WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AlgaeCal Inc. v. Fundacion Private Whois, Domain Administrator

Case No. D2013-1833

1. The Parties

The Complainant is AlgaeCal Inc. of Vancouver, British Columbia, Canada, represented by Gowling Lafleur Henderson LLP, Canada.

The Respondent is Fundacion Private Whois, Domain Administrator of Panama.

2. The Domain Name and Registrar

The disputed domain name <algaecallead.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2013. On October 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2013, 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. On November 7, 2013, the Center informed the Complainant that the Complaint was administratively deficient and on the same day, the Complainant filed an amendment to the Complaint.

The Center verified that the Complaint together with the amendment to 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 November 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2013.

The Center appointed Angela Fox as the sole panelist in this matter on December 6, 2013. 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 Canadian company selling organic calcium supplements intended to increase human bone density. Since 2006 it has sold these products under the brand names ALGAECAL and ALGAECAL PLUS. These products are sold to approximately 18,000 customers each year around the world, including North America, Asia, Europe, South America and Africa, generating revenue in excess of USD 2 million per annum.

The ALGAECAL mark is a coined term that is protected as a registered trademark in various jurisdictions around the world. Details of the following registrations were annexed to the Complaint:

- United States federal trademark registration no. 3160440 with a registration date of October 17, 2006

- Canadian trademark registration no. TMA774485 with a registration date of August 13, 2010

- European Community trademark registration no. 7243033 with a registration date of August 7, 2009

- Indian trademark registration no. 1725855 with a registration date of August 27, 2008

- Chinese trademark registration no. 6968126 with a registration date of July 21, 2010

The registrations stand in the name of the Complainant’s wholly-owned subsidiary, AlgaeCal Distribution Inc. By an exclusive license dated July 1, 2009, the Complainant has an exclusive license from AlgaeCal Distribution Inc. to use the ALGAECAL trademarks anywhere in the world as a brand name for calcium supplements and other ancillary uses.

The Complainant also owns the domain name <algaecal.com>, which it registered in January 2005, at which it has continually operated a website since promoting and marketing the ALGAECAL and ALGAECAL PLUS products. The Complainant’s website receives over 100,000 visitors each month.

The ALGAECAL products are also sold through third-party websites such as “www.amazon.com”.

The Complainant invests heavily in the promotion of its ALGAECAL and ALGAECAL PLUS products, spending in the region of USD357,000 on promotion of the brand in the fiscal year 2012. The brand was also promoted in April 2012 on the popular “Dr Oz” national television show in the United States and in June 2013 was referred to on Fox TV.

The disputed domain name was registered on August 10, 2013. It is in use for a website publishing what the Complainant describes as false and defamatory information on the Complainant’s business and its ALGAECAL products. Print-outs from the website were annexed to the Complaint.

In fact, the website is identical to that linked to another domain name against which the Complainant recently brought a successful UDRP action concerning the domain name<algaecalfraud.com>, which was registered in a fictitious name. During the pendency of that complaint (AlgaeCal Inc. v. AlgaeCal Fraud, WIPO Case No. D2013-1248), the disputed domain name was registered and a permanent re-direct was set up so that Internet visitors attempting to access the <algaecalfraud.com> domain name were re-directed to the same website content, but at the disputed domain name instead.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the ALGAECAL trademark, in which it has rights as the exclusive licensee. The ALGAECAL trademark is wholly incorporated within the disputed domain name, which differs only in the addition of the generic term “lead” and the addition of the non-distinctive domain name suffix “.com”. The Complainant submits that these differences are not sufficient to avoid confusion.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed, authorized or otherwise permitted the Respondent to use a domain name incorporating the ALGAECAL mark. The Respondent’s website is not, moreover, a non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. In fact, the Respondent’s use of the disputed domain name is intentionally to tarnish the Complainant’s trademark, as was found in the Panel decision concerning the domain name <algaecalfraud.com>, AlgaeCal Inc. v AlgaeCal Fraud, WIPO Case No. D2013-1248.

Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith, in order to allow the Respondent to publish false, malicious and misleading statements with the intention of tarnishing the ALGAECAL trademarks and disrupting the Complainant’s business, as was found by the Panel in AlgaeCal Inc. v. AlgaeCal Fraud, supra. The Complainant further contends that the Respondent’s use of a privacy service to conceal its true identity further manifests bad faith in the circumstances of this case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) a respondent has no rights or legitimate interests in the domain name; and

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The first element of the disputed domain name is “algaecal”, which is identical to registered trademarks in which the Complainant has rights as an exclusive licensee.

The remaining elements of the disputed domain name are the generic word “lead” and the non-distinctive domain name suffix, “.com.” The word “lead” denotes a poisonous substance and is therefore a pejorative term when used in conjunction with the ALGAECAL trademark. It is the consensus view among panels that where a domain name incorporates a complainant’s trademark and a subsidiary, pejorative term, the domain name and trademark will normally be regarded as confusingly similar (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 1.3; see for example FIL Limited v.Whois Privacy Protection Service, Inc., Whois Agent / Arvixe, LLC, Arvand Sabetian, WIPO Case No. D2013-0459, and AlgaeCal Inc. v. AlgaeCal Fraud, WIPO Case No. D2013-1248).

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The content of the website linked to the disputed domain name was fully described in AlgaeCal Inc. v AlgaeCal Fraud, supra.

The Panel in that case considered whether the content of the website amounted to legitimate or noncommercial or fair use in relation to a “gripe” site, but for the reasons set out in that decision and to which the Panel in this case fully subscribes, the Panel concluded that “upon closer examination […] the Respondent’s intention, as manifested through the collective nature of its activities, is not to merely provide critical comments but rather to damage the Complainant’s marks and reputation, and disrupt the Complainant’s business. This does not constitute legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii).”

The Panel agrees with the Complainant that the disputed domain name appears to have been registered in order to enable the entity behind the “www.algaecalfraud.com” website to keep the negative content on the website visible for as long as possible, regardless of the outcome of the related UDRP case (which, are noted above, was decided in the Complainant’s favor). There are no circumstances suggesting that the Respondent in this case (who is most likely the same as, or related to, the entity behind the <algaecalfraud.com> domain name) enjoys any legitimate right or interest in the disputed domain name, nor has it attempted to advance any case for one.

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

C. Registered and Used in Bad Faith

As noted in AlgaeCal Inc. v. AlgaeCal Fraud, supra, the inflammatory contents of the website linked to the disputed domain name manifest a calculated intention to cause injury and disruption to the Complainant’s trademarks, reputation and business.

Moreover, the Respondent has taken steps deliberately to conceal its identity through the use of a privacy shield. While the use of a privacy service per se is not on its own an indication of bad faith, taken in conjunction with the likely relationship between the entity behind the disputed domain name and the <algaecalfraud.com> domain name and the intentionally damaging nature of the contents of the linked website, the concealment of the Respondent’s identity in the circumstances of this case tends to support the Complainant’s assertion that the Respondent has acted in bad faith.

The Panel finds that the disputed domain name was registered and has been used in bad faith.

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 <algaecallead.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: December 20, 2013