitimate basis for joining them in the Complaint and that the Complaint should be dismissed. Respondents claim that, because the District Court lacked personal jurisdiction, the court’s judgment against them is insufficient evidence that they operate jointly.

Respondents assert that the UDRP is not the proper forum to litigate trademark infringement claims. They argue that UDRP proceedings provide no discovery or cross-examination, are decided on a single pleading from each party and are focused on the three Policy elements, while trademark infringement claims involve different legal standards, a broader record, and even expert evidence.

Respondents maintain that Complainant offers no evidence of confusion, or likelihood of confusion, between the Domain Names and its registered trademarks EVERETT STOREY and DEUTROSULFAZYME. Respondents further claim that, “given the fairly obvious and marked differences” between the EVERETT STOREY trademark and the <evstorey.com> and <uncle-evs.com> Domain Names, Complainant’s assertion that the mark is “almost exact[ly]” like the Domain Names is unfounded. Respondents argue that Complainant is really claiming that it has secured rights to derivations of the “Everett Storey” name, which is unsupported by any evidence that the names “Ev Storey” or “Uncle Ev” have acquired secondary meaning or dilute the EVERETT STOREY trademark. Respondents argue that the term “d2so4online” is not confusingly similar to the Complainant’s trademark DEUTEROSULFAZYME. Respondent claims that “d2so4” is a “merely descriptive” term for deuterium sulfate and cannot be trademarked. Furthermore, Respondents note that, unlike “d2so4,” DEUTEROSULFAZYME is not an exact scientific term describing a chemical compound, but rather is a “fanciful trade name.”

Respondents also dispute Complainant’s allegations that it has a common law trademark over the personal name “Kevin Negrete,” arguing that a YouTube printout of one of Kevin Negrete’s speeches is insufficient to establish secondary meaning. Respondents also claim that a person claiming common law trademark rights must use his name or likeness as a trademark.

Respondents allege that Complainant does not have a common law trademark over the term NU SCIENCE. Respondents argue that: (1) Complainant provided no evidence supporting secondary meaning except for the factual findings of the District Court, which Respondents claim are invalid because the court lacked personal jurisdiction, and (2) the United State’s Patent and Trademark Office’s (“USPTO”) denial of the petition to revive the NU SCIENCE trademark and its subsequent abandonment negates Complainant’s assertions of common law trademark rights in the claimed mark (Annex 2 of Response).

Respondents further allege that they have substantial legitimate interests in the Domain Names because the websites to which they direct are being used for criticism and the “exchange of ideas and information.” Respondents claim that, with the exception of the “www.d2so4online.com” website, they are using the Domain Names for “legitimate or noncommercial fair use.” They claim that the <d2so4online.com> Domain Name is not identical or confusingly similar to the DEUTROSULFAZYME trademark and that the <d2so4online.com> website is used to sell products not intended for human consumption, unlike Complainant’s products. Respondents claim that the District Court did not explicitly prevent Respondents’ registration of the Domain Names, but only enjoined them from “advertising and using a very similar mark in commerce that purports to provide the identical benefits and goods as Complainant sells by use of its marks.” They claim that, because the “www.d2so4online.com” website does not sell the same product that Complainant sells, it is not in violation of the court’s order.

Respondents claim that they did not register or acquire the Domain Names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of a trademark, whatsoever.” They state that the Domain Names were not registered to prevent Complainant from reflecting its mark. The Respondents further allege that the Domain Names were not registered in an “intentional attempt to attract[,] for commercial gain, Internet users to the…particular web site or other on-line location by creating a likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement of…Respondent[s’] web site or location or of a product or service on…[the] web site or location.” Respondents argue that nothing on the websites to which the Domain Names direct would cause an Internet user to believe that he or she has accessed Complainant’s site, particularly given Respondents’ sharp criticism of Complainant.

6. Preliminary Procedural Issues

A. Consolidation of Multiple Domain Names and Respondents

Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided the domain names are registered by the same domain-name holder.” Because the <d2so4online.com>, <evstorey.com>, <kevin-negrete.com>, and the <nuscience.org> Domain Names are registered under Mike Henkel, these Domain Names are properly consolidated in the Complaint. However, the <uncle-evs.com> Domain Name is currently registered to Robert Henkel.

As Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, a consensus has developed among UDRP panels to permit consolidation of multiple Respondents in a single complaint when: (i) the domain names are subject to common control; and the (ii) consolidation would be fair and equitable to all of the parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság v. Chenmei Mei Chen / Private Whois pepejeans-uk.org, Private Whois pepejeans-uk.net, WIPO Case No. D2012-0441; and Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659.

The WhoIs printouts provided by Complainants show that, just four days prior to the filing of the Complaint, “M.H.” was listed as the “Admin Name” for the <uncle-evs.com> Domain Name. The Panel believes based on the evidence of record that “M.H.” refers to Mike Henkel. All five Domain Names are registered with the same registrar and list the same address. Additionally, Mike and Robert Henkel are listed as joint owners of “Revive Organics LLC” on the “www.d2so4online.com” website. And, Mike and Robert Henkel are joint defendants in the litigation filed by Complainant in the United States District Court for the Central District of California.

The Panel finds that Complainant has shown by a preponderance of the evidence that the Domain Names are under common control and that consolidation would be fair and equitable to all parties.

B. Supplemental Submissions

As panels long have recognized, the Policy and the Rules demonstrate a strong preference for single submissions – that is, the Complaint and the Response. Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041. Although panels do, on occasion, request supplemental submissions pursuant to paragraph 12 of the Rules, (e.g., Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237), most panels have found that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of new evidence, issuance of new statutes or case decisions, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES, WIPO Case No. D2000-0416; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Even then, if the new material is unlikely to have any effect on the outcome of the proceeding, allowing supplemental submissions will serve only to increase the cost and delay of the proceeding, with no commensurate benefit to the parties.

The Panel has reviewed Complainant’s supplemental submission to determine whether it includes any facts or argument that justifies a second round of submissions. The supplemental submission contains a District Court order that was issued after the filing of the Complaint and Response. As that order was not available to the Complainant at the time of the Complaint, the Panel will accept the submission of that document. The remainder of Complainant’s Reply, though, simply refutes claims made by Respondent and reargues the points in the Complaint. For example, Respondents disputed that a YouTube printout of a speech given by Complainant’s President was sufficient to support Complainant’s claim that the President’s name was established as a common law trademark, and Complainant sought to reply to those arguments, but the Panel is capable of assessing that evidence on its own.

7. Discussion and Findings

At the outset, the Panel notes that UDRP proceedings are intended to resolve cases of abusive cybersquatting and not trademark infringement, dilution, unfair competition, or trade secret claims. Such claims are beyond the purview of this Panel, except to the extent they are directly related to the claims of cybersquatting. See E.I. du Pont de Nemuours and Co. v. Avant Garde Composition, WIPO Case No. D2000-0130; Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack My, WIPO Case No. D2000-0190; and Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185. Although the District Court ordered Respondents’ websites to be taken down, the Panel notes that the policies and standards governing the trade secret litigation between the parties are very different from the rules governing this proceeding. Thus, the Panel’s Decision will be limited to determining whether Complainant’s request for transfer of the Domain Names should be granted under the UDRP Policy and Rules.

Under paragraph 4(a) of the Policy, the complainant has the burden of proving each of the following factors by a preponderance of the evidence:

(i) The Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(ii) The Domain Names have been registered and used in bad faith.

A. Identical or Confusingly Similar

The first factor involves two steps. The Panel must first determine whether Complainant has rights to any relevant marks. The Panel must then determine if the Domain Names are identical or confusingly similar to any such marks. See National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284.

Complainant has registered the trademarks EVERETT STOREY and DEUTROSULFAZYME. The Panel finds that Complainant has common law trademark rights over the mark NU SCIENCE, but that Complainant does not have a common law trademark over the personal name “Kevin Negrete.”

With respect to EVERETT STOREY and DEUTROSULFAZYME, the federal registrations of those marks are prima facie evidence of their validity, and Respondents have not come forward with evidence that undermines the validity of those marks. Thus, the Panel easily finds that Complainant has rights in those marks.

The Panel also finds that Complainant has rights in the mark NU SCIENCE. Common law trademarks qualify as trademarks for purposes of the UDRP. See paragraph 1.7, WIPO Overview 2.0. To establish common law trademark rights, a Complainant must show that “the name has become a distinctive identifier associated with the complainant or its goods or services.” Id. Sales figures, the nature and extent of advertising, consumer surveys and media recognition are all relevant in establishing such secondary meaning. In that connection, Complainant asserts that it has realized more than USD 350 million in global retail sales, spends over USD 2 million annually in retail advertising and promotion, and that the name “Nu Science ” is recognized as a global leader in nutritional supplements. These allegations tend to support a finding that NU SCIENCE is a common law trademark. Furthermore, the District Court made factual findings that also support a finding of common law trademark rights, namely, that “Nu Science” had, at the time, annual worldwide sales of over USD 230 million, advertising expenditures of over USD 1 million, and that customers identify Complainant’s product with “Nu Science”. Taken together, these allegations support a finding of secondary meaning and therefore common law trademark rights.

Respondents did not challenge the factual allegations supporting Complainant’s common law trademark rights. Instead, they challenged the District Court’s judgment on the basis of improper jurisdiction, and noted that the “Nu Science Corporation” trademark application was abandoned for failure to timely respond to an office action and Complainant’s petition to revive was denied as untimely. With respect to the District Court’s order, the court recently reaffirmed its decision and rejected Respondent’s motion to vacate the default judgment in a lengthy decision to which this Panel defers. As for the denial of the petition to revive before the USPTO, that denial was based on a technical issue of timeliness, not on the merits. Thus, on the unrebutted facts alleged, the Panel finds that Complainant has common law trademark rights in the mark NU SCIENCE for purposes of these proceedings.

Complainant claims that it also has common law trademark rights in the name of its President, Kevin Negrete. The Panel cannot agree. Complainant has failed to provide sufficient evidence demonstrating that the name “Kevin Negrete” has acquired secondary meaning, let alone that Complainant (as contrasted with Mr. Negrete himself) owns any such rights. The existence of a single YouTube page showing a speech by Mr. Negrete does not suffice to establish trademark rights. See generally, Boris Johnson v. Belize Domain Whois Service Lt., WIPO Case No. D2010-1954 (being a well known politician is insufficient to establish trademark rights, but trademark rights were established through sales of books, newspaper columns and after-dinner speaker services; “the relevant inquiry is whether Complainant has used his or her personal name as a marketable commodity, for a fee to promote another’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services”).

Having determined Complainant’s relevant trademarks, the Panel considers if any of the Domain Names are identical or confusingly similar to Complainant's marks. As explained in paragraph 1.2 of WIPO Overview 2.0:

“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms…typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).”

By this test, the Panel finds that the Domain Names <evstorey.com> and <uncle-evs.com> are, for purposes of the first factor of the Policy, confusingly similar to Complainant’s registered EVERETT STOREY mark. The <evstorey.com> Domain Name is just an abbreviation of the first word EVERETT; the <uncle-evs.com> Domain Name reflects the initials of EVERETT STOREY, “EVS”. Moreover, throughout the websites, Respondents refer to Mr. Storey as “Uncle Ev”, which reinforces the view that the <uncle-evs.com> Domain Name is confusingly similar to the EVERETT STOREY trademark. Further, the Panel finds that Respondents selected these Domain Names with the specific purpose of referring to Complainant’s marks, and the Panel finds that Respondents were successful in that intention.

The Domain Name <d2so4online.com> presents a closer question. On its face, it does not appear to be similar to the trademark DEUTROSULFAZYME. However, when the Domain Name is read, it sounds much more like the DEUTROSULFAZYME trademark: D-TWO-SO-FOUR ONLINE. Based on the aural similarity, the Panel concludes that this Domain Name is confusingly similar to the DEUTROSULFAZYME trademark for purposes of the first factor of the Policy. Although the <d2so4online.com> Domain Name may also be seen as confusingly similar to the generic term “deuterium sulfate,” that does not immunize the Domain Name from a finding of confusing similarity to the trademark. If the Domain Name were registered to refer to the generic term that is an issue that could more effectively be addressed in the second and third factors of the Policy.

Finally, the Panel finds that the <nuscience.org> Domain Name is identical to Complainant’s NU SCIENCE common law mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three nonexclusive examples in which Respondents can demonstrate that they have rights or legitimate interests in the Domain Names:

(i) Before any notice…of the dispute, [Respondents’] use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or

(ii) [Respondents] (as an individual, business, or other organization) [have] been commonly known by the domain names, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondents are] making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain[,] to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondents argue that they have legitimate interests in the Domain Names because most of them are used for noncommercial fair use and the <d2so4online.com> Domain Name sells fertilizer, which is not competitive with Complainant’s website, which sells an oxygen and nutrient supplement for human consumption. Paragraph 4(c)(iii) of the Policy recognizes that a respondent engaging in legitimate noncommercial or fair use has a legitimate interest in a domain name and many panels (this one included) have concluded that a respondent has a legitimate interest in noncommercial criticism. See Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647; and Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.

The “www.evstorey.com” website consists of numerous links and information about “Everett Storey”, including links critical of the Complainant. There does not appear to be any commerce on this site. As such, the site appears to qualify as a noncommercial informational and criticism site, and the Panel finds therefore that Respondents have a legitimate interest in this site (so long as its use remains a noncommercial informational and criticism site).

The ”www.uncle-evs.com” website has less information on it, but what it does have refers to Everett Storey and the Cellfood product, including criticism. As such, the Panel finds that this Domain Name also is being used for noncommericial criticism (again, for so long as its use remains a noncommercial informational and criticism site).

The “www.d2so4online.com” website is being used to sell fertilizer that includes the ingredient “deuterium sulphate.” Because the Domain Name can be read as a reference to deuterium sulphate (“d-two-so-four online”), the Panel finds that this Domain Name is being used in connection with a bona fide offering of goods (so long as its use remains a site for the sale of this non-competitive product).

As to the Domain Name <nuscience.org>, Respondents cannot genuinely claim that the Domain Name is being used for legitimate criticism or noncommercial or fair use because the Domain Name resolves to a blank page. Therefore, given Complainant’s prima facie showing and the Respondents failure to show any use or demonstrable preparations to use this website for a noncommercial criticism site, the Panel concludes that Respondents have not demonstrated rights or legitimate interests in the <nuscience.org> Domain Name.

C. Registered and Used in Bad Faith

Because the Panel has found that Complainant lacks rights in the mark KEVIN NEGRETE, and because the Panel has found that Respondents have demonstrated a legitimate interest in the Domain Names <evstorey.com>, <uncle-evs.com> and <d2so4online.com>, the Panel need not consider issues of bad faith with respect to those Domain Names.

As to the remaining Domain Name, <nuscience.org>, the Panel notes the suspicious registration of this Domain Name on the day the Complaint was filed, and the Respondents’ subsequent failure to use the Domain Name for any legitimate purpose (the Domain Name is inactive and fails to resolve to any website). Although Respondents claim that they intend to use this Domain Name for a criticism site, their failure to launch any such site in the two months since their registration of the Domain Name, or to provide the Panel with evidence of demonstrable preparations to do so, undermines that contention. Instead, the Panel can only conclude that the Respondents registered this Domain Name in bad faith as part of their ongoing disputes with Complainant in order to block Complainant from registering its own name, disrupt Complainant’s business, and possibly acquire this Domain Name for leverage in settlement discussions with Complainant, and intends to use the Domain Name in connection therewith.

8. Decision

Because Complainant failed to prove that the <kevin-negrete.com> Domain Name is identical or confusingly similar to a Domain Name in which Complainant has rights, the Complaint is denied with respect to that Domain Name.

Because Complainant has failed to show that Respondents lack rights or legitimate interests in the Domain Names <d2so4online.com>, <evstorey.com>, and <uncle-evs.com>, the Complaint is denied with respect to those Domain Names.

Because Complainant has established that the Domain Name <nuscience.org> is confusingly similar to Complainant’s trademark rights, that Complainant has shown that Respondents lack rights or legitimate interests in this Domain Name, and that Respondents registered and used the Domain Name in bad faith, the Panel orders transfer of this Domain Name to the Complainant.

David H. Bernstein
Sole Panelist
Dated: July 19, 2012

 

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