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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lion Distributing Limited v. Victoria Cottier

Case No. D2012-0317

1. The Parties

The Complainant is Lion Distributing Limited of North Vancouver, British Columbia, Canada, represented by Hollander Plazzer & Co. LLP, Canada.

The Respondent is Victoria Cottier of North Vancouver, British Columbia, Canada, represented by Lonsdale Law, Canada.

2. The Domain Name and Registrar

The disputed domain name <nutraways.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2012, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 22, 2012

The Center verified that the Complaint together with the amendment to 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 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. The Response was filed with the Center on March 15, 2012.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 21, 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 and the Respondent were married to each other in England on July 19, 1980, and they lived together until June 1, 2001, when the marriage effectively came to an end.

During the years of 1994 to 2001, the Complainant and the Respondent jointly owned a business called Lion Distributing Ltd. and carried on that business in the Vancouver area using the trade name and trademark NUTRAWAYS.

The Respondent registered the <nutraways.com> domain name on June 1, 2001.

In April, 2002, the parties entered into a Separation Agreement (“Agreement”) whereby the Complainant paid the sum of $240,000 to the Respondent to buy out her shares and interest in their company, Lion Distributing Ltd. The Agreement provides that the Respondent will not in “any future business venture” use the business name “Nutraways” or any similar name that will deceive or confuse the public into believing they were dealing with the Complainant’s company.

The Complainant’s business was incorporated on May 2, 1994 and has continuously used, marketed and promoted its trade name and trademark NUTRAWAYS in association with retail store services and products in the field of vitamins and nutritional supplements. The Complainant also owns the domain names <nutrawayscanada.com> and <nutraways.ca>.

Since registering the disputed domain name <nutraways.com> the Respondent has never used the disputed domain name in association with an active website. The disputed domain name has always reverted to a parking site and continues to do so up the date of the filing of the Complaint. The Respondent operates her own business under the name “Victoria’s Health”, in the same neighborhood in North Vancouver, where the Complainant’s business is located.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

At the time the Complaint was filed, the Complainant owned common law rights in the NUTRAWAYS trademark in association with the operation of retail stores offering for sale vitamins and nutritional supplements. The Complainant’s use of the Mark dates back to 1994. The Respondent registered the domain name <nutraways.com> which is identical to the Complainant’s common law trademark.

Rights or Legitimate Interests

The Complainant submits that the Respondent cannot have any rights or legitimate interest in the disputed domain name, because pursuant to the Agreement between the parties the Respondent agreed never to use the trademark NUTRAWAYS in any future venture. The Respondent is not known by the NUTRAWAYS trademark, but rather operates her business under the name “Victoria’s Health Inc”. Further, the Respondent is not making a bona fide use of the disputed domain name, and has only used the disputed domain name in connection with a website which is a parking site.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent knew about the Complainant’s rights in the trademark NUTRAWAYS when she registered the confusingly similar domain name; (ii) the Respondent changed the name of the Registrant from her personal name to her company’s name, “Victoria’s Health Inc.” on May 27, 2002 and then changed it again on January 31, 2012 back into her own personal name; (iii) the Respondent registered a confusingly similar domain name to interfere with the Complainant’s business; (iv) the Respondent has never made a bona fide use of the confusingly similar domain name; and (v) the Respondent has ignored and refused to respond to the Complainant regarding the unauthorized ownership of the confusingly similar disputed domain name.

B. Respondent

The Respondent claims that the Complainant is harassing and attempting to intimidate the Respondent in connection with the ownership of the disputed domain name. The Respondent notes that she was still married to the Complainant at the time she registered the disputed domain name. The Respondent alleges that on April 8, 2002 she offered to transfer the disputed domain name to the Complainant for CAD 1500, which was equivalent of the Respondent’s out-of-pocket expenses to register and maintain the disputed domain name.

The Respondent claims that the Complainant permitted the Canadian trademark registration for NUTRAWAYS to lapse and become abandoned on May 29, 1998 and has only recently filed a new application for the trademark NUTRAWAYS on February 22, 2012. The Respondent submits that there are other users of the trademark NUTRAWAYS and NUTRAWAY in association with vitamin and health-related businesses. The Respondent further contends that there are a number of domain names which contain the generic words “nutra” and “ways”. Therefore, the Respondent contends that the Complainant’s common law rights do not extend to the disputed domain name.

The Respondent also submits that the Complainant owns two other domain names, namely <nutrawayscanada.com> and <nutraways.ca> and accordingly the Complainant’s business has not been adversely affected by the Respondent’s registration of the disputed domain name <nutraways.com>.

The Respondent states that she intends to use the disputed domain name internationally and that because the Respondent is of European origin this is a natural extension of her business initiatives. The Respondent submits that the Agreement does not restrict use of the NUTRAWAYS trademark in other jurisdictions.

The Respondent contends that she had a legitimate interest and right in registering and owning the disputed domain name and is using the domain name in good faith.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

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

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the mark NUTRAWAYS by virtue of its continuous use of the trademark and trade name dating back to May 2, 1994, in association with retail store services.

The Panel further finds that the disputed domain name <nutraways.com> is identical to the Complainant’s common law trademark NUTRAWAYS.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In the investigation of possible rights or legitimate interests in the disputed domain name, the Panel must first examine the original circumstances of that disputed domain name registration. The disputed domain name was registered on June 1, 2001, which is the same date on which the Complainant and the Respondent ceased to cohabitate together as husband and wife, according to the Agreement dated April 13, 2002. The Panel notes that the Respondent registered the disputed domain name in her personal name, and not in the name of the Complainant, although she was fully aware as of that date that the business she was operating jointly with her husband had been using the “Nutraways” name for a period of 7 years.

The Respondent claims to be entitled to have registered the disputed domain name <nutraways.com> for the purposes of the family business.

The evidence clearly shows that the trademark NUTRAWAYS was always used in association with the Complainant’s Lion Distributing Limited business, which the Respondent and the Complainant ran jointly throughout their marriage. Accordingly, it follows that any domain name registered by the parties, during their marriage that contained the NUTRAWAYS trademark, would be directly linked to that business. At the time she registered the disputed domain name, the Respondent was clearly aware of the Complainant’s rights in the NUTRAWAYS trademark, and was clearly aware that the disputed domain name <nutraways.com> would be naturally associated with that pre-existing business. In the circumstances, it would have been reasonable to expect that the disputed domain name would have been registered in the name of the business, Lion Distributing Limited.

The Respondent’s claim to hold rights or a legitimate interest in the disputed domain name is undermined by the terms of paragraph 11(f) in the Agreement of April 13, 2002, which states that: “In any future business venture in which the Wife may engage she will not use the business name ‘Nutraways’ or any similar name that would deceive or confusion the public into believing they are dealing with the Company. Otherwise she will be free to engage in any business in whatever location she may choose.” On the plain meaning of this undertaking, the Panel concludes that the Respondent does not hold any right or legitimate interest to use the NUTRAWAYS trademark as a trade name, trademark or domain name in any business venture. The Respondent now claims that she is entitled to use the NUTRAWAYS mark and related domain name for unspecified international purposes. This flies in the face of the unqualified undertaking not to use the mark “in any future business venture”, and strikes the panel as a convenient ex post facto explanation, which damages rather than enhances the Respondent’s credibility.

In all the circumstances, the Panel finds that the Respondent does not have any legitimate rights or interests in the disputed domain name.

The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy.

C. Registered and Used in Bad Faith

In establishing a finding of bad faith, the Panel relies on the same findings of fact set out in the section on legitimate rights and interests. The Respondent knew of the Complainant’s rights in the trademark NUTRAWAYS when she registered the disputed domain name on June 1, 2001 in her personal name, on the day when her marriage effectively came to an end. The fact that the Respondent subsequently gave an explicit undertaking never to use the NUTRAWAYS mark in association with any future business endeavour makes it clear that the continued existence (and renewal) of the disputed domain name must have been for the improper purpose of disrupting the Complainant’s business and preventing the Complainant from registering the domain name in question.

The Complainant has therefore satisfied the requirements under paragraph 4(c) of the Policy.

7. Decision

For 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, <nutraways.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: March 29, 2012

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