WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Redd Remedies, Inc. v. Domains By Proxy, LLC, DomainsByProxy.com / Sarah Nathanson, Zest Health LLC
Case No. D2021-0930
1. The Parties
Complainant is Redd Remedies, Inc., United States of America (“United States”), represented by Lee & Hayes, United States.
Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States / Sarah Nathanson, Zest Health LLC, United States.
2. The Domain Name and Registrar
The disputed domain names <nerveshielddiscount.com> and <getnerveshield.com> (the “Domain Names”) are 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 26, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 6, 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 Respondent of the Complaint, and the proceedings commenced on April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 29, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 14, 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
Complainant, founded in 2004, develops and sells (both via its website and through retailers) dietary and nutritional supplements, including a product called NERVE SHIELD. Complainant has sold its NERVE SHIELD product since July 2006. Complainant’s website, located at” www.reddremedies.com”, describes NERVE SHIELD as a product that alleviates foot and hand discomfort and pain. Complainant asserts that it holds common law trademark rights in NERVE SHIELD.
The Domain Names were registered on March 31, 2020 (<nerveshielddiscount.com>) and May 18, 2020, (<getnerveshield.com>). The Domain Names resolve to commercial websites, very similar in style and content, which advertise for sale a nutritional supplement product called NERVE SHIELD PLUS. This product appears to address nerve discomfort similar to that addressed by Complainant’s NERVE SHIELD product.
According to the Complaint, there has been actual consumer confusion regarding Complainant’s NERVE SHIELD product and Respondent’s NERVE SHIELD PLUS product.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has common law rights in the trademark NERVE SHIELD through use demonstrated in the record. The Panel also concludes that the Domain Names are confusingly similar identical to Complainant’s mark. The Domain Names incorporate the NERVE SHIELD mark in its entirety and add the generic words “get” or “discount.” These additional words do not overcome the fact that the mark is clearly recognizable within the Domain Names.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not come forward to explain its bona fides, if any, vis-à-vis the Domain Names. On this undisputed record, it appears clear that Respondent has developed a product in competition with Complainant’s product, has branded it with a name nearly identical to Complainant’s apparently senior trademark, and has registered the Domain Names to divert Internet traffic from Complainant’s website to Respondent’s competing website. Such use of the Domain Names is manifestly illegitimate under the Policy.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. In the absence of any Response here, the Panel finds it more likely than not that Respondent registered the Domain Names with Complainant’s NERVE SHIELD brand in mind, and that Respondent’s use of the Domain Names constitutes bad faith use within the meaning of the above-quoted Policy paragraph 4(b)(iv), i.e., diversion of Internet traffic for commercial gain via consumer confusion.
The Panel also concludes on this record that Respondent’s conduct constitutes bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iii), i.e., disrupting the business of a competitor.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <nerveshielddiscount.com> and <getnerveshield.com> be transferred to Complainant.
Robert A. Badgley
Date: May 20, 2021