WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joe Wells Enterprises, Inc. v. Domains By Proxy, LLC / Frank Rogers
Case No. D2017-0765
1. The Parties
Complainant is Joe Wells Enterprises, Inc. of Orange, California, United States of America ("United States"), represented by Stetina Brunda Garred & Brucker, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Frank Rogers of Henderson, Nevada, United States.
2. The Domain Name and Registrar
The disputed domain name <musclemaxxer.com> 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 April 14, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 25, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on April 26, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 28, 2017. The Center sent the Written Notice of the proceeding via DHL courier, but the addressee refused to accept the package. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent of the default on May 22, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 29, 2017. 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 sells sports nutrition products such as dietary and nutritional supplements. On August 19, 2008, Complainant obtained trademark registration in the United States for MAX MUSCLE (registration no. 3,489,594) for use with sports nutrition products, namely dietary and nutritional supplements. Complainant also has United States trademark registrations for MAX MUSCLE (registration no. 3,356,345) for retail store services and MAXXTOR (registration no. 4,713,776) for nutritional and dietary supplements. Complainant first used its MAX MUSCLE mark in commerce in association with sports nutrition products in July 1991. It sells its products online through its website "www.maxmuscle.com".
Respondent registered the disputed domain name <musclemaxxer.com> on February 16, 2017. Attempts to access the corresponding website "www.musclemaxxer.com" yields the message "This page cannot be displayed." Nevertheless, at least through April 4, 2017, copying and pasting the link: "https://offer.musclemaxxer.com/v1/?AFID=893&SID=213157&OPT=12402662" into an Internet browser generated a webpage offering a vitamin/supplement branded as Max Muscle T-1000. That webpage specifically urges United States residents to take advantage of a free trial of Max Muscle T-1000 and also includes the following copyright notice: "2017 © MAX MUSCLE". In addition, at least through April 4, 2017, there existed a Facebook page devoted to Muscle Max T-1000, which listed the email "firstname.lastname@example.org".
On March 17, 2017, and then again on April 3, 2017, Complainant sent a cease-and-desist letter addressed to Respondent to the email "email@example.com" to which it received an unsigned response on April 3, 2017, stating: "I am sorry but we cannot open attachments that could possibly be harmful to out [sic] system records." Complainant sent an additional email with the text of the original cease‑and‑desist letter included in the body of the email. It received no further communications in response.
5. Parties' Contentions
According to Complainant, the disputed domain name is but a transposition of Complainant's MAX MUSCLE trademark and, thus, is identical or confusingly similar to Complainant's mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent cannot show its own use of the disputed domain name prior to the filing date of Complainant's trademark applications and because Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
Also, Complainant contends that the disputed domain name was registered and is being used in bad faith because Respondent had at least constructive notice of Complainant's registration of the MAX MUSCLE and MAXXTOR marks based on Complainant's trademark registrations. Further, according to Complainant, Respondent's continued use of the disputed domain name following Complainant's cease-and-desist letter and emails evidences bad faith. Additionally, Complainant contends that Respondent uses the disputed domain name to promote Max Muscle T-1000, a supplement that evokes Complainant's mark but is neither endorsed by nor sourced from Complainant. Complainant also alleges that Respondent's bad faith registration and use of the disputed domain name is evidenced by Respondent's use of "'fake' websites" to promote its products. For example, Complainant asserts, Respondent used a fake website to display a fake Forbes Magazine article touting the benefits of Max Muscle T-1000 and falsely proclaiming that it had been featured on the program Shark Tank. Overall, according to Complainant, Respondent's use of Complainant's MAX MUSCLE mark on its product labels and in its copyright notice indicates a deliberate effort to mislead customers into believing Respondent's products originate from Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion And Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the MAX MUSCLE and MAXXTOR marks, as evidenced by its trademark registrations. Furthermore, the MAX MUSCLE trademark is recognizable within the disputed <musclemaxxer> domain. Even though the disputed domain name is not identical to Complainant's MAX MUSCLE mark, the similarity is sufficient to confer standing on Complainant to pursue this action. The Panel also finds that the MAXXTOR mark is recognizable within the disputed domain name—the "maxxer" component of the disputed domain name is confusingly similar to Complainant's MAXXTOR mark.
The Panel further finds that the disputed domain name reflects an effort to fuse or merge Complainant's two marks. Respondent cannot avoid a likelihood of confusion finding by joining together two marks in which Complainant has rights. Nintendo of America Inc v. Pokemon, WIPO Case No. D2000-1230 (joinder of Complainant's POKEMON and PIKACHU marks into the domain name <pokemonpikachu.com> likely to cause confusion).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The record shows that Complainant has rights in the MAX MUSCLE and MAXXTOR marks and has not authorized or licensed Respondent's use of these marks. Accordingly, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to respond and rebut the prima facie case.
Accordingly, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant relies heavily on the contention that Respondent should be charged with constructive knowledge of its rights. The Panel rejects this contention.
"Most of the cases in which a panel has found bad faith registration without proof or a reasonable inference of actual knowledge of complainant's mark involved either a distinctive mark . . . or some additional indication of cybersquatting. . . . Especially when the mark is an everyday word or phrase panels tend more often to decline to find registration in bad faith based upon a claim of constructive notice, even when the parties are both American.
The normal rule for establishing registration in bad faith is that the respondent must have actual knowledge of the mark in question, and have actively targeted that mark in order to benefit from the mark's value. These matters may sometimes be proven inferentially, but there must be some factual basis for the Panel to make the necessary inference. The parties' evidence in this proceeding contains nothing from which that inference could be made. Complainant's mark does not appear from the provided record to be famous in the trademark sense, indeed Complainant has provided no evidence of its renown in the United States (where Respondent is based) or anywhere else . . . . What must be demonstrated with competent evidence are facts from which the Panel could make this conclusion under the Policy, and beyond providing copies of its own web site Complainant has furnished no evidence at all of the extent of its marks' renown."
Edward Don & Company v. Black Bayou LLC / Domain Administrator, WIPO Case No. D2008-1373. Complainant must offer some evidence to support an inference that Respondent probably knew of its rights. It did not do so. Complainant offers no evidence of the extent of its sales, advertising, or consumer awareness. Complainant apparently expects the Panel to find that its registrations and unsupported allegations suffice. This is not enough, although the burden is not excessive.
While the Panel rejects Complainant's constructive use argument, it nonetheless finds bad faith registration. Here, evidence that Respondent knew of Complainant's rights may be inferred from the cumulative impact of several facts.
First, the disputed domain name <musclemaxxer> reflects an effort by Respondent to fuse Complainant's two registered marks, MAX MUSCLE and MAXXTOR. It is plausible that a vendor of muscle building supplements might incorporate "muscle max" in a domain name without any awareness of Complainant's trademarks. But the same is not true of the disputed domain name <musclemaxxer.com>. The Panel notes the distinctive double "XX" in Complainant's MAXXTOR mark and finds that the mimicry of this feature supports an inference that Respondent was aware of Complainant's trademarks.
Second, Respondent did not use the disputed domain name to market a product under a mark that corresponded to the disputed domain name, but instead offered a product branded as "Max Muscle T-1000," which is, of course, identical (except for the addition of T-1000) to one of Complainant's marks. It is beyond coincidence that Respondent would register a domain name that is apparently a fusion of Complainant's registered marks and then use that domain name as a forum for marketing a product under Complainant's mark.
Third, the Panel draws adverse inferences from Respondent's refusal to respond to Complainant's communications or the filed Complaint. The assertion that a PDF attachment could not be opened for fear that records would be destroyed is not credible and reeks of evasion, a suspicion confirmed by Respondent's ignoring of the subsequent message that was pasted into the email. Respondent then "refused delivery" of the Center's attempt at service via DHL of the Written Notice of the proceeding, and failed to respond although the Center also fully complied with applicable electronic notice procedures.
A Complainant must prove its case even when, as here, a Respondent defaults. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that under the circumstances here, where Respondent intentionally chose to ignore Complainant's allegations of bad faith registration and use, it is appropriate to draw adverse inferences against Respondent.
With respect to bad faith use, the disputed domain name does not resolve to a working website. However, a deep link corresponding to the subdomain of the disputed domain name resolves to Respondent's website, where a page is displayed that shows an offer to send samples of "Max Muscle T-1000," a testosterone supplement. The Panel finds that this is sufficient evidence to find that Respondent used the disputed domain name intentionally to confuse Internet users for commercial gain. Respondent cannot avoid this finding by shutting down the site quickly when Complainant detects the mischief.
For these reasons, the Complaint is GRANTED and the disputed domain name shall be transferred.
Lawrence K. Nodine
Date: June 14, 2017