WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NEOVIA, Hi-Nutrients International Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Deniz Hus
Case No. D2019-0600
1. The Parties
The Complainants are NEOVIA, France, and Hi-Nutrients International Ltd., Nigeria, represented by Innis Law Group LLC, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Deniz Hus, United States.
2. The Domain Name and Registrar
The disputed domain name <hi-nutrient.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2019, 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 the Complainant on March 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 26, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on April 29, 2019. 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.
On May 22, 2019, the Panel issued a Procedural Order directing the Complainants to submit further evidence regarding the first element of the Policy. The due date for submission was May 29, 2019. The Respondent was allowed a seven-day term to respond to the evidence that would be submitted by the Complainants, respectively until June 5, 2019. Neither of the Parties have submitted further documents or submissions and the Panel issues this decision on the basis of the available documents and information in the record.
4. Factual Background
According to the facts presented by the Complainants, Hi-Nutrients International Ltd. began since 2004 to use the HI-NUTRIENTS name and trademark in connection with premixes, vitamins and minerals for poultry, dairy cows, and aquaculture. Hi-Nutrients International Ltd. is also registered in the United States as a food processor, importer of food ingredients - including grains, soya beans, and other feed ingredients – as well as an importer of vaccines for livestock.
In 2018, Neovia became the majority shareholder in Hi-Nutrients International Ltd. and, as a result, Hi-Nutrients International Ltd. became part of the Neovia Group. Neovia was founded in 1954 and it became an international multibillion-dollar company with over 8,200 employees and seventy-five production sites serving customers in more than twenty-eight countries around the world. For over sixty years, Neovia has been a major global provider in animal health and animal nutrition solutions, with a global presence across Europe, North America, South America, Asia, and Africa.
The Complainants’ main website associated with their HI-NUTRIENTS products and services, including premixes and animal feed is located at “www.hi-nutrients.com”. The Complainants use the domain name <hi-nutrients.com> for its email address related to the above-mentioned business.
The disputed domain name was registered on February 14, 2019, and the access to the website is blocked at the date of the decision. According to the evidence put forward by the Complainants, the same day when the disputed domain name was registered, the Respondent begun sending emails to impersonate employees of Hi-Nutrients International Ltd. in a payment related correspondence with Neovia. At the date of the Complaint the disputed domain name included sponsored listings related to nutritional supplements.
5. Parties’ Contentions
The Complainants argue that in 2013 Hi-Nutrients International Ltd. obtained a Nigerian trademark registration for the HI-NUTRIENTS trademark. In addition, Hi-International Ltd. and Neovia claim common law rights in the HI-NUTRIENTS trademark as a result of continuous advertising, marketing and promoting since its adoption and first use. Furthermore, the Complainants argue that the HI-NUTRIENTS trademark has become well-known to consumers and has acquired a secondary meaning identifying the Complainants and their goods/services.
The Complainants further contend that the disputed domain name is phonetically and conceptually similar to their HI-NUTRIENTS trademark, the only difference being the omission of the letter “s” from “Nutrients” in the disputed domain name.
With regard to rights or legitimate interests, the Complainants contend that the Respondent is not licensed to use the HI-NUTRIENTS trademark or register the disputed domain name and also that the Respondent is not exercising a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Also, they claim that the Respondent does not use, nor has it made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Furthermore, the Complainants argue that the Respondent is using the disputed domain name in bad faith, being engaged in typosquatting and trying to impersonate employees of Hi-Nutrients International Ltd. by sending fraudulent emails in an attempt to defraud Neovia and Hi-Nutrients International Ltd. out of payment for EUR 185,390 and to sabotage the legitimate business relationships between Neovia and its subsidiaries. More specifically, on February 14, 2019, the Respondent falsely represented itself as an Administrative Officer at Hi-Nutrients International Ltd., in an email chain from Hi-Nutrients International Ltd. to Neovia’s Director of Finance, where the latter requested the status of payment for outstanding invoices in the amount of EUR 185,390. Under the same circumstances, the Respondent posed as the Director of Finance of Hi-Nutrients International Ltd., to falsely notify that Hi-Nutrients International Ltd. could not pay the outstanding invoices because of a compliance directive it received from a company that acquired Neovia on February 1, 2019. In conclusion, the Complainants claim that the Respondent is seeking to have financial gain and also to cause financial harm and damage to Neovia and Hi-Nutrients International Ltd.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainants.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Multiple Complainants
The Complaint was filed by Hi-Nutrients International Ltd. and Neovia, both companies alleging common law trademark rights over the HI-NUTRIENTS trademark. In addition, the Complainants allege that the Respondent is targeting both Complainant companies in an alleged fraud attempt.
According to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
It is well accepted in previous UDRP decisions that a single complaint may be brought under the Policy by multiple complainants where the multiple complainants have a common grievance against the respondent and that one example of a common grievance entitling consolidation of complainants is where the complainants share an interest in trademarks allegedly affected by the respondent’s registration of the disputed domain name. See Jacqueline Riu and Société Riu Aublet et Compagnie v. Olivia Marimelado, WIPO Case No. D2010-0170 and the cases cited there.
In this case, the Complainants allege common law trademark rights and a corporate connection. Under this circumstance, the Panel will accept both Complainants as party to the proceedings.
B. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
In this case, the Complainants have not registered the name “hi-nutrients” as a trademark. However, the Panel notes that the Policy can apply to an unregistered trademark, provided the mark at issue has acquired sufficient distinctiveness through use and promotion to identify the source of the particular service with Complainant. Paragraph 4(a)(i) of the Policy refers to a “trademark or service mark” in which the complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark. See Primedia Specialty Group Inc. v. This Domain is For Sale, Alan Lam, WIPO Case No. D2007-0789.
Given the evidence in the case file, the Panel concludes that the Complainants have limited unregistered trademark rights in the trademark HI-NUTRIENTS. As such, the Complainant Hi-International Ltd. has used the domain name <hi-nutrients.com> since at least 2016 to market and sell its products at the website “www.hi-nutrients.com”. To that extent, the Panel agrees with findings in similar cases that the Complainant has used the domain name <hi-nutrients.com> as a source identifier for its services. See Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital pty, WIPO Case No. D2019-0265. Also, according to the evidence in the file, the Complainants prominently include the name HI-NUTRIENTS on their products, as a product identifier. The Respondent did not provide arguments to the contrary; rather, in the Panel’s view, the Respondent cannot dispute that, given it deliberately targeted the source identifier in an apparent fraud attempt. Such targeting of the Complainants is sufficient to establish limited trademark rights in the HI-NUTRIENTS trademark for the purposes of the Policy. See PEMF Supply, LLC v. Domain Administrator, See PrivacyGuardian.org / Gregory Lewis, American Healthcare Foundation, WIPO Case No. D2019-0235 (“in light of the use of the PEMF SUPPLY mark that was submitted in this proceeding, the targeting of Complainant by Respondent is sufficient to establish Complainant has limited unregistered trademark rights in the PEMF SUPPLY mark for the purposes of the Policy”).
According to section 1.3 of the WIPO Overview 3.0, “[t]he fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”.
The evidence in this case supports the finding that the Respondent has targeted the Complainants, and thus supports a finding of the Panel that the trademark HI-NUTRIENTS has achieved significance as a source identifier.
The disputed domain name differs from the trademark HI-NUTRIENTS only by the removal of the letter “s” from “nutrients”, the visual similarity being obvious. The use of the singular form of a trademark will not avoid a determination that the domain name at issue is confusingly similar. Thus, the removal of the letter “s” is insufficient to distinguish the disputed domain name from the Complainants’ HI-NUTRIENTS trademark, See ELS Educational Services, Inc. v. Lisa Katz, Domain Protection LLC, WIPO Case No. D2016-1863.
This Panel concludes that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In the present case the Complainants have established a prima facie case that they hold rights over the trademark HI-NUTRIENTS and claim that the Respondent has no legitimate reason to acquire the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “hi-nutrients”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970. The undisputed record shows that the disputed domain name was used to impersonate employees of Hi-Nutrients International Ltd. which does not vest the Respondent with a legitimate interest in the disputed domain name.
Accordingly, the Panel gives prevalence to the Complainants’ affirmation that no license or authorization was ever given for the use of the trademark HI-NUTRIENTS in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
D. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainants, their HI-NUTRIENTS trademark is largely used in commerce well before the registration of the disputed domain name. The Panel therefore finds that the Respondent was in all likelihood aware of the Complainants and their rights in the term “hi-nutrients” at the time of registration of the disputed domain name.
In this case the above conclusion is also supported by the similarity of the disputed domain name with the trademark of the Complainants and by the evidence in the case file showing that the disputed domain name was used for a parking page containing sponsored links related to the services and products offered by the Complainant. This Panel finds that by using the disputed domain name in such a way the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, within the meaning of paragraph 4(b)(iv) of the Policy. See IG Group Limited v. Bargin Register, Inc. - Client Services / Telecom Tech Corp / URLBrokeringcom / Domain Sponsor, WIPO Case No. D2013-0179; MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.
Moreover, according to the unrebutted allegations by the Complainants, they were alerted to a security incident involving an email sent from an email address at the disputed domain name in a payment related correspondence between Hi-Nutrients Ltd. and Neovia. The use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (section 3.4 of the WIPO Overview 3.0 and for similar findings bioMérieux v. Joseph Gullett, Digicel, WIPO Case No. D2017-2268, Fondation Bettencourt Schueller v. Dennis Bettencourt, WIPO Case No. D2019-0850).
The following factors were also considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the apparent change of the content of the website to which the disputed domain name resolves after the receipt of the Complaint. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) and V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <hi-nutrient.com> be transferred to the Complainants1 .
Date: June 17, 2019
1 The Complainants will inform the Registrar to which of the two Complainant companies the transfer would be performed. In case the Registrar receives no such information within 10 days of the communication of this decision, the transfer of the disputed domain name will be made to the Complainant Hi-Nutrients International Ltd.