WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grenade (UK) Ltd. v. Proxy Protection LLC / Danupon Cilli
Case No. D2019-0919
1. The Parties
The Complainant is Grenade (UK) Ltd., United Kingdom, represented by Barker Brettell LLP, United Kingdom.
The Respondent is Proxy Protection LLC, United States of America / Danupon Cilli, Thailand.
2. The Domain Name and Registrar
The disputed domain name <musclegrenade.com> is registered with DreamHost, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 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 April 30, 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 amended Complaint on May 3, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on May 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on June 11, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 20, 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.
4. Factual Background
The Complainant is based in the United Kingdom and manufactures, distributes and sells nutritional and dietary supplements such as powders, drink mixes, tablets, capsules, beverages, as well as food products, sports performance drinks, energy drinks, weight management products, weight gain products, muscle supplements, and performance enhancement products.
The Complainant is the owner of the following trademark registrations for GRENADE (Annex 3 to the Amended Complaint):
- European Union Reg. No. 005182019, filed on July 6, 2006, and registered on April 11, 2007, in classes 05 and 29;
- European Union Reg. No. 012722096, filed on March 24, 2014, and registered on August 20, 2014, in classes 09, 28 and 41;
- European Union Reg. No. 013483433, filed on November 21, 2014, and registered on April 1, 2015, in class 32; and
- United Kingdom Reg. No. 00003137637, filed on November 24, 2015, and registered on March 11, 2016, in class 03.
The disputed domain name <musclegrenade.com> was registered on January 3, 2014, and currently resolves to an active webpage which advertises steroid products for muscle building.
5. Parties’ Contentions
The Complainant, in a brief submission, asserts to hold registered rights over the GRENADE trademark, dating as early as 2006 and which would have become highly distinctive and representative of the Complainant in respect of nutritional performance enhancing products.
The disputed domain name <musclegrenade.com>, according to the Complainant, is confusingly similar to its trademark given that the “muscle” suffix would be purely descriptive given the Complainant’s products for muscle gain, being its trademark clearly recognizable in the disputed domain name.
Also according to the Complainant, the disputed domain name is being used to advertise steroid products for muscle building without prescription, which is illegal and could be detrimental to the Complainant’s trademark and image.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant briefly argues that (i) only the Complainant and its authorized representatives use and are allowed to use GRENADE in respect of nutritional and dietary supplements; (ii) the Respondent’s use of the disputed domain name to advertise steroid products without prescription is illegal and could tarnish the Complainant’s trademark and image.
Furthermore, the Complainant asserts that the Respondent chose the disputed domain name so as to create a likelihood of confusion with the Complainant’s trademark and ultimately to confuse the Complainant’s clientele into believing that there would be some sort of affiliation between the disputed domain name and the Complainant, solely for the Respondent’s commercial gain.
As to the use of the disputed domain name in bad faith, considering that the Respondent is advertising steroids for sale without prescription, which is illegal, such use cannot be considered a bona fide offering of goods or services and is detrimental to the Complainant’s trademark and image.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the GRENADE trademark.
The Complainant’s mark is entirely reproduced in the disputed domain name and the addition of the generic term “muscle”, in this Panel’s point of view, does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable in the disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
i. before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second element of the Policy.
In that sense, the Complainant indicates that is has not allowed the Respondent to use GRENADE in respect of nutritional and dietary supplements. There is also no evidence that the Respondent has been commonly known by the disputed domain name.
According to the evidence submitted by the Complainant, the website under the disputed domain name advertises steroids for sale without prescription which, in addition to possibly being illegal, can be considered similar products to those offered by the Complainant for muscle growth and performance enhancement, and which could tarnish the Complainant’s trademark as well as (incorrectly) suggest that there could be an affiliation between the Respondent and the Complainant.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to paragraph 4(b)(iv) of the Policy in view of the reproduction of the GRENADE trademark with the suffix “muscle” in the disputed domain name, as well as the use of the disputed domain name to advertise steroids for sale without prescription. Such conduct by the Respondent, in addition to possibly being illegal, can be considered an intentional attempt to attract, for commercial gain, Internet users to the disputed domain name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
Other factors that corroborate a finding of bad faith are that the disputed domain name was registered on January 3, 2014, which is long after the Complainant filed for its first trademark in 2006, and the absence of any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
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 <musclegrenade.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 3, 2019