WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New Whey Nutrition, LLC v. Duffy Holdings LLC

Case No. D2010-1710

1. The Parties

The Complainant is New Whey Nutrition, LLC, f/k/a Topspin-IDS Acquisition LLC, d/b/a IDS Sports and/or Innovative Delivery Systems of Oviedo, Florida, United States of America represented by Lowenstein Sandler PC, United States of America.

The Respondent is Duffy Holdings LLC of Whitehall, Pennsylvania, United States of America represented by Gibbons PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <new--whey.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 11, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On October 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2010. The Response was filed with the Center on November 3, 2010. The Complainant replied with a Supplemental Filing dated November 5, 2010.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 10, 2010. 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 Delaware limited liability company with its principal place of business in Florida. The Complainant manufactures and sells “nutritionally fortified beverage products” containing whey protein. The Complainant sells its products throughout the United States and in several other countries through vitamin and food supplement retail stores and through the Complainant’s website at “www.newwhey.com”.

The IDS Sports “New Whey Liquid Protein” product was introduced in 2005, and the Complainant’s predecessor, Supplement Synergy, Inc. d/b/a IDS Sports (“IDS”), obtained United States Trademark Registration No. 3448249 for NEW-WHEY as a standard-character mark on June 17, 2008. In September 2008, the Complainant acquired substantially all the assets of this company, and the United States Patent and Trademark Office (USPTO) trademark database reflects the assignment of the trademark to Topspin-IDS Acquisition, LLC. As indicated in the Complaint, and as further documented in the Complainant’s Supplemental Filing, the Complainant was formerly known as Topspin-IDS Acquisition, LLC. On September 17, 2010, an Amended and Restated Certificate of Formation was filed with the Delaware Secretary of State, changing the name of the company to its current form, New Whey Nutrition, LLC.

The Complainant’s website features various forms and packages of “New Whey Liquid Protein” (without a hyphen between the words “new” and “whey”). Photographs of the packaged products also show that the labeling reads “New Whey,” without the hyphen that appears in the registered trademark. By contrast, on the website of GNC, a large retail chain that distributes the Complainant’s products, the products are listed as “IDS Sports New-Whey.” The Complainant’s website does not display trademark symbols or include a notice concerning trademark rights.

According to the Respondent, the Domain Name was registered on May 17, 2010 in the name of Duffy Holdings LLC. It is undisputed that Mr. Jim Duffy, who is listed as the administrative contact for the Domain Name, is both the principal of the Respondent Duffy Holdings LLC and the chief operating officer of Protica, Inc. (“Protica”), one of the Complainant’s competitors in the market for whey-protein products. The Response characterizes the Respondent and Protica as “affiliates.”

The Domain Name resolves to a website headed “new whey based protein supplements” and features PROFECT and other Protica protein drink products, with links to Protica’s website. Protica’s marks are displayed on the website associated with the Domain Name, and the copyright notice on the website is in the name of “Protica Research (Protica, Inc.).” A user clicking on the “Buy Now” button under any of the product photographs and descriptions is redirected to the “shopping cart” page on the Protica website at “www.protica.com.”

According to the Response, Mr. Duffy is “the inventor of whey based liquid protein shots.” The Respondent states that the Complainant formerly sold whey protein beverages that were formulated and manufactured by “Respondent or its affiliate, Protica, Inc.” It is undisputed that the Complainant’s predecessor IDS had a private label manufacturing and supply agreement with Protica (dating from December 2005), which was assigned to the Complainant when it acquired IDS. The Complainant and Protica submitted a dispute over the termination of that agreement to a mediator in March 2010. The dispute has not been resolved, but neither party has resorted to litigation to date.

The Respondent registered the Domain Name shortly after the inconclusive mediation effort. The Complainant’s counsel sent a cease-and-desist letter, following which the Respondent agreed to make “minor revisions” on the website associated with the Domain Name, to emphasize the generic nature of its use of the words “new whey.” The header on the home page of the website was changed from “new whey” to “new whey based protein supplements.” The Respondent declined to cease using the Domain Name itself, however, and this proceeding followed.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights to NEW-WHEY as a registered mark and to both NEW-WHEY and NEW WHEY as unregistered marks subject to common law protection. The Complainant contends that the Domain Name is identical or confusingly similar to these marks.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name and seeks, in bad faith, to create “initial interest confusion” and mislead Internet users in order to divert them to a competitor’s website for commercial gain.

B. Respondent

The Respondent contests the Complainant’s trademark claims and argues that the Domain Name was chosen and used legitimately and in good faith for its generic value in referring to new whey-based protein beverages sold by a company affiliated with the Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules:

“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.”

A. Supplemental Filing

The Rules enjoin panels to conduct Policy proceedings “with due expedition” (paragraph 10) and make no provision for supplemental filings other than at the request of the panel (paragraph 12). A party’s submission of additional facts or arguments may be viewed as an invitation to the panel to exercise its discretion to consider material beyond that which was included in the complaint and response.

The panel in The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, made these general observations about such requests:

“The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. (citations omitted) The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.”

The Complainant in this proceeding submitted a “Supplemental Filing” after receiving the Response, replying to two arguments raised by the Respondent: (a) that the Complainant has no standing to assert rights in the registered trademarks because it is not listed as the owner of record, and (b) that the Complainant has abandoned any rights to the NEW-WHEY trademark. The Complainant’s submission is a limited factual and legal reply to these unanticipated arguments, presented promptly and succinctly. Accordingly, the Panel accepts the Supplemental Filing as a part of the record on which the decision is based.

B. Identical or Confusingly Similar

The Respondent argues that the Complainant is not the owner of record of the registered trademark NEW-WHEY. The Complainant has adduced sufficient evidence to demonstrate that it acquired the mark by assignment when it acquired the registrant’s assets in September 2008, and that the Complainant then changed its name to the current form. This establishes the Complainant’s right or interest in the NEW-WHEY mark. (It is therefore unnecessary to examine the Complainant’s asserted, but largely undocumented, common law rights in NEW-WHEY and NEW WHEY.)

The Respondent also argues that the owner of the registered mark has abandoned it. The Respondent observes that the Complainant’s product packaging and advertising uses the name “New Whey” without the hyphen found in the trademark registration and without any indication of asserted registered or common law trademark rights. The Respondent argues that “new whey” (without a hyphen) is a merely descriptive term that applies equally to the Respondent’s and the Complainant’s products.

The Complainant’s website and packaging do not clearly display or identify the hyphenated NEW-WHEY mark as registered, but the Respondent has not established that the mark has been abandoned. Under United States trademark law, there must be “clear and convincing” evidence of an intent to abandon a registered mark, which may be inferred from “prolonged” non-use. See McCarthy on Trademarks sections 17:11, 17:12 (2001) and cases cited therein. The trademark is still listed as “live” on the USPTO database; the Complainant has only owned the mark for two years, and there is no evidence in the record indicating an affirmative intent to abandon the mark. That is an issue that could be addressed more fully, of course, in an administrative or judicial trademark proceeding. In the context of this much more limited and expedited UDRP proceeding, however, the Panel cannot conclude on the available record that the Complainant has abandoned the registered NEW-WHEY trademark.

The distinctive portion of the Domain Name (disregarding the “.com” address suffix for Policy purposes) is comprised of the English words “new” and “whey” separated by two en dashes (hyphens). This differs slightly from the Complainant’s registered mark, which uses a single hyphen between those words.

UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of the Policy, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 and Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the Domain Name and the mark in appearance, sound, meaning, and overall impression.

In cases involving slight differences in punctuation or spelling, UDRP panels regularly find sufficient similarity to proceed to a consideration of the other Policy elements. See, e.g., Teva Pharmaceutical USA, Inc. v. Mode L, WIPO Case No. D2007-0369 (finding the domain name <adipexp.com> confusingly similar to

the trademark ADIPEX-P because they are “pronounced in the same way despite the removal of the dash”). As stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743:

“Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark.”

The Respondent argues here that the two dashes help distance the words and eliminate confusion with the NEW-WHEY mark. However, the use of two dashes instead of a single hyphen does not make a change in the sound or overall impression, and the visual difference is barely perceptible. Hence, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered NEW-WHEY mark for purposes of the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

It is undisputed that the Complainant has not authorized the Respondent to make use of the registered NEW-WHEY mark in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name, including this one:

“(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 . . .”

The Respondent is “affiliated” in some undisclosed manner with Protica, and the website associated with the Domain Name advertises Protica’s whey protein products and links to Protica’s e-commerce website. None of these Protica products are branded with names corresponding to the Domain Name. However, the Respondent contends that it has a legitimate interest in using the generic term “new whey” in connection with Protica’s products, referring to “new” whey-based products introduced by the Respondent.

Whether the Domain Name was registered and used for this generic value – rather than for its trademark value in attracting Internet users familiar with the Complainant’s mark – is the key question in evaluating both the Respondent’s claimed legitimate interest and the Complainant’s arguments on bad faith. As such, it will be convenient to address that issue in the following section.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), provides a non-exclusive list of circumstances indicating bad faith, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant contends that this describes precisely the intent and effect of the Respondent’s registration and use of the Domain Name. The Respondent replies that it chose the Domain Name for its generic value, as the Respondent’s affiliate Protica sells fortified whey beverages and “regularly introduces new whey based products.”

The Respondent’s explanation is not persuasive. The website associated with the Domain Name advertises Protica’s whey protein product line and does not identify “new” products. Indeed, most of the products are explicitly advertised as the “original” ones of their kind, and the Respondent’s leading product, PROFECT, appears on archived versions of the Protica website, found through the Internet Archive’s Wayback Machine, as early as 2002. Above all, it is highly suggestive of bad faith that the Respondent registered the Domain Name shortly after a failed mediation effort in a dispute with the Complainant. The Domain Name does not reflect any of Protica’s brand names, but it is nearly identical to the Complainant’s company name, the Complainant’s registered trademark, and the version of the name that appears on the Complainant’s current advertising and product labeling. On the available record in this proceeding, the Panel concludes that it is more likely than not that the Domain Name was registered and used for its trademark value rather than its generic value, targeting the mark of a competitor in the hope of attracting the attention of some consumers interested in the competitor’s products.

Accordingly, the Panel concludes that the Complainant has established both the second and third elements of the Complaint.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <new--whey.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Dated: November 19, 2010