WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MET-Rx Substrate Technology, Inc. v. Tom Calhoun

Case No. D2011-0829

1. The Parties

Complainant is MET-Rx Substrate Technology, Inc. of New York, United States of America, represented by Gowling Lafleur Henderson LLP, Canada.

Respondent is Tom Calhoun of California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <met-rx.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2011. On May 13, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On May 15, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2011. Respondent did not submit a formal response. However, the Center received two email communications from Respondent, on May 16, 2011, and June 9, 2011.

The Center appointed Gary J. Nelson as the sole panelist in this matter on June 22, 2011. 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.

Regarding Respondent’s email communications dated May 16 and June 9, 2011, even though the Respondent appears to disagree with the allegations presented by the Complainant, the Respondent has not presented any factual evidence. Accordingly, because Respondent has not submitted any evidence in support of its position, and because the Respondent did not file a formal response, the Panel attaches little weight to Respondent’s informal email communications when issuing the decision.

4. Factual Background

A. Complainant

Complainant is the owner of at least two United States Trademark Registrations for MET-RX, and is the owner of numerous trademark registrations for this same MET-RX trademark in numerous other countries throughout the world. Specifically, Complainant owns at least the following trademark registrations in the United States:

Complainant was founded in 1991 and sells high-protein meal replacement powders, protein-rich supplements, vitamin formulas and strength enhancing creatine products. Complainant’s MET-RX branded products are sold to ordinary fitness enthusiasts, as well as top athletes, bodybuilders, and professional & college sports teams. The distribution channels of Complainant’s MET-RX branded products include mass merchandisers, drug store chains, drug wholesalers, supermarket chains and wholesalers, as well as being sold online through the Internet. Complainant maintains markets throughout the world.

B. Respondent

The disputed domain name was registered on December 25, 2008. There does not appear to be an operational website associated with the <met-rx.net> domain name. Rather, the URL automatically redirects Internet traffic to “www.seeswimwear.com” featuring swimsuits, lingerie and costumes for women.

5. Parties’ Contentions

A. Complainant

Complainant owns trademark rights in the MET-RX trademark in the United States and throughout the world, and established these rights prior to the registration of <met-rx.net> by Respondent.

Complainant distributes its MET-RX branded products through international distributors across the world including but not limited to Azerbaijan, Indonesia, Philippines, India, Australia, Tahiti (French Polynesia), Canada, the People’s Republic of China, Brazil, Cayman Islands (Overseas Territory of the United Kingdom of Great Britain and Northern Ireland), Colombia, Dominican Republic, El Salvador, Europe, Guatemala, Mexico, Panama, Paraguay, Peru, Saint Lucia, Chile, Israel, South Africa, and the United States.

Complainant’s MET-RX branded products have enjoyed tremendous success. During the fiscal year ending September 30, 2010, Complainant’s MET-RX branded products generated revenues in excess of USD 56 million.

Complainant has expended significant resources in the promotion and advertising of its MET-RX branded products. Since 2005, Complainant has incurred approximately USD 25 million in promotional expenses.

Complainant sponsors numerous athletes, bodybuilders and celebrities, and has been the primary sponsor of the World’s Strongest Man competition. In addition to publishing online newsletters, Complainant publishes MET-RX Magazine which showcases its sponsors athletes, its MET-RX branded products and its sponsored events, among other things.

Without permission from Complainant, Respondent registered <met-rx.net>. Originally, the disputed domain name resolved to a pay-per-click website displaying links to competitors of the Complainant.

Complainant sent a Cease and Desist Letter to Respondent on February 23, 2011. In response, Respondent offered to sell the disputed domain name back to Complainant if a “serious offer” was made. Prior to the filing of Complainant, the website associated with the disputed domain name became inactive.

Respondent has no rights or legitimate interest in the disputed domain name, and Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not formally reply to Complainant’s contentions, but did generally object to the filing of the Complaint by Complainant. Respondent’s email communications are reproduced in full below:

Email of May 16, 2011:

“We have had this domain (met-rx.net) for 4 year now. Now they want to file a complaint because they see a use for it. I disagee with everything they are saying. We would like to keep our domain. It is not in conflict with their copyright (metrx) ours has a hyphening.”

Email of June 9, 2011:

“Had the flu for the last 18 day. Couldnt write a response”

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed 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 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

Complainant has established that it owns prior rights in the MET-RX trademark and the disputed domain name is confusingly similar to Complainant’s MET-RX trademark.

Complainant owns at least two MET-RX trademark registrations in the United States. One of these registrations is for United States Trademark Registration No. 2058523. The registration date for this trademark (i.e., May 6, 1997) precedes the date upon which the disputed domain name was registered (i.e., December 24, 2008).

Accordingly, Complainant has established rights in its MET-RX trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).

The disputed domain name, <met-rx.net>, is either identical or confusingly similar to Complainant’s MET-RX trademark because the disputed domain name incorporates the entirety of Complainant’s MET-RX trademark and merely adds a generic top-level “.net” domain name. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).

Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).

By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “met,” “rx” or any combination of these words/letters. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its MET-RX trademark.

Complainant has provided unrebutted evidence showing that Respondent was operating a website at “www.met-rx.net” which was merely an advertising portal and parking page that offered click-through opportunities, of which many were associated with Complainant’s competitors. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the Policy paragraph 4(c)(i). See The American Automobile Association, Inc. v. Jack Holder, NAF Claim No. FA1227171. Furthermore, it is likely Respondent received click-through fees each time an Internet user accessed the website at “www.met-rx.net” and clicked on any of the numerous options that were available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no rights or legitimate interests in the disputed domain name. See Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194. The disputed domain name currently redirects to a commercial website at ”www.seeswimwear.com” featuring swimsuits, lingerie and costumes for women.

Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the disputed domain name in bad faith.

In regard to the disputed domain name, Respondent maintained a corresponding website that hosted pay-per-click advertisements, including click through opportunities to websites featuring Complainant’s MET-RX branded products and products of competitors. The disputed domain name currently redirects to a commercial website at “www.seeswimwear.com”. This constitutes evidence of bad faith registration and use of the disputed domain name. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353 (“the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy[.]”).

The Panel also finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the MET-RX trademark. Respondent’s awareness of Complainant’s MET-RX trademark may be inferred because the mark was registered with the USPTO prior to Respondent’s registration of the disputed domain name and since the MET-RX trademark is well-known. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

Complainant has alleged, and Respondent has not rebutted, that Respondent offered to sell the disputed domain name if Complainant made a “serious offer.” The Panel concludes that this was an attempt to sell the disputed domain name for an amount substantially in excess of the corresponding cost of registering the disputed domain name. Also, a respondent's offer to transfer ownership of a domain name to the complainant for an unstated amount of money has been found to be evidence of bad faith registration and use of the domain name in question. See Jamdat Mobile Inc. v. MidletEarth Inc., WIPO Case No. D2004-0745; Wolter Verwaltungs and Kanner Corporation v. Susan Yocom, WIPO Case No. D2004-0021.

Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

7. Decision

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, <met-rx.net>, be transferred to Complainant.

Gary J. Nelson
Sole Panelist
Dated: June 23, 2011