WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vitamin World, Inc. v. Stephanie Mackie
Case No. D2011-0242
1. The Parties
The Complainant is Vitamin World, Inc. of Ronkonkoma, New York, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Stephanie Mackie, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <jmsvitaminworld.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 7, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On February 7, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the 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 February 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 9, 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
Founded in 1977, the Complainant produces and markets more than 1,000 vitamins, herbs and other nutritional supplements in a wide variety of forms such as capsules, tablets, powders and liquids, and packages more than 100 billion bottles of supplements each year. The Complainant currently owns and operates over 400 retail stores located across the United States of America (“U.S.”). The Complainant operates a global website, located at <vitaminworld.com>, and ships more than 100,000 products ordered through this website every month to over 15,000 households. The Complainant operates affiliated websites in the United Kingdom, Austria, Australia and Switzerland. For the fiscal year ending 2010, the Complainant generated revenues in excess of USD 193 million in North American retail sales and incurred USD 7.52 million in promotional expenses.
The Complainant is the owner of numerous U.S. and Canadian trademark registrations that contain, or are comprised of, VITAMIN WORLD, the earliest of which dates from 1974. In particular, the Complainant is the owner of U.S. Trademark No.1035168 for the word mark VITAMIN WORLD, registered on March 9, 1976 in class 5 (food supplements containing vitamins).
The disputed domain name was originally registered on April 12, 2005 by JMS Partners Enterprises Ltd. of Vancouver, Canada. The Respondent acquired the disputed domain name on or about July 4, 2009. The disputed domain name directs Internet users to a webpage that identifies ongoing auctions at the eBay website for nutritional supplement products, including products which may, or may not, be genuine products manufactured by the Complainant.
The Respondent is listed as the registrant of numerous domain names incorporating the well-known trademarks of third parties including <starwarsforsale.com>, <smurfcharacters.com>, <lordofthering.info>, <johndeerestore.info> and <beatlesforsale.info>.
The Complainant issued a cease and desist letter to the Respondent dated June 24, 2010 requiring the transfer of the disputed domain name. The Complainant issued follow-up letters on August 17, 2010 and on November 11, 2010. The Respondent did not reply to this correspondence.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it has rights; that the Respondent has no right or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant is the registered owner of the VITAMIN WORLD trademarks including U.S. Trademark N No.1035168 for the word mark VITAMIN WORLD, registered on March 9, 1976. This trademark is incorporated in its entirety in the disputed domain name. The addition of the non-distinctive prefix “jms” in this case is insufficient to distinguish the disputed domain name from the Complainant’s VITAMIN WORLD trademarks. The dominant and immediately striking element in the disputed domain name is the Complainant's registered trademark VITAMIN WORLD, the use of which is inherently likely to lead consumers to believe there is a connection with the Complainant.
The Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use its VITAMIN WORLD trademarks. The Respondent has never been, and is not currently, commonly known by the disputed domain name. Nor is the Respondent using the disputed domain name in connection with any bona fide offering of products and services. Generally, the unauthorized use of a third party's trademark in a domain name cannot be said to constitute a bona fide offering of goods and services.
On the facts of this case it is plain that the Respondent was well aware of the Complainant's rights in the trademark VITAMIN WORLD. Here, the Respondent cannot claim that its use of the disputed domain name which is confusingly similar to the Complainant's trademark can constitute a bona fide use. Nor, on the facts of this case, is such use by the Respondent a legitimate non-commercial or fair use of the disputed domain name, but is in fact clearly done for profit and to misleadingly divert customers.
A subsequent acquirer of a domain name, such as the Respondent, is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights. Given the extent of the reputation the Complainant enjoys in the VITAMIN WORLD trademarks, the Respondent was undoubtedly aware of the Complainant when the Respondent acquired the disputed domain name, and it did so as part of a scheme to generate click through revenue by Internet users who visit the Respondent’s site, believing it to be associated with the Complainant, then clicking through to eBay listings.
In light of the confusing similarity of the Domain Name to the Complainant's VITAMIN WORLD trademarks and the use of specific software to generate links to eBay offerings of various VITAMIN WORLD brand products on the associated website, the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. Accordingly, there is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website. The website is constructed in such a way, that, in addition to generating links to products for sale on eBay, purporting to be those of the Complainant, it also generates links to nutritional supplement products of the Complainant’s competitors and this is a further indicator of use in bad faith.
The Respondent’s portfolio of domain names demonstrates that the Respondent has registered a series of domain names in order to prevent the owners of trademarks, which these domain names incorporate, from reflecting their marks in the corresponding domain names. These domain names, like the disputed domain name, are connected to web pages designed to attract visitors to eBay pages and auctions rather than the bona fide websites of the trademark holders. Furthermore, the Respondent’s knowledge of the Complainant’s rights, both actual and constructive, as well as the Respondent’s failure to reply to the Complainant’s transfer requests are indicative of bad faith registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of numerous registered trademarks for the word mark VITAMIN WORLD including U.S. Trademark No.1035168 for the word mark VITAMIN WORLD noted in the factual background section above. This trademark is incorporated in its entirety in the disputed domain name along with the prefix “jms”. The prefix is merely a set of initial letters which are wholly generic in nature. In the Panel’s opinion, and in the opinion of previous panels in cases brought under the Policy (see for example Hoffmann-La Roche Inc. v. Private Whois for RX-ACCUTANE.COM / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-0682) such generic letters do not in any way diminish the confusion caused by the incorporation of a trademark in its entirety within a domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VITAMIN WORLD trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that, in the absence of a Response, a complainant may establish this element by making out a prima facie case against the respondent.
On this topic, the Complainant asserts that it has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name. The Complainant also submits that the Respondent has never been commonly known under the disputed domain name and has not used it in connection with any bona fide offering of products and services.
The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to file a response in this case which might have assisted the Panel or provided some explanation of its conduct. The Panel notes that the disputed domain name is being used in connection with a website which points visitors to products being auctioned on the eBay website that may or may not be genuine products of the Complainant but, which in any event are being sold on the basis of the Complainant’s VITAMIN WORLD trademark. In the Panel’s view this use neither qualifies as a bona fide offering of goods and services, nor as a non-commercial or fair use. Furthermore, the Panel cannot conceive of any right or legitimate interests that the Respondent might have asserted in the disputed domain name.
In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
On this topic, the Complainant notes first that the Respondent is a subsequent acquirer of the disputed domain name and that as such, the Respondent’s acquisition should be treated as a registration for the purposes of the Policy. This question has previously been considered by panels in cases under the Policy and is now the subject of paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“the WIPO Overview”) which provides the consensus view as follows:
“While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current registrant took possession of the domain name.”
In the present case, the Complainant has provided the Panel with sufficient evidence that the Respondent acquired the disputed domain name on or about July 4, 2009 and accordingly this is the date on which the question of registration in bad faith should be assessed, notwithstanding the fact that the disputed domain name was originally registered on April 12, 2005.
The Panel is satisfied that the Respondent’s registration and use of the disputed domain name was deliberately targeted at the Complainant and its VITAMIN WORLD trademark. The Respondent has pointed the disputed domain name to a page on the eBay website where products purporting to be those of the Complainant are sold, presumably with a view to monetizing its referrals to that website. It appears to the Panel that the Respondent’s use of the Complainant’s trademark in the disputed domain name is calculated to confuse consumers into believing that the products offered for sale are endorsed by the Complainant. It is therefore clear to the Panel that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of products. Accordingly, the Panel finds that the circumstances provided in paragraph 4(b)(iv) of the Policy are present in this case and that this constitutes evidence of registration and use of the disputed domain name in bad faith.
A further indicator of bad faith is to be found in the other domain names registered by the Respondent and cited by the Complainant which incorporate well-known trademarks and are being put to a similar use to that of the disputed domain name, namely to point to web pages relative to the corresponding trademarks on the eBay website. It is clear to the Panel that the disputed domain name is thus part of a wider pattern of trademark based domain names which have been employed by the Respondent in this manner and thus that there can be no question whatsoever that the Respondent’s selection of the Complainant’s trademark in the disputed domain name could be accidental or coincidental in any way.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been 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, <jmsvitaminworld.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: March 14, 2011