The Complainant is Integrative Nutrition Inc. of New York, United States of America, represented by Edwards Angell Palmer & Dodge, LLP of New York, United States of America.
The Respondent is Ho Nim of Shanghai, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <instituteintegrativenutrition.com> (the “Domain Name”) is registered with Above.com Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 7, 2010, the Center transmitted by email to Above.com, Pty. Ltd. a request for registrar verification in connection with the Domain Name. On May 10, 2010, Above.com, Pty. Ltd. 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 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 May 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 4, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 14, 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 the owner of a number of trade mark registrations around the world for educational services, consisting of or incorporating the words INTEGRATIVE NUTRITION, as well as United States trade mark no. 3,354,697 for INSTITUTE FOR INTEGRATIVE NUTRITION. The earliest of the Complainant's trade marks was registered in May 2005.
The Complainant is the registrant of the domain name <integrativenutrition.com>, which resolves to a website offering educational programs in relation to nutrition and wellness. The website claims that the Complainant is “the world's largest nutrition school”. The Complainant has spent significant sums on advertising its INTEGRATIVE NUTRITION brand in prominent publications, and as a result of such advertising, has become a well-known service provider within the nutrition industry.
The Respondent registered the Domain Name on October 17, 2009. At the time of the Complaint, the Domain Name resolved to a website containing sponsored links and advertising, some of which relate to the Complainant's business and link to websites advertising businesses and consulting services in direct competition with the Complainant.
5. Parties' Contentions
A. Complainant
The Complainant's contentions can be summarised as follows:
(a) the Domain Name consists solely of the Complainant's INSTITUTE FOR INTEGRATIVE NUTRITION trade mark, the omission of “for” not having any effect on the likelihood of confusion between the Domain Name and the Complainant's trade mark;
(b) the Complainant's trade marks establish a presumption of validity in favour of the Complainant, so that, in the absence of any evidence to the contrary produced by the Respondent, the Domain Name is confusingly similar to the Complainant's trade marks;
(c) the Complainant has not licensed, authorised, contracted or otherwise permitted the Respondent to use the Complainant's trade marks;
(d) to the best of the Complainant's knowledge and belief, the Respondent has never been known by the Domain Name;
(e) the Respondent's use of the Domain Name has not conferred any rights or legitimate interests in the Domain Name on the Respondent;
(f) the fact that the Respondent has no connection with the Complainant or its trade marks is indicative of registration and use of the Domain Name in bad faith;
(g) the Respondent's use of the Domain Name to attract, for commercial gain, Internet users to a website containing revenue-generating links to competitor's products and services is clear evidence of bad faith;
(h) the Respondent has not actively used the website to which the Domain Name resolves, so that in the circumstances, the Respondent's use can be considered evidence of bad faith;
(i) by using the Domain Name to attract Internet visitors to the website to which the Domain Name resolves, the Respondent is trading on the fact that Internet users will be confused into thinking there is some association or affiliation between the Complainant and the Respondent and his Domain Name, when in fact there is not; and
(j) the Respondent has not provided any evidence of actual or contemplated good faith use, which is indicative of registration and use in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Domain Name wholly incorporates the Complainant's trade mark INSTITUTE FOR INTEGRATIVE NUTRITION, omitting only the word “for”. The omission of a generic term that is part of the Complainant's trade mark does not preclude a finding of confusing similarity, as the removal of the word does not add any distinctive element to the Domain Name, sufficient to distinguish it from the Complainant's trade mark: see H.J.M. De Vries, Leidseplein Beheer B.V. v. O.E.W. van der Zwan,
WIPO Case No. D2004-0174 and La Societé des Autoroutes Paris Rhin Rhône v. Keyword MarketingInc.,WIPO Case No. D2006-1270.
The Panel further accepts that, when assessing whether a domain name is identical or confusingly similar, the gTLD domain suffix (here, “.com”) may be disregarded: Rohde & Schwarz GmbH & Co. HG v. Pertshire Marketing Ltd.,
WIPO Case No. D2006-0762.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are established, as the Domain Name is confusingly similar to the Complainant's INSTITUTE FOR INTEGRATIVE NUTRITION trade mark.
B. Rights or Legitimate Interests
The Panel accepts the Complainant's submission that it has never licensed, authorised, contracted or otherwise permitted the Respondent to use the Complainant's trade marks. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trade marks or service marks which are identical, similar or related to the Domain Name. Therefore, the Panel will assess the Respondent's rights (or lack thereof) in the Domain Name based on the Respondent's use of the Domain Name, in accordance with the available information.
The use of a domain name for the purpose of collecting referral fees from sponsored advertising has been consistently held in appropriate circumstances not to be a legitimate offering of goods or services (see PRL USA Holdings, Inc v. LucasCobb,
WIPO Case No. D2006-0162). Based on the evidence submitted by the Complainant and particularly given the fact that the website to which the Domain Name resolves offers sponsored advertising links to products and services that compete with and/or relate to the Complainant's products, the Panel accepts that the Respondent's use of the Domain Name is not genuine. Furthermore, the Panel considers that the Respondent is making unfair use of the Domain Name for commercial gain, by diverting consumers from the Complainant, and/or misleading customers into assuming an association between the Complainant and the Respondent, when in fact there is no such association.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts that the Complainant has made extensive commercial use of its trade marks, so there is a substantial amount of goodwill attached to the marks and they are widely known in a number of jurisdictions. As such, the Panel considers that it is unlikely that the Respondent did not have any knowledge of the Complainant's trade marks at the time of registering the Domain Name.
It is difficult to foresee many circumstances where the registration and use of the Domain Name could be said to be bona fide when all the circumstances suggest that registration and use has occurred in the full knowledge of the Complainant's prior rights in the INTEGRATIVE NUTRITION and INSTITUTE FOR INTEGRATIVE NUTRITION trade marks.
It is also clear from the circumstances of the case, and the fact that the website to which the Domain Name resolves contains links to nutrition related services, that the Respondent trades on the likelihood that Internet users will assume that there is some connection between the Respondent and the Complainant, and derives commercial advantage from that assumption in the form of referral fees. This is indicative of bad faith: Control Techniques Ltd. v. Lektronix Ltd.,
WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.
The Panel also notes that the Respondent, Ho Nim, is an individual who has been recorded as a respondent in a number of other domain name disputes: see for example Regeneron Pharmaceuticals, Inc. v. Ho Nim,
WIPO Case No. D2010-0543 and Berlitz Investment Corporation v. Ho Nim,
WIPO Case No. D2010-0129. All of the nine administrative complaint proceedings filed with the Center in which Ho Nim is listed as a Respondent have resulted in a finding against him. These cases demonstrate that the Respondent has engaged in a pattern of domain name hijacking which, considered together with the other circumstances of the case, further supports the Panel's finding that the Respondent has registered and used the Domain Name in bad faith.
The Panel therefore finds that the Respondent has registered and used the Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <instituteintegrativenutrition.com> be transferred to the Complainant.
Gabriela Kennedy Sole Panelist
Dated: June 22, 2010
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