Complainant is Pro Natura Gesellschaft für Gesunde Emahrung mbH of Bad Vilbel, Germany, represented by Schlich Ltd, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is Mike Pollard of Rockville, Maryland, United States of America ("United States" or "U.S."), represented by Shulman Rogers Gandal Pordy & Ecker, P.A., United States.
The disputed domain names <fructaid.com>, <fructaid.net>, and <fructaid.org> are registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 14, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on December 22, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2017. The Response was filed with the Center on January 12, 2017.
The Center received an unsolicited Supplemental Filing from Complainant on January 18, 2017. The Center received an unsolicited Supplemental Filing from Respondent on January 20, 2017.
The Center appointed Pablo A. Palazzi, Jonathan Turner and Robert A. Badgley as panelists in this matter on January 26, 2017. The Panel finds that it was properly constituted. Each member of 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.
Complainant is a German company marketing indigestion relief pills. Complaint is the owner of the mark FRUCTAID registered in Germany in the year 2006. In addition Complainant owns registrations for the mark in Switzerland, the United States, Canada and an international registration.
Complainant owns the domain name located at <fructaid.de> available only in German language.
According to its response, Respondent is the managing director of a company trying to develop and market nutraceutical fruktokinase inhibitors.
The disputed domain names were registered on November 4, 2012.
Currently, there are no websites at the disputed domain names, except for <fructaid.com>, which resolves to a GoDaddy parking page.
Complainant states that the disputed domain names are confusingly similar to a mark in which Complainant has rights.
With respect to the rights and legitimates interest of Respondent, Complainant states that:
- Respondent has claimed in an email to Complainant that he is trying to develop a line of products called FRUCTADE and that his business has made significant research investments in fructose metabolism.
- the domain names <fructade.com>, <fructade.org> and <fructade.net> are not being used for any purposes.
- Respondent is not the owner of any mark registration for FRUCTADE in the U.S. or in the European Union.
- Complainant was not able to identify any evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
- even if Complainant were to start using the marks FRUCTADE or FRUCTAID in the course of trade and in connection with a fructose metabolism product, such use would constitute infringement of Complainant's mark rights in those countries where Complainant has such rights.
With respect to bad faith registration and use, Complainant states that:
- in the absence of any legitimate interest by Respondent in respect of the disputed domain names, it appears that the disputed domain names were registered in bad faith, most likely for the purposes of selling them for valuable consideration. This is supported by the correspondence between Complainant and Respondent.
- Complainant wrote to Respondent on June 23, 2016 asking whether Respondent would be prepared to transfer the disputed domain names to Complainant. Respondent explained that the disputed domain names were registered for defensive purposes but that Respondent may consider transferring them if both parties can reach a mutually acceptable price.
- Complainant offered USD 1,500 for the three disputed domain names and Respondent rejected the offer.
- Respondent's reason for not transferring the disputed domain names was not "giving up a significant marketing tool". According to Complainant, this is a contradiction with previous statements that the disputed domain names were only defensive registrations and that Respondent was planning to use FRUCTADE and not FRUCTAID for his products.
- Respondent's claim that the reason for registering the disputed domain names was that he did not want another company trading on his goodwill is not credible: a person seeking to protect goodwill in a trading name would have been expected to file an application for registration of that name as a mark.
- Also a person seeking to protect goodwill in a trading name would have been expected to at least carry a mark search before investing in the domain names: when Respondent registered the disputed domain names (November 2012), Complainant had already a registered mark in the United States for the term FRUCTAID (serial n. 79/031,385).
- Respondent's claim that he was not aware of Complainant's company or their mark at the time of registration of the disputed domain names does not seem plausible.
- the absence of any legitimate reasons leads to a conclusion that there are no bona fide reasons for Respondent's registration of the disputed domain names.
Complainant requests the transfer of all the disputed domain names.
Respondent states that Complainant has not come close to meeting its evidentiary duty under any prong of the Policy.
With respect to the rights over the mark, Respondent states that:
- the disputed domain names were registered on November 4, 2012.
- Complainant did not receive registration for his marks in the following country registrations prior to November 4, 2012: Germany, Switzerland, the United States and Canada.
- Complainant states that the U.S. registration was allowed to lapse but this is not a true statement. According to the USPTO records, the registration was invalidated and removed from the U.S. mark registry because its international registration was cancelled.
- in addition Complainant's U.S. application was registered under the Madrid Protocol without the need to show legitimate sales in the U.S.
- therefore, Complainant does not have prior trademark rights.
With respect to rights or legitimate interests Respondent states that:
- Complainant has submitted no evidence that Respondent has no legitimate rights in the disputed domain names.
- the entire argument of Complainant is based on not finding evidence of Respondent's rights on the Internet.
- Respondent is the managing director of NCD Therapeutics LLC, a privately held company in Maryland, United States of America.
- NCD was formed to develop nutraceutical fruktokinase inhibitors.
- The company is in discovery phase and as such it does not have a website.
- Respondent's name for its product is FRUCTADE.
- Complainant has not asserted that FRUCTAID is a famous mark. Without knowledge of Complainant's mark, Respondent purchased the domain names <fructade.com>, <fructade.net> and <fructade.org> in 2012. For defensive purposes, Respondent also purchased the disputed domain names.
- Respondent explained all this to Complainant prior to the filing of the Complaint.
- Respondent does not have a mark because it would take him 168 months to bring the products to the market and Respondent won't be able to file in time a Statement of Use after allowance of the mark application.
With respect to bad faith Respondent states that:
- Complainant is not providing actual evidence of bad faith, only mere suppositions.
- Complainant must submit more than its presumptions to meet its requirements under the Policy.
- Policy identifies several circumstances of bad faith but Complainant has not submitted any evidence that Respondent registered the disputed domain names in bad faith.
- Respondent did not register the disputed domain names with the intent of selling them to Complainant because Respondent rejected Complainant's offer to sell the disputed domain names.
- Because Respondent was not aware of Complainant when he purchased the disputed domain names and because he is not trying to sell the disputed domain names to Complainant, Complainant cannot prove that Respondent purchased the disputed domain names in bad faith.
- Complainant has not pleaded that Respondent registered the disputed domain names in order to prevent the owner of the mark from reflecting the mark in the corresponding domain names.
- Complainant cannot plead the paragraph 4(b)(iii) case since Respondent and Complainant are not competitors.
- Respondent has parked the disputed domain names and all that is displayed in the disputed domain names is a GoDaddy holding page, so just a passive holding of the disputed domain names without additional evidence of bad faith is not enough to meet the requirements of the Policy.
- Respondent is a citizen of the United States and has resided in the United States his entire life. Respondent has never been to Germany. Complainant never sold FRUCTAID products in the United States and Respondent has no knowledge that Complainant had any rights in the FRUCTAID name.
Respondent requests the Panel to deny the remedies requested by Complainant.
The Center received an unsolicited Supplemental Filing from Complainant on January 18, 2017.
Complainant says it owns a German mark registration no. 30572115 which has a filing date of December1, 2005 and predates Respondent's registration of the disputed domain names by nearly 7 years. According to Complainant, this mark alone is sufficient to meet the requirements of the Policy.
Complainant states that the business plan is undated and therefore it is unclear when it was written. In addition, the business plan makes no reference to FRUCTAID or FRUCTADE and the business plan is also inconsistent with Respondent's emails. The business plan is clear in the sense that Respondent never had any intention of marketing or selling the products, instead Respondent plans to carry out the development of the products up to Phase I or Phase II and then sell the company to another company. There is no business logic in investing in multiple domain names given that the marks and domain names under which the final products would be sold almost certainly would be selected by the company taking over the development of the products.
The Center received an unsolicited Supplemental Filing from Respondent on January 20, 2017.
Respondent contends that the disputed domain names were all purchased on the same time frame to support the same commercial activity. The domain names <fructade.com>, <fructade.info>, <fructade.net>, <fructade.org>, <fructaid.com>, <fructaid.net> and <fructaid.org> were all registered on November 4, 2012. Complainant contacted Respondent only on June 23, 2016 to assert that it had German rights in the FRUCTAID name. At no time during this three-and-a-half-year period did Respondent communicate with Complainant to try to sell the disputed domain names or perform any action that could be deemed bad faith against Complainant.
Respondent states also that he explained to Complainant that it was using the disputed domain names for a legitimate purpose in his first email communication. The evidence proves that Respondent purchased the disputed domain names before any notice of the dispute and that Respondent was making demonstrable preparations to use a name corresponding to the disputed domain names in question in connection with a bona fide offering of goods to the public.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, Complainant must prove (i) that the disputed domain names are identical or confusingly similar to a mark in which it has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith.
An unsolicited Supplemental Filing was received from Complainant, and another unsolicited Supplemental Filing was received from Respondent. Proceedings under the Policy are expected to be conducted expeditiously in accordance with paragraph 10(c) of the Rules.
As the panelist stated in the decision in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703: "A Complainant should "get it right" the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules."
Exceptionally, the Panel decides to admit Complainant's Supplemental Filing in this instance, principally because Complainant's supplemental Filing discusses Respondent's business plan (annex 6 to the Response), so the Supplemental Filing is admitted to the extent that it makes reference to the Business Plan of Respondent. Complainant could not reasonably anticipate this evidence and it is reasonable and proportionate to consider Complainant's comments on this document. In the interests of justice and due process, Respondent's Supplemental Filing will also be allowed.
The Panel finds that Complainant has registered rights in the mark FRUCTAID. The Panel further finds that the disputed domain names are identical to this mark for the purpose of the UDRP. As held in numerous decisions under the UDRP, for this purpose the generic Top-Level Domain ("gTLD") suffix may be discounted. The first requirement of the UDRP is satisfied.
In light of what is said in the next section, there is no need to address the rights or legitimate interests of Respondent.
Complainant is not marketing its products in the U.S. and Complainant's website is only available in German. Respondent has denied being aware of Complainant's mark at the time of registering the disputed domain names and provided an explanation on why he has registered the disputed domain names. The disputed domain names are not in use. The disputed domain name <fructaid.com> is directed to a GoDaddy.com parking page.
Complainant contends that the disputed domain names were registered in bad faith, most likely for the purposes of selling them for valuable consideration.
Respondent never offered for sale the disputed domain names. It was Complainant who offered USD 1,500 to buy the three disputed domain names and Respondent rejected that offer. That alone is not enough to consider that the disputed domain names were registered with the aim of selling them to Complainant.
The disputed domain names are not in use. So there is no evidence of use of the disputed domain names to attempt to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion.
The Panel also notes there does not appear to be any pattern or history indicating bad faith registration of domain names on behalf of Respondent (or his company) nor is there any evidence that the disputed domain names were registered for the purpose of disrupting the business of a competitor.
In this case, the evidence does not show that Respondent knew or should have known that the disputed domain names reflected Complainant's mark. The Panel finds Respondent's claim to not know Complainant plausible. Complainant has not proved that Respondent was acting in bad faith when he registered the disputed domain names. Bad faith cannot be presumed based on the facts of this case.
Accordingly, this Panel finds that Complainant has not shown, on the balance of probabilities, that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Pablo A. Palazzi
Presiding Panelist
Jonathan Turner
Panelist
Robert A. Badgley
Panelist
Date: February 13, 2017
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