WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vitacost.com, Inc., v. Ronald Lee Bradley
Case No. DAU2012-0003
1. The Parties
The Complainant is Vitacost.com, Inc of Florida, United States of America, represented internally.
The Respondent is Ronald Lee Bradley of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <vitacost.com.au> is registered with Crazy Domains Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 16, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On February 17, 2012, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2012.
On February 21, 2012, the Respondent transmitted by email to the Center a request for an extension of the response date to June 1, 2012, on the ground that he was about to travel overseas. On February 22, 2012, the Center transmitted by email its decision to decline the request, on the ground that there did not appear to be exceptional circumstances as required by the Rules, paragraph 5(d).
The Response was filed with the Center on March 7, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 19, 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.
4. Factual Background
The Complainant is an online retail company selling nutraceutical vitamin supplements, organic products and personal healthcare items. It has been an online retailer since 1999, and serves over 1.1 million customers in Australia and around the world. It owns numerous domain names incorporating the word “vitacost”, including <vitacost.com>.
The Complainant registered the trademark VITACOST in Australia on December 29, 2005, and claims it owns registrations for the trademark VITACOST in other countries, including in the United States of America and the European Community.
According to information provided by the registrar, Crazy Domains Pty Ltd, the disputed domain name was registered on November 18, 2008.
On January 9, 2012, the Complainant sent a cease and desist letter to the Respondent asking him to transfer the disputed domain name to the Complainant and offering to reimburse the Respondent his out-of-pocket registration expenses. On January 9, 2012, the Respondent replied to the Complainant’s cease and desist letter stating “We would be open to selling it, for a reasonable price.” On January 11, 2012, the Respondent applied to register the disputed domain name as a trademark in Australia. That application is currently pending.
The disputed domain name currently resolves to a webpage that states “Oops, we’ve just started to construct vitacost” followed by the disclaimer “However, this site is not associated with the USA vitacost.com Inc.”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark VITACOST because it is comprised solely of the word “vitacost” and the “.com.au” Australian domain extension.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it is not being used for any bona fide offering of goods and services; (ii) there is no indication the Respondent was known by the disputed domain name prior to its registration; (iii) the Respondent is not using the disputed domain name for any legitimate noncommercial or fair use purpose; (iv) prior to the cease and desist letter the disputed domain name was inactive and the Respondent’s creation of the landing page is a transparent attempt to disguise the Respondent’s cybersquatting activities; (v) the Complainant has not authorized or licensed the Respondent to use the VITACOST trademark or register the disputed domain name; and (vi) the Respondent cannot operate under the VITACOST trademark without necessarily confusing customers in Australia and abroad.
The Complainant contends the disputed domain name was registered and is being used in bad faith because: (i) the Respondent’s purpose is to block the Complainant’s use of the domain name in a presumptive expectation that its value will build and the Respondent can extort money from the Complainant; (ii) the Respondent must have been aware of the deception and confusion that would inevitably follow if the Respondent uses the disputed domain name; (iii) following the Complainant’s cease and desist letter, the Respondent added a landing page to the website to which the disputed domain name resolves, and applied to register the trademark VITACOST.COM.AU in Australia; and (iv) the landing page of the website to which the disputed domain name resolves does not indicate what goods or services the Respondent is selling or would intend to sell, and there is no indication that the goods to be sold will bear the VITACOST trademark, as per the bona fide requirements laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and subsequent decisions.
The Respondent claims that he is the director of an Australian company that operates “in the upmarket natural health products business”. He contends that he became the registered owner of the disputed domain name in 2010, after he had a dream in which he saw the word “VITACOST” in bold red letters. He then decided to register the disputed domain name, thinking that he may one day set up a health-oriented sister company with this name, to address the lower-priced end of the market. He asserts that at the time of his dream, he knew nothing of the Complainant. He contends that the Complainant, a multinational, is attempting to unfairly seize his property in a classic “David vs Goliath” manner.
The Respondent makes many statements about the disputed domain name including: (i) its registration has not infringed upon or violated the rights of anyone; (ii) it is not identical or confusingly similar to <vitacost.com>; (iii) he has not registered or used it for any unlawful purpose; (iv) he has not registered it to prevent the Complainant “from reflecting <vitacost.com.au> in a domain name” or to disrupt the business activities of anyone; (v) he has not acquired it for the purpose of selling, renting or otherwise transferring the registration to another person, although he is open to doing so; (vi) he has not intentionally attempted to attract, for commercial gain, Internet users to a site by creating a likelihood of confusion with the Complainant and, indeed, he has made it clear his site is not associated with the Complainant; and (vii) he has tried repeatedly to negotiate a good faith, reasonable settlement with the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates wholly the Complainant’s registered trademark VITACOST with the addition of the ccTLD identifier “.com.au”. Ignoring the ccTLD identifier, the disputed domain name is identical to the Complainant’s trademark. Accordingly, this Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The mere fact that the Respondent has applied to register the disputed domain name as a trademark in Australia does not establish that the Respondent has a right or legitimate interest in the disputed domain name. Under Australian law a trademark application, of itself, does not give rise to any trademark rights in respect of the subject matter of the application – see Prom Night Events v. YourFormal Pty Ltd / Your Formal Australia Pty Ltd, WIPO Case No. D2011-1707, for a discussion of the Australian law on this point. In any event, according to the present record the Respondent’s trademark application was filed on January 11, 2012, after the Respondent received the Complainant’s cease and desist letter in which notice of this dispute was brought to the Respondent’s attention. In this Panel’s opinion, the intent of paragraph 4(c)(i) of the Policy is that action taken after notice of the dispute cannot, of itself, evidence a right or legitimate interest in the disputed domain name.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and does not appear to have any association with a legitimate business that has a connection with the word “vitacost”. The disputed domain name was registered nearly a decade after the Complainant commenced business, and three years after the Complainant registered its VITACOST trademark in Australia. The Respondent’s contention that he had a dream in which he saw the word “VITACOST” in bold red letters is, in the view of this Panel, fanciful. The word “vitacost” appears to be invented, so the chance of a person independently “dreaming up” this word for use in respect of a business very similar to that of the Complainant is very remote. According to the present record, it appears that the disputed domain name is not being used in connection with a bona fide offering of goods and services, and the Respondent has failed to provide any evidence of his alleged intention to do so. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that the Respondent most likely knew of the Complainant’s trademark at the time of his registration of the disputed domain name, and that he had no rights or legitimate interests in the disputed domain name. In response to the Complainant’s cease and desist letter, the Respondent stated he was willing to sell the disputed domain name to the Complainant for “a reasonable price”. The Respondent contends he has “tried repeatedly to negotiate a good faith, reasonable settlement with them [the Complainant]” but has provided no evidence of this. The evidence on the record supports the view that the Respondent registered the disputed domain name primarily for the purpose of selling it to another person (in this case, the Complainant) for valuable consideration in excess of documented out-of-pocket expenses, or to prevent the owner of a trademark (in this case, the Complainant) from reflecting its trademark in a corresponding domain name, or both. Pursuant to paragraphs 4(a)(i) and (ii) of the Policy, these circumstances are evidence of registration and use of the disputed domain name in bad faith. Accordingly, this Panel is satisfied that the disputed domain name has been registered in bad faith.
D. Complainant’s Eligibility
The Complainant has requested transfer of the disputed domain name. Given that the Complainant owns an Australian registered trademark that is identical to the disputed domain name, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name.
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, <vitacost.com.au>, be transferred to the Complainant.
Andrew F. Christie
Dated: April 2, 2012