WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
J & J Calder Company Pty Ltd v. Michael Trinchitella, KetoGenics, Inc.
Case No. D2021-0899
1. The Parties
The Complainant is J & J Calder Company Pty Ltd, Australia, represented by IP Wealth Pty Ltd, Australia.
The Respondent is Michael Trinchitella, KetoGenics, Inc., United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <ketolean.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 March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2021, 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 26, 2021, 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 March 29, 2021.
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 March 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. On April 13, 2021, the Respondent requested an extension to the Response filing period. On April 13, 2021, pursuant to paragraph 5(b) of the Rules, the Center informed the Parties that the Response due date was extended until April 22, 2021. The Response was filed with the Center on April 22, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 4, 2021. 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 a company in Australia registered on May 20, 2016. The owners of the Complainant company also registered the Australian company Keto Lean Pty. Ltd. on April 15, 2020. The Complainant initially commenced trading under the business name “Lean for Life” in 2016. The Complainant provides nutritional and supplement related goods and services to the local and international marketplace, and claims an established reputation focused on helping middle-aged women to lose weight and improve their health by way of their educational programs, and health and fitness supplements.
The Complainant claims to have used the term “keto” in its business, referring to the ketogenic diet or ketosis, for the last four years i.e., since about 2017. The Complainant claims to have coined the trademark KETO LEAN in mid-2018 as being a combination of the word “keto” with the word “lean” which arose from its “Lean for Life” business name and related program, originally dating back to 2004. Since it was coined, the Complainant claims to have accrued (but does not provide evidence of) a well-established reputation and substantial goodwill in the KETO LEAN mark.
The Complainant is the owner of Australian Registered Trademark no. 1967326 for the word mark KETO LEAN in international classes 5 and 41 (broadly speaking, food supplements and health/nutrition education) filed on November 7, 2018, advertised on May 16, 2019, and entered on the register on July 23, 2019. The effective date of said mark is its original date of filing. The Complainant has also made and is making applications for registered trademarks in various other jurisdictions which had not yet proceeded to grant at the date of filing of the Complaint.
The Respondent owns and operates a company named Ketogenics, Inc., registered with the New York State Department of State Division of Corporations on September 19, 2016. In about August 2016, after making an initial attempt to use a trademark registration site, the Respondent began discussions with an attorney about incorporating said company and applying for a registered trademark for both KETO LEAN and KETOLEAN. In an email to its attorney dated August 11, 2016, the Respondent stated that it had an online identity in the “the ketogenic and fitness world” and was associated with various supplement businesses. The Respondent added “I have a vision of a supplement line either named Keto Lean or maybe Keto Lean will be one of the products under the main brand name (to which I have not come up with yet). Keto Lean could be the brand or it could be the name of a certain supplement.... lots id [sic] ideas in my head.”
The disputed domain name was created on July 29, 2016. The Respondent acquired the disputed domain name from a domain name aftermarket service on or about August 9, 2016. Entries from the Internet Archive produced by the Complainant show that the website associated with the disputed domain name (note that the Complainant appears to have searched against the domain name itself without any subdomain such as “www.”) pointed to the various locations at different dates, namely:
October 2, 2016 – http 301 redirect to “www.instagram.com/keto_diesel” (the Respondent’s social media page)
January 17, 2018 – http 301 redirect to “www.ketoshop.com” (the Respondent’s online supplements shop)
July 17, 2019 – http 301 redirect to “www.ketoshop.com”
The Panel notes for completeness that http 301 redirects indicate a permanent redirect rather than a temporary redirect.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
Identical or confusingly similar
The disputed domain name is confusingly similar to the Complainant’s KETO LEAN trademark, as the key identifiable matter in the disputed domain name is “ketolean” which is substantially identical to the trademark. The “.com” merely indicates the Top-Level-Domain. The only visual difference between “ketolean” in the disputed domain name and the trademark is that the trademark is spelt as two words separated with a space; when spoken, “ketolean” and the trademark are identical. The Complainant’s mark is the distinctive element of the disputed domain name and the average consumer assessing the disputed domain name is likely to be confused into thinking that the disputed domain name refers to, or is connected or associated with, the Complainant.
Rights or legitimate interests
The Complainant has continuously been trading commercially under or in relation to, or has branded its goods and services under the trademark since the date of its inception. The reputation accrued in the trademark is distinctively associated with the Complainant and its goods and services, and not another trader. The Complainant enjoys the benefit of exclusive proprietary rights to the trademark in, at a minimum, the Australian and New Zealand markets. The Complainant has used and promoted the trademark since inception, including by way of various marketing, promotional, and advertising platforms, such as websites and social media.
The Respondent trades under the KETOGENICS brand and is associated with a company named Ketogenics, Inc. The Respondent does not trade as “Keto Lean”, nor does it own any corresponding registered trademarks. The Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to register or use KETO LEAN in any jurisdiction in any capacity. The Respondent is not commonly known under the name “Keto Lean”. The Respondent has no bona fide offering of goods or services under the name “Keto Lean”, and is not engaging in legitimate or fair commercial use of the disputed domain name. The disputed domain name has always redirected to an alternative domain, and in recent years, this redirection has been to the domain <ketoshop.com>. It has never resolved to an active website.
The domain <ketoshop.com> hosts a website branded as “KetoGenics” which is operated by the Respondent and highlights that the Respondent does not legitimately use “Keto Lean”. The Respondent has never used “Keto Lean” in connection with any goods or services, or on social media.
The Complainant’s agent wrote to the Respondent highlighting the Complainant’s concerns regarding the disputed domain name and offering to reimburse the Respondent’s relative out of pocket expenses. The Respondent did not reply to such letter. The Complainant contacted the Respondent thereafter on social media to confirm receipt of the letter. The Complainant’s said message was “read” by the Respondent but there was no further contact. The Complainant’s agents attempted telephone contact without success. Since receipt of said letter, the Respondent has begun to use “Keto Lean” illegitimately in association with a nutritional supplement product purportedly available for purchase through the Respondent’s webpage. The Complainant has made a test-purchase of such product but when received it was not branded “Keto Lean”. The Respondent has acted maliciously and surreptitiously with regard to such product.
The sale of the Respondent’s product in locations where the Complainant holds a registered trademark would likely constitute an infringement of such trademark.
Registered and used in bad faith
The Respondent has only ever used the disputed domain name since 2021 to redirect Internet traffic to the Respondent’s website located at “www.ketoshop.com”. A historic screenshot dated April 3, 2016, shows the disputed domain name was registered and controlled by a massage therapy business trading as “Keto Lean”. The disputed domain name has been passively held since the Respondent registered it and it has not resolved to an active website. Such passive holding has been held to be evidence of use in bad faith under the Policy.
The Respondent does not legitimately use “Keto Lean” in connection with goods or services and only commenced active use after receiving a communication from the Complainant. Bad faith may be inferred from the Respondent’s non-use of the disputed domain name and the absence of legitimate use. The Respondent’s failure to respond to the Complainant’s communication is an admission of use in bad faith. Paragraph 4(a)(iii) of the Policy is satisfied if, at any time after registration, the domain is used in bad faith. Any use of the disputed domain name in bad faith at any time after registration qualifies and any subsequent permissible use should not override the Respondent’s bad faith act.
An intent to sell the disputed domain name may be inferred from the Respondent not making any legitimate use of the disputed domain name, attempting to maintain the right to use the disputed domain name by commencing use of “Keto Lean” after receipt of the Complainant’s communication without responding to same, and having no business related to “Keto Lean”, its business name being “Ketogenics”.
The Complainant’s inability to expand internationally by way of the disputed domain name significantly affects the operation of its business. Use of the disputed domain name will enable the Complainant to avoid registration of a separate domain name for each country in which it operates and avoid its search engine rankings being downgraded due to duplication of content. The Complainant is at risk of confusion from its customers inadvertently typing the “.com” suffix to locate the Complainant’s business.
In summary, the Respondent contends as follows:
The Respondent used the name “Keto Lean” before receiving any notice of the dispute from the Complainant. The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant, or to a competitor of the Complainant. There is evidence of the Respondent’s use of, and demonstrable preparations to use, the disputed domain name and a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before the Respondent received any notice of the dispute. The disputed domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and the Respondent has not engaged in a pattern of such conduct.
The Complainant and the Respondent’s business are not competitors and the disputed domain name was not registered to disrupt the Complainant’s business. The disputed domain name was not registered to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. The Respondent is making a legitimate 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 purchased the disputed domain name in good faith for a significant amount of money on August 9, 2016, with the intention to create a thermogenic (fat burner) product called “Keto Lean” and to apply for the corresponding trademark. From that date until the Complaint, the Complainant did not contact the Respondent to express any interest. The Respondent will barter domains with other brands or sell them if it has no use for them but usually has a use for a product for each domain name it holds. The Respondent began but abandoned a trademark application and consulted an attorney by telephone and email (email produced dated August 11, 2016). There were no registered trademarks for “Keto Lean” at this point, other than an abandoned application, and the Respondent mentioned this in its email to said attorney. Due to limited funds, the Complainant did not pursue a registered mark for the brand “Keto Lean” and its attorney filed for the KETOGENICS trademark on October 3, 2016, ultimately registered on March 14, 2017.
Despite not pursuing a registered trademark, the Respondent still worked on formulating a “Keto Lean” branded product, which took a few years. The Respondent sold “private label” products until 2019, which have a low minimum order quantity and are easy to produce. Its “Keto Lean” product was to be a custom formula with a more costly minimum order quantity. Prior to July 2020, there were third party products branded “Keto Lean” in the United States market and the Respondent did not wish to place much emphasis on promoting its “Keto Lean” brand.
The Respondent began to develop its custom formulas after 2019 and produced its “Keto Lean” product from July 2020. This is demonstrated by the fact that the Respondent holds inventory with a corresponding July 2022 expiration date and its products have a two-year life. Said product was sold in retail locations such as supplement shops but not online (evidence is provided of corresponding invoices and cancelled checks for the Respondent’s supply to retailers).
In September 2020, the Respondent began to offer its “Keto Lean” product online and ordered a new production run. Production was delayed until February 2021 due to the coronavirus pandemic, pending which the Respondent continued to sell its identical formula product branded “BetadrineECA”. The Respondent wished to take advantage of the popularity of “keto” products in the Black Friday and New Year periods so continued to offer the “Keto Lean” product online in the hope that its production run would become available. The “BetadrineECA” product was supplied to the Complainant’s agent when it made a test purchase in March 2021.
The Respondent missed the Complainant’s communication in December 2020 due to the fact that it receives a considerable amount of spam email and may have inadvertently deleted same. Had it noticed such communication, it would have replied to the Complainant explaining that it sold a “Keto Lean” branded product and had no intention of giving up the disputed domain name.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The first element under the Policy is essentially a standing requirement in which the Panel assesses whether the Complainant has UDRP-relevant rights in a trademark and, if so, whether the disputed domain name is identical or confusingly similar to such mark.
In the present case, the Panel finds that the Complainant has rights in its KETO LEAN registered trademark as described in the factual background section above. The various pending trademark applications also cited by the Complainant do not by themselves provide standing under the Policy and are not considered here.
The fact that the Respondent’s acquisition of the disputed domain name pre-dates the date of registration of the Complainant’s trademark (and, for that matter, the date of filing of same) are not relevant to the first element test. However, this may be relevant to the second and third element tests (see section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The second level of the disputed domain name is alphanumerically identical to the Complainant’s mark with the exception of the additional white space in the latter, which is not relevant to the comparison as white space is not technically permissible in a domain name. The generic Top-Level Domain (“gTLD”), in this case “.com”, is typically disregarded during the comparison process as it is only required for technical reasons.
In these circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This element of the Policy requires the Complainant to prove on the balance of probabilities each of two conjunctive components, namely registration in bad faith and use in bad faith. If the Panel finds that one or both of these components are not proved, the Complaint will fail. In respect of registration in bad faith, the Complainant typically must show that the Respondent had the Complainant’s rights in mind when it registered the disputed domain name and that it proceeded with bad faith intent to target such rights. It follows that if the disputed domain name was created (or in this case acquired) by the Respondent before the Complainant’s trademark rights had accrued, absent any nascent or as yet unregistered rights of the Complainant, the Respondent cannot have registered the disputed domain name in bad faith (see section 3.8 of the WIPO Overview 3.0).
In the present case, while it had been using the moniker “Lean for Life” much earlier, the Complainant submits that it coined the term “Keto Lean” in mid-2018 and went on to register the trademark described in the factual background section above and to market its products accordingly. The Respondent shows, with appropriate evidence, that it acquired the disputed domain name in August 2016. At that time, the Complainant had no “Keto Lean” product or corresponding trademark and did not even come up with its proposed brand name until about two years later. The Respondent demonstrates, by way of a contemporaneous email to its legal adviser, the circumstances in which it came up with the term and acquired the disputed domain name, and its discussion with such adviser of the Respondent’s vision as to how the “Keto Lean” brand would be deployed by its business. In the circumstances, there can be no suggestion that the Respondent in this case acquired the disputed domain name with any intent to target the Complainant’s then non-existent rights.
It should be noted for completeness that there is an exception to the general rule regarding post-dating trademarks where it can be shown that a respondent has registered a domain name to capitalize unfairly on the complainant’s nascent (typically as yet unregistered) trademark rights (see section 3.8.2 of the WIPO Overview 3.0). Such scenarios can include, for example, registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application. No such scenarios apply in the present case.
The evidence on the present record shows to the Panel’s satisfaction that the Respondent acquired the disputed domain name in furtherance of a plan to formulate and market a product branded as “Keto Lean” via its registered company, Ketogenics, Inc., entirely independently of the Complainant’s later plan to brand its own goods under an identical name. There can be no bad faith intent imputed to the Respondent’s actions with regard to the Complainant’s then non-existent rights. The fact that the disputed domain name might have been passively held thereafter, or more accurately, that it was used to forward both to the Respondent’s social media pages and to its online “ketoshop” presence does not support a conclusion of bad faith registration. The fact that the Respondent might not necessarily have marketed its “Keto Lean” branded product online immediately, or that it failed to reply to the Complainant’s subsequent entreaties, do not provide any indication of registration or use in bad faith in the particular circumstances of, and based on the evidence presented in this case. Likewise, neither the fact that the Respondent supplied its “BetadrineECA” product in response to the Complainant’s test purchase of the Respondent’s “Keto Lean” product nor that it began to market its “Keto Lean” product online after the date on which the Complainant attempted to make contact with it alter the bad faith registration analysis.
The Complainant’s assertion that the Respondent’s supply of a “Keto Lean” branded product in certain territories constitutes infringement of the Complainant’s registered trademark does not automatically or necessarily entitle it to a remedy under the Policy. The Complainant would need to pursue that matter in the appropriate forum, if so advised. Although there may be some conceptual overlap, trademark infringement and abusive registration of domain names within the meaning of paragraph 4(a) of the Policy are not always the same thing. As this Panel has previously noted (see Bitrise Limited v. Dalton Kline, Bitrise Trade Ltd, WIPO Case No. D2020-0835) the fact that a particular set of circumstances may constitute trademark infringement in any particular jurisdiction has of itself no bearing as such on whether a domain name is automatically an abusive registration (see also Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule De Souza, WIPO Case No. D2003-0372, and 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
In all of these circumstances, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered and has been used in bad faith and the Complaint therefore fails.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules requires the Panel to give consideration to whether the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (“RDNH”), or was brought primarily to harass the domain name holder. Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The present case proceeds upon a failure on the Complainant’s part to appreciate the requirements of the Policy to prove registration and use in bad faith. All of the facts by which the Complainant should have known that it could not prove registration in bad faith, in particular, are present in the Complaint and its annexes. The Complainant knew and expressly averred that it did not coin the term “Keto Lean” until mid-2018. It also knew, due to the historic screenshots which it produced with the Complaint, that the Respondent had already acquired and was using the disputed domain name to forward traffic to its social media pages by October 2016 and to its online shop by early 2018. It knew that both of these uses occurred before the Complainant coined the term “keto lean” for itself and subsequently filed its KETO LEAN registered mark.
The Complaint also shows that the Complainant had researched both the Respondent’s social media presence and its online shop. It knew that these were operated by the Respondent. It therefore knew that the Respondent could not have been targeting its subsequently-acquired trademark rights by forwarding the disputed domain name to these locations in 2016 and early 2018 respectively, before the Complainant had coined the term “keto lean”, far less filed for its KETO LEAN registered trademark. It knew that the Respondent was in the food supplements business. It knew that the Respondent operated a company named Ketogenics, Inc and that this company was incorporated in 2016. It therefore knew that the Respondent had a reasonable and logical basis for using the “keto” prefix in connection with its business or products and must have come by the term “keto lean” independently of the Complainant’s activities.
Taking all of the facts and circumstances together, the Complainant and/or those representing it knew at the point that it filed the Complaint that the Respondent’s coupling of the word “keto” with the word “lean” in the disputed domain name could have had nothing to do with any intent to abuse the Complainant’s rights. This Complaint could never have succeeded and the Complainant and/or those representing it knew or ought to have known this at the time of filing. In particular, the Complainant’s failure to appreciate the established Policy precedent relating to post-dating trademark rights as fully articulated in section 3.8 of the WIPO Overview 3.0, and in multiple cases under the Policy, is all the more concerning given that it is represented by professional advisers.
In all of these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: May 18, 2021