WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vitamin World, Inc. v. Healthport 61
Case No. D2014-2117
1. The Parties
Complainant is Vitamin World, Inc. of Ronkonkoma, New York, United States of America (“U.S.”), represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Healthport 61 of Woodside, New York, U.S., represented by Robert S. Broder, PLLC, U.S.
2. The Domain Name and Registrar
The disputed domain name <vitaminworlddiscount.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2014. On December 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amended Complaint on December 15, 2014.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Response was filed with the Center on January 8, 2015.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 16, 2015. 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
Complainant was founded in 1976. It 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 it packages more than 100 billion bottles of supplements each year.
Complainant owns numerous U.S. and Canadian trademark registrations that contain, or are comprised of, VITAMIN WORLD, the earliest of which dates from 1974, including: U.S. Registration Numbers 1,035,168 and 2,036,955, TMA693,468 (“the VITAMIN WORLD Mark” or “the Mark”). They also own registrations for VITAMIN WORLD & Design (U.S. Registration Numbers: 2,238,924, 2,224,374 and TMA553,304), VITAMIN WORLD SAVINGS PASSPORT (U.S. Registration Numbers: 2,316,727 and 2,304,333), VITAMIN WORLD MAKING QUALITY VITAMINS A PART OF YOUR EVERYDAY LIFE (U.S. Registration Number: 2,120,359), and VITAMIN WORLD THE VITAMIN WAREHOUSE (U.S. Registration Number: 2,355,537) (these marks and “the VITAMIN WORLD Mark” are collectively “Complainant’s VITAMIN WORLD Marks”).
Health Port Natural Foods originally obtained the Domain Name in February 2010. Respondent Healthport 61 thereafter registered the Domain Name on March 16, 2013. The Domain Name resolves to a retail website selling vitamins, minerals, herbs, and other nutritional supplement products.
Complainant sent a cease and desist letter to Respondent on April 29, 2014 requesting transfer of the Domain Name. Respondent’s counsel responded to that letter on May 8, 2014 writing: “Further to voice mail of earlier today, I represent vitaminworlddiscount.com. Please call me to discuss your April 29th letter. Thank you.”1
5. Parties’ Contentions
Complainant’s products have been sold in association with its well-known trademark and trade name VITAMIN WORLD for over 40 years, since at least as early as 1974. Complainant currently owns and operates 414 retail stores located throughout the U.S., including Puerto Rico, Guam and the U.S. Virgin Islands. Also, every month, Complainant ships more than 100,000 products ordered through its “www.vitaminworld.com” website to over 15,000 households.
For the fiscal year ending 2013, Complainant generated revenues in excess of USD 233 million for North American retail and web sales. Complainant has expended significant resources (averaging in the millions of dollars annually) to promote and advertise its VITAMIN WORLD Mark. As a result of extensive use and publicity, Complainant’s VITAMIN WORLD Marks enjoy widespread recognition and have generated significant goodwill.
Complainant has also established a significant Internet presence. It operates a thriving global website located at “www.vitaminworld.com”, as well as associated social media sites on Facebook, Twitter and Google plus. Complainant’s parent company, NBTY, Inc., is the owner of the <vitaminworld.com> domain name as well as the <vitaminworld.net> and numerous domain names with “.org”, “.info”, “.biz”, “.us” “.co” and “.ca” top-level domains, several of which direct Internet users to Complainant’s “www.vitaminworld.com” website.
Complainant owns various marks including the VITAMIN WORLD Mark, thus, it has rights in all of those marks. Adding the non-distinctive suffix “discount” is insufficient to distinguish the Domain Name from Complainant’s VITAMIN WORLD Marks. The dominant and immediately striking element in the Domain Name is Complainant’s registered trademark VITAMIN WORLD, the use of which is likely to lead consumers to believe there is a connection with Complainant.
Complainant has prior rights in the VITAMIN WORLD Marks that precede Respondent’s registration and use of the Domain Name. Complainant has not authorized, licensed, or otherwise permitted Respondent to use those Marks or to apply for any domain name incorporating them. Further, Respondent has never been, and is not currently, commonly known under the Domain Name nor is Respondent using the Domain Name in connection with any bona fide offering of products and services. Respondent here is trading on the reputation of the VITAMIN WORLD Mark. The Domain Name resolves to a retail website featuring vitamins, minerals, herbs, and other nutritional supplement products for sale, including branded products of Complainant’s competitors. Use of the Domain Name that intentionally trades on the fame of Complainant cannot constitute a bona fide offering of goods or services. Respondent was or ought to have been aware of Complainant’s rights in the VITAMIN WORLD Mark such that Respondent cannot claim that its use of the Domain Name which is confusingly similar to the Mark constitutes a bona fide use.
The general rule is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights. When acquiring the Domain Name, Respondent knowingly and purposefully chose a domain name that is confusingly similar to Complainant’s VITAMIN WORLD Marks. Complainant has furnished ample evidence that those Marks have been extensively used for over 40 years in the U.S. In view of that use, Respondent’s choice of the Domain Name was not a coincidence. Using it for a retail website featuring vitamins, minerals, herbs, and other nutritional supplement products for sale, including branded products of Complainant’s competitors, and continued use after receiving demand correspondence was, and continues to be, disruptive to Complainant. Under the circumstances, it is reasonable to infer that Respondent not only knew this diversion would be disruptive, but also intended it to be so.
Respondent has used, and continues to use, the Domain Name for a retail website featuring vitamins, minerals, herbs, and other nutritional supplemental products for sale, including branded products of Complainant’s competitors. The Panel may infer that Respondent has derived financial benefit from the diversion of web traffic intended for Complainant. Further, given the reputation of Complainant’s VITAMIN WORLD Marks, Respondent was undoubtedly aware of Complainant when it acquired the Domain Name.
Considering this reputation, Complainant’s use of <vitaminworld.com>, and the fact that the parties operate in the same field, Respondent must have had actual knowledge of Complainant’s VITAMIN WORLD Mark when it acquired the Domain Name. Choosing a domain name which features Complainant’s VITAMIN WORLD Mark as the dominant or principal component of a domain name, with the addition of the generic suffix “discount” was not coincidental. Respondent also had constructive knowledge of the VITAMIN WORLD marks by virtue of their registration in the U.S.
Not responding to Complainant’s cease and desist letter further supports a finding of bad faith.
Generic and descriptive terms can never function as trademarks, and no amount of secondary meaning can convert a generic term into a trademark. “Vitamin” is a generic term for the goods offered at Complainant’s website – indeed, each of Complainant’s registrations required a disclaimer of the word “Vitamin”.
Similarly, the term “World” is merely descriptive, affording little if any protection. Specifically, the term “World” indicates that the related goods/services are varied and/or have a wide-reaching span. Therefore, the word “World” merely describes a feature of the services, namely, the scope of the vitamin sale services – which via the world-wide-web are worldly or global. Adding the word “discount” in the Domain Name denotes value pricing. It is well-settled law that to be distinctive, a mark must be capable of identifying the source of a particular product or service. Only marks that are arbitrary or fanciful in the sense of bearing no logical relationship to the product or service for which they are used, or suggestive in the sense of requiring imagination to be associated with a product or service, are deemed inherently distinctive. VITAMIN WORLD is not arbitrary, fanciful, or suggestive; rather, it quite plainly describes a place where a large scope of vitamins, arguably from and sold around the world, are offered. Accordingly, the generic word “Vitamin” and the descriptive word “World” cannot be appropriated or monopolized in relation to the sale of vitamin and supplements and are therefore not entitled to protection. Moreover, two of the four VITAMIN WORLD registrations contain a design element consisting of a V in a circle. The two VITAMIN WORLD registrations that do not, are for food supplements containing vitamins and retail stores and mail order services featuring nutritional supplements. Respondent neither sells “Vitamin World” or “Vitamin World Discount” branded food supplements, nor operates a brick and mortar retail store, nor solicits business through mail order services under the “www.vitaminworlddiscount.com” website.
Respondent has legitimate interests in the Domain Name because “Vitamin” is generic and “World” is a generic geographic term used to describe businesses that are global, worldwide, or international in nature as is Respondent’s web store. Moreover, Respondent does not sell “Vitamin World Discounted” branded vitamins or nutritional supplements or engage in any brick or mortar retail. Respondent registered the Domain Name on February 3, 2010 and has openly and continuously used it to promote its discount vitamin sales for nearly five years without any actual confusion. Respondent has used the Domain Name in connection with a bona fide offering of goods without intent for commercial gain to misleadingly divert consumers or to tarnish the Mark.
Respondent registered the Domain Name because it serves as a generic description of a large variety of discounted vitamins sold to and across the world via the world-wide-web. Furthermore, Complainant’s contention that its April 2014 cease and desist letter went unanswered is erroneous. On May 8, 2014 Respondent’s counsel responded to that letter by phone and email and never heard back from Complainant or its counsel.
Furthermore, there is no contention that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of pocket costs directly related to the Domain Name. Nor was the Domain Name registered to prevent Complainant from reflecting the Mark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct. Nor was the Domain Name registered in an intentional attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or products or services on Respondent’s website or locations.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent does not deny that Complainant owns trademark registrations for the VITAMIN WORLD Mark, but submits that Complainant does not have rights because the Mark’s component parts “Vitamin” and “World” are not protectable as they are generic or merely descriptive. More specifically, Respondent argues that the word “Vitamin” is a generic term for the goods that Complainant offers on its website2 and points to the disclaimer of that term in Complainant’s U.S. registrations. Similarly, Respondent argues that the word “World” is a merely descriptive term indicating a feature of Complainant’s services namely, the scope of the vitamin sale services – global via the Internet.3
“Many panels have held that a panel lacks authority to ignore valid trademark registrations which have been subject to examination and opposition.” The Cyberbingo Corporation v. 207 Media Inc., WIPO Case No. D2005-0714 (citing Christie v. Porcaro, WIPO Case No. D2001 0653; Hola S.A. v. Idealab, WIPO Case No. D2002-0089.) “Other panels have held that the propriety and wisdom of considering lack of distinctiveness of a registered trademark is better suited to Courts pursuant to cancellation or invalidity proceedings which provide a fuller procedure with respect to documentation, viva voce evidence and cross examination. Id. (citing The Amazing Kreskin v. Gerry McCambridge, WIPO Case No.D2000–1730). The Panel agrees. The proper forum for considering if the VITAMIN WORLD Mark lacks distinctiveness is cancellation or invalidity proceedings. Here, insofar as Complainant has adduced evidence of registrations for its VITAMIN WORLD Mark, they are prima facie evidence of the validity of the Mark. Thus, Complainant has established that it has rights in the VITAMIN WORLD Mark.
Respondent also asserts that Complainant has failed to establish that the Domain Name is confusingly similar to the Mark because: the word “Vitamin” is generic for the manufacture and sale of vitamins and supplements; the word “World” just denotes a large body of goods; and Respondent’s addition of the word “Discount” in the Domain Name denotes value pricing.
“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.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Applying this test here, the Panel finds that that the Domain Name <vitaminworlddiscount.com> is confusingly similar to the registered trademark in which Complainant has rights. The dominant portion of the Mark and of the Domain Name is “vitaminworld”. The Domain Name differs inconsequentially from Complainant’s registered Mark in that the former consists of one word and the Mark consists of two words, and the Domain Name contains the non descriptive gTLD domain name suffix “.com”. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”). Adding the descriptive term “discount” to Complainant’s VITAMIN WORLD Mark does not alleviate the confusion. In fact, it is likely to increase the likelihood of confusion because Complainant, like Respondent, offers discounts on its products.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
It is uncontested that Complainant has not authorized, licensed or otherwise permitted Respondent to use its VITAMIN WORLD Mark for any purpose. It is also uncontested that Respondent has never been, and is not currently, commonly known by the Domain Name.
Respondent claims that because the separate words “Vitamin” and “World” are generic, it has legitimate interests in the Domain Name and that it is not trading off of the reputation of the VITAMIN WORLD Mark. Respondent also argues that it does not sell “Vitamin World Discounted” branded vitamins or nutritional supplements, engage in any brick or mortar retail, or sell products using Complainant’s VITAMIN WORLD SAVINGS PASSPORT mark, which relates to on-line retail sales. Respondent claims that it registered the domain name on February 3, 2010 and that it has openly and continuously used the Domain Name and associated website to discount vitamin sales for nearly five years without any actual confusion. Respondent also claims its use is bona fide and without the intent for commercial gain to misleadingly divert consumers or to tarnish the Mark.
The Panel finds that Respondent’s offering of goods or services under the VITAMIN WORLD Mark is not a bona fide use. Respondent must have had knowledge of Complainant’s prior rights in the Mark and has used the Domain Name in bad faith. See SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group, WIPO Case No. D2008-0792 (citing Schouten Industries B.V. and Schouten Products B.V. v. Canadian Soylife Health Co., Ltd., NAF Case No. 149188). Respondent has not met this test.
Complainant has long-standing rights in the VITAMIN WORLD Mark, which precedes even the earliest registration of the Domain Name in 2010. In this regard, Complainant’s U.S. Registration Number 1,035,168 for VITAMIN WORLD was registered in 1976 (with a first use in commerce in 1974), and its U.S. Registration Number 2,036,955 for VITAMIN WORLD was registered in 1997 (with a first use in commerce in 1974). Complainant owns and operates 414 retail stores throughout the U.S. and in Puerto Rico, Guam and the U.S. Virgin Islands. It operates a global website located at “www.vitaminworld.com”, as well as associated social media sites on Facebook, Twitter and Google plus. Complainant’s parent company also owns <vitaminworld.net> and other various domain names, several of which direct Internet users to Complainant’s “www.vitaminworld.com” website. Respondent never claims that it did not have knowledge of Complainant, its VITAMIN WORLD Mark, or Complainant’s trademark registrations (Complainant clearly indicates on its website that the Mark – VITAMIN WORLD – is a registered mark). Considering these undisputed facts and circumstances, the Panel is not persuaded that Respondent, who is a competitor of Complainant, would not have known of Complainant and its prior rights in the VITAMIN WORLD Mark.
Respondent attempts to circumvent Complainant’s rights in the VITAMIN WORLD Mark by arguing that the separate words comprising the registered mark are generic and thus appropriable. Complainant’s rights, however, are in the combination of those words, which Respondent misappropriated verbatim when it registered the Domain Name. Respondent tacked on to the end of Complainant’s registered Mark the word “discount” which describes an aspect of both Complainant’s and Respondent’s business (i.e., both offer discounts to consumers) thus compounding, not negating, the infringement. Moreover, Respondent has been and continues to use the confusingly similar Domain Name on a website to sell products that compete with Complainant’s products (e.g., vitamins, minerals, supplements and herbs), even selling products from the same manufacturers (e.g., Alvita, American Health). The facts and circumstances surrounding Respondent’s appropriation and use of Complainant’s Mark do not evidence Respondent’s good faith.
Furthermore, based on Respondent’s use of the Domain Name that is confusingly similar to Complainant’s registered VITAMIN WORLD Mark on a website selling competing products, it is clear that Respondent is not making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Mark. On the contrary, Respondent is taking advantage of the similarity between Complainant’s Mark and the Domain Name and is doing so for commercial gain.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Once again Respondent posits that it registered the Domain Name because it serves as a generic description of a large variety of discounted vitamins sold to and across the world via the world-wide-web. And it denies summarily that it registered and used the Domain Name in bad faith with regard to the examples of bad faith provided in the Policy.
Complainant alleges that Respondent registered and is using the Domain Name in bad faith based on the following examples provided in the Policy:
“4(b)(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4(b)(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website or other on-line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
On the record here, Complainant has furnished ample evidence that its VITAMIN WOLRD Mark has been used extensively for over 40 years (on line and in mortar and brick stores) in the U.S. (and some of its territories), and certainly many years before the Domain Name was registered. Given that use, as well as Complainant’s use of the domain name <vitaminworld.com> for its website, and the fact that the parties operate in the same field, the choice of a domain name which features Complainant’s VITAMIN WORLD mark as the dominant or principal component of a domain name, with the addition of the descriptive suffix “discount” could not have resulted from a mere coincidence.
Although Respondent has denied intending to disrupt Complainant’s business, insofar as Respondent chose to use a confusingly similar domain name for a retail website selling competing products, it is reasonable to infer that Respondent is using the Domain Name primarily for the purpose of disrupting the business of a competitor. For these same reasons, the Panel concludes that by using the Domain Name, Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the products on the website. See Busy Body, Inc. v. Fitness Outlet, Inc., WIPO Case No. D2000-0127 (finding bad faith where respondent attempted to attract customers to its website and created confusion by offering similar products for sale as complainant).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <vitaminworlddiscount.com> be transferred to Complainant.
Harrie R. Samaras
Date: January 21, 2015
1 Complainant argues that Respondent did not respond to its cease and desist letter and that is evidence of bad faith. In fact, Respondent’s counsel responded, albeit briefly, to Complainant’s letter. There is no other evidence in the record that either party followed up before this proceeding was filed.
2 It bears noting that Complainant sells a variety of products under the VITAMIN WORLD Mark other than vitamins including minerals, supplements, herbs, sports nutrition, diet and lifestyle essentials, and health and beauty aids.
3 It bears noting that although Complainant has a worldwide business; it advertises that its business is based on offering the best nutrition the world has to offer. On its website, Complainant states: “Vitamin World is based in the U.S., but we comb the earth for the most unique ingredients, which is a process we’re very picky about. Once we’re satisfied with the source of the ingredients, we meticulously cultivate them. Then, we bring these treasures to our manufacturing facilities, to create and produce our premium supplements. . . . From there, we package and distribute the products we’re so proud of right to you. So when we say ‘nutrition from the source’, you can rest assured that we really, really mean it.”