WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glanbia Performance Nutrition Limited v. Web Media Pty Ltd
Case No. DAU2021-0021
1. The Parties
The Complainant is Glanbia Performance Nutrition Limited, Ireland, represented by Addisons Lawyers, Australia.
The Respondent is Web Media Pty Ltd, Australia.
2. The Domain Name and Registrar
The disputed domain name <optimumnutrition.com.au> is registered with Drop.com.au Pty Ltd (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.
The Center appointed John Swinson as the sole panelist in this matter on July 19, 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 member of the GPN group of companies, which are manufacturers, distributors and marketers of a range of consumer performance nutrition products marketed under numerous brands including OPTIMUM NUTRITION, ISOPURE, SLIMFAST and AMAZING GRASS. The Complainant operates a website for its OPTIMUM NUTRITION products at the domain name <optimumnutrition.com>.
The Complainant holds the intellectual property for the GPN group. This includes an Australian registered trademark for the words OPTIMUM NUTRITION and a curved stripe with an arrowhead (Australian Trademark Registration No. 1337719, with a priority date of December 21, 2009). The Complainant (or a related entity of the Complainant) owns a trademark registration for OPTIMUM NUTRITION (in word format) in the United States of America (US Trademark Registration No. 6,113,658 registered on July 28, 2020).
The Respondent did not file a Response, so little is known of the Respondent. The Respondent was incorporated on August 20, 2018.
The website at the disputed domain name appears to be a pay-per-click (“PPC”) website.
5. Parties’ Contentions
In summary, the Complainant makes the following submissions:
The Complainant is the registered owner of the OPTMUM NUTRITION trademark in Australia. The Complainant also owns a registered trademark in the United States of America for this trademark in word format.
The disputed domain name is identical to the Complainant’s trademark in word format.
The Respondent has no connection with the Complainant and is not authorised by the Complainant to use the Complainant’s trademark.
The use of the disputed domain name for a PPC website is not legitimate or bona fide.
The Respondent registered the disputed domain name with awareness of the Complainant and its trademark. The Respondent’s registration of the disputed domain name is at least 18 years after the Complainant commenced use of its trademark in Australia.
The Respondent used the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name. The Respondent is also not in compliance with the “close and substantial connection” domain name eligibility rule.
The disputed domain name was both registered in bad faith and used in bad faith.
The Respondent did not file a Response.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a name, 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 or has subsequently been used in bad faith.
The onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
Generally, the test for identity or confusing similarity involves a comparison of the domain name and the trademark to assess whether the trademark is recognisable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)).
The Complainant has proven ownership of registered trademarks for OPTIMUM NUTRITION, including a registration in logo format in Australia and a registration in word format in the United States of America. A trademark registered outside of Australia satisfies the requirements of the Policy.
The disputed domain name is identical to the Complainant’s registered OPTIMUM NUTRITION trademarks, disregarding the “.com.au”.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous auDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
The Complainant states:
- The Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the OPTIMUM NUTRITION trademark or a domain name similar to the OPTIMUM NUTRITION trademark.
- There is no evidence available to the Complainant to suggest that the Respondent is commonly known by the disputed domain name or any similar name.
- There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The website at the disputed domain name is used to serve up PPC links, which include links to competitors of the Complainant.
Use of a domain name to resolve to pages that generate revenue through PPC links is generally not considered a bona fide offering of goods or services under the Policy. See for example J & J Calder Company Pty v. Switch Nutrition Pty Ltd, WIPO Case No. DAU2020-0020.
As such, a prima facie case has been established by the Complainant and has not been rebutted by the Respondent who failed to file a Response.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or subsequently used the disputed domain name in bad faith.
In contrast to the Uniform Domain Name Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. The two elements are disjunctive; it is sufficient to establish only one or the other.
The disputed domain name is identical to the Complainant’s trademark. This is unlikely to be a coincidence. The Complainant has been selling its products in Australia for over 20 years. Moreover, the PPC links on the Respondent’s website refer to the Complainant’s products. It these circumstances, it is reasonable to conclude that the Respondent was aware of the Complainant’s trademark when the Respondent registered the disputed domain name.
The Panel finds that the Respondent has both registered and used the disputed domain name in bad faith. The Panel concludes that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
For all 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 <optimumnutrition.com.au> be transferred to the Complainant.
Date: August 2, 2021