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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Hut.com Limited v. Jer O’Donoghue & Jamie O’Donoghue

Case No. DIE2013-0006

1. The Parties

The Complainant is The Hut.com Limited of Northwich, Cheshire West, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by TLT LLP, United Kingdom.

The Respondents are Jer O’Donoghue & Jamie O’Donoghue of Killarney, Ireland.

2. The Domain Name and Registrar

The disputed domain name <myprotein.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2013 via email. On the same day, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. Also on November 4, 2013, IEDR transmitted by email to the Center its verification response confirming the Respondents as the registrants and provided contact details.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2.1 and 4.1 of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 22, 2013. In accordance with paragraph 5.1 of the Rules, the due date for Response was December 20, 2013. No Response was filed. Accordingly, the Center notified the Respondents’ default on December 24, 2013.

The Center appointed Alistair Payne as the sole panelist in this matter on January 9, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a leading multi-site virtual retailer based in the United Kingdom. One of its most successful sites is at “www.myprotein.com”, which it has operated since 2004 and is accessible in to customers in Ireland as well as in the United Kingdom and elsewhere. The Complainant owns more than 50 other domain names containing the MYPROTEIN brand, and it sells sports nutrition products under the brand.

The Respondents registered the disputed domain name on May 30, 2012. The disputed domain name redirects automatically to a website at “www.hpnutrition.ie”, that appears to be owned by the Respondents’ company HP Nutrition Limited and which sells competing sports nutritional products.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has made substantial sales of products under the MYPROTEIN brand which in the last three years exceeds in total GBP 122 million including GBP1.9 million in Ireland. It submits using evidence from Google Analytics that its website at “www.myprotein.com” has received more than 586,000 hits which has resulted in more than 33,000 transactions in Ireland through its Eire version of the website in the last three years. Further it says that in each of the last three years the Complainant has spent more than GBP 50,000 on marketing its brand and website in Ireland including by using pay-per-click advertising, online advertisements, affiliations and press advertising.

As a consequence of its use, the Complainant submits that its MYPROTEIN mark is a relevant protected identifier for the purposes of the Policy as it would be protectable as a trade or service mark in Ireland. The Complainant then submits that the substantive elements of the disputed domain name are identical to its MYPROTEIN mark, the only difference being the “.ie” country code top-level domain root.

The Complainant states that it is not aware of the Respondents being known by the MYPROTEIN brand or that they offer bona fide goods or services under the brand. The Complainant further submits that it has not authorised, permitted or licensed the Respondents to use its mark in the disputed domain name and that the Respondents’ use is not legitimate.

The Respondents states that the fact that the disputed domain name redirects to the Respondents’ company website is indicative of the Respondents’ intention in bad faith to confuse and divert Internet users to their site at “www.hpnutrition.ie” for commercial purposes. They further submit that the fact that the disputed domain name was registered in 2012, by which time the Complainant’s MYPROTEIN mark had developed a substantial reputation and goodwill, suggests that the Respondents knowingly and deliberately in bad faith registered the disputed domain name in order to disrupt the Complainant’s business and to divert customers.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it has developed a very substantial business and web presence under its MYPROTEIN brand and its website at “www.myprotein.com” since inception in 2004. It has sold a considerable amount of its products under the MYPROTEIN brand name, in the course of undertaking 33,000 sales amounting to GBP 1.9 million over the last few years in Ireland, and this business has been carried out through a version of its website expressly targeted it at Irish customers. In addition, the Complainant has submitted that it has undertaken regular and reasonably substantial advertising specifically aimed at customers in Ireland over the last few years. The Panel finds adequate support to the Complainant’s claim that its MYPROTEIN brand is a protected identifier for the purposes of the Policy because in the Panel’s view, the Complainant would, on the balance of probabilities, be capable of protecting the brand under the law of passing off in Ireland.

The Panel notes that the substantive element of the disputed domain name is identical to the Complainant’s MYPROTEIN brand. Accordingly, the Panel finds that the disputed domain name is identical to the protected identifier in which the Complainant has demonstrated that it owns rights and the Complaint succeeds under the first element of the Policy.

B. Rights in Law or Legitimate Interests

The Complainant submits that it has not authorised, permitted or licensed the Respondents to use its mark in the disputed domain name and that to its knowledge, the Respondents are neither commonly known by the disputed domain name and nor are they offering bona fide goods or services under the MYPROTEIN mark. For the further reasons set out below and considering that the Respondents have not sought to rebut the Complainant’s case under this element of the Policy, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under this element of the Policy.

C. Registered or Used in Bad Faith

The Respondents registered the disputed domain name in 2012, many years after the Complainant commenced its business and use of the MYPROTEIN brand or mark in Ireland. The Respondents use the disputed domain name to re-direct Internet users automatically to their own website, which sells competing sports nutrition products. There is nothing to suggest that the Complainant’s product is sold at this website, and even if it was the Complainant denies that it has licensed or authorised the Respondents to do so or permitted the use of its mark in the disputed domain name.

The Panel considers that this is a classic case of cybersquatting in which the Respondents have most likely seen the success of the competing Complainant’s business and have sought to register the disputed domain name in order to confuse and divert Irish customers of the Complainant to their website at which competing sports nutrition products are offered for sale. Accordingly, the Panel finds that there is evidence of registration or use in bad faith in terms of paragraph 2.1.4 of the Policy, and the Complaint also succeeds under the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <myprotein.ie> be transferred to the Complainant provided that the Registrar is satisfied that the Complainant fulfills the eligibility criteria for ownership of the disputed domain name as set out in the Registrations Policy for the .ie domain name. Alternatively, the Panel orders that the disputed domain name <myprotein.ie> be cancelled.

Alistair Payne
Sole Panelist
Dated: January 26, 2014

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