WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Antigua Domains

Case No. D2008-0163

1. The Parties

The Complainant is Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc., Manasquan, New Jersey, United States of America, represented by Gibbons P.C., United States of America.

The Respondent is Antigua Domains, St. Johns, Antigua, Antigua and Barbuda.

2. The Domain Name and Registrar

The disputed domain name <xenadrinerfa-1.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. On February 1, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On February 1, 2008, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 12, 2008. 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”), 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 February 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2008.

The Center appointed Joan Clark as the sole panelist in this matter on March 18, 2008. 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

According to the Whois search results provided by InnerWise, Inc. d/b/a ItsYourDomain.com, the Respondent Antigua Domains is the registrant of the domain name <xenadrinerfa-1.com> which was created on June 15, 2002, to expire on June 15, 2008.

The Complainant declares it is the owner of the following trade-marks registered in the United States Trade-Marks Office:

- XENADRINE, registered March 14, 2000, for dietary weight loss supplement

- XENADRINE & design, registered September 18, 2007, for dietary and nutritional supplements

- XENADRINE EFX & design, registered September 25, 2007, for dietary and nutritional supplements.

The Complainant also declares it is the owner of the common law trade-mark RFA-1 and the composite mark XENADRINE RFA-1 for a dietary supplement designed to help people lose weight and increase energy.

5. Parties’ Contentions

A. Complainant

(a) Identical or confusingly similar

The Complainant Nutraquest states it was formerly known as Cytodyne Technologies, Inc. and was founded in 1997 to market and distribute sports nutrition and dietary supplement products. The Complainant declares it owns numerous trade-marks for its dietary and weight loss supplements known as XENADRINE. These marks include include XENADRINE registered March 14, 2000, XENADRINE & design registered September 18, 2007 and XENADRINE EFX & design registered September 25, 2007.

The Complainant further states that, in November 1997, it launched XENADRINE RFA-1, a dietary supplement designed to help people lose weight and increase energy, and that through its nationwide marketing, advertising and promotion of XENADRINE RFA-1, the Complainant has established a common law trade-mark in the RFA-1 mark which it has used in connection with its registered XENADRINE mark.

The Complainant states that, by virtue of over ten years of continuous and substantially exclusive use, as well as extensive advertising, marketing and other promotional efforts, the XENADRINE mark has become famous and is recognized and relied upon by consumers as identifying Nutraquest’s goods and services and distinguishing them from the goods and services of others.

The Complainant asserts that the disputed domain name, <xenadrinerfa-1.com>, is confusingly similar to the Complainant’s famous and federally registered XENADRINE mark and its common law RFA-1 mark, in that the distinctive portion of that domain name is identical to the Complainant’s marks.

The Complainant declares that, given the fame of its XENADRINE mark and its XENADRINE RFA-1 composite mark, it is likely that consumers mistakenly will believe the Respondent’s domain name <xenadrinerfa-1.com> and the website associated therewith are associated or affiliated with, or sponsored by, the Complainant, which they are not.

(b) Rights or legitimate interests in respect of the domain name

The Complainant states that the Respondent registered the disputed domain name on or about June 15, 2002, over four years after the Complainant began marketing XENADRINE RFA-1 as a dietary weight loss supplement, and two years after registration of the Complainant’s XENADRINE mark.

The Complainant asserts that the Respondent had at a minimum constructive knowledge of the Complainant’s rights in and to its XENADRINE mark prior to registration of the disputed domain name. In addition, the Complainant states, on information and belief, that the Respondent also had actual notice of the Complainant’s use of XENADRINE RFA-1 and its rights in and to the XENADRINE and RFA-1 trade-marks before the Respondent registered the disputed domain name.

The Complainant avers that the Respondent is using its website to bring attention to, and to promote, competing sports nutrition and weight loss supplements of the Complainant’s competitors, including to offer for sale Winnibol branded steroids which is a product not endorsed by or affiliated with the Complainant.

The Complainant avers that the website for the disputed domain name is used to post advertisements for and to generate “hits” for websites advertising the products of the Complainant’s competitors, and that this does not constitute a legitimate non-commercial or fair use of the Complainant’s registered XENADRINE mark or its common law RFA-1 mark.

The Complainant declares it has never licensed its registered XENADRINE mark or common law RFA-1 mark to the Respondent for use in connection with the disputed domain name or for any other purpose.

The Complainant declares that, on or about January 9, 2008, it sent a letter to the Respondent by e-mail notifying the Respondent that its registration and use of the disputed domain name violates the Complainant’s rights in and to its XENADRINE mark and RFA-1 mark.

Finally, the Complainant states that the Respondent has not responded to the Complainant’s said letter, nor asserted in any other manner a legitimate interest or right to use the disputed domain name.

(c) Registration and use in bad faith

The Complainant asserts on information and belief that the Respondent is a well-known cyber squatter and has been ordered in several other UDRP proceedings to transfer domain names it has registered in bad faith for purposes in violation of the Policy 4(b), and provides copies of four such decisions as exhibits to the Complaint.

The Complainant concludes that the Respondent registered the disputed domain name <xenadrinerfa-1.com> in bad faith and with full knowledge of the Complainant’s prior use of XENADRINE RFA-1 and for the purpose of intentionally attempting to attract for commercial gain Internet users to its website.

The Complainant requests the Administrative Panel to transfer the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

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

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trade-mark XENADRINE, which was registered on March 14, 2000, and is also the registered owner of XENADRINE & design and XENADRINE EFX & design, both registered in 2007. The Complainant claims it is the owner of the common law XENADRINE RFA-1 trade-mark.

The Panel concludes, on the basis of the statements in the Complaint, which have not been refuted by the Respondent, that the Complainant has rights in the above-mentioned registered trade-marks and common law mark.

The word XENADRINE is the initial and most prominent part of the disputed domain name <xenadrinerfa-1.com> which the Panel finds to be confusingly similar to the Complainant’s registered trade-marks XENADRINE, XENADRINE & design, and XENADRINE EFX & design.

In addition to appropriating the Complainant’s registered trade-mark XENADRINE in its domain name, the Respondent has added, in lower case, the letters “rfa-1”, and the suffix “.com”. This wholesale appropriation of the Complainant’s basic registered trade-mark, together with the portion “RFA-1” forming the Complainant’s common law trade-mark XENADRINE RFA-1, results in the disputed domain name being confusingly similar and almost identical to the Complainant’s common law trade-mark. The fact that the letters “rfa” in “rfa-1” are in lower case, and run together immediately following the more prominent XENADRINE also in lower case, does not detract from the confusing similarity as it is well-known and accepted that domain names are always in the lower case.

As has been held in many decisions, the addition of the suffix “.com” to a top-level domain name should not be taken into consideration in making the determination as to identity or confusing similarity.

The Complainant has therefore satisfied the first criterion for a successful challenge to the disputed domain name.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name and has made allegations and submitted arguments in support of this position. Against this assertion, the Respondent has filed no Response, but has remained silent.

It has been held in a number of decisions that, while the overall burden of proof is on the Complainant, this element of proving the Respondent has no rights or legitimate interests in a domain name involves the Complainant in proving matters which are peculiarly within the knowledge of the Respondent, that is, of proving a negative, which is often an impossible task for the Complainant. When the Complainant has made the allegation with some facts in support, the Respondent has a case to answer. See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Frontier Distribution LLC v. Belize Domain WHOIS Service Lt., WIPO Case No. D2007-1203.

There is no evidence in the record before the Panel of any situation which would indicate the Respondent has rights or legitimate interests in the domain name, such as an indication that the Respondent had been commonly known by the domain name, or had made a legitimate non-commercial of fair use of it, or had made bona fide preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant asserts that it never licensed its registered or common law trade-mark to the Respondent for use in connection with the domain name or otherwise.

The Panel finds, in the light of the evidence placed before it, it has been established that the Respondent has no rights or legitimate interests in the disputed domain name, and the second criterion for a successful challenge to the disputed domain name has been satisfied.

C. Registered and Used in Bad Faith

In the absence of any explanation from the Respondent and in view of the unusual, if not unique, word “xenadrine” in the Complainant’s registered trade-mark and the unusual addition of the letters and numeral “rfa-1” in its composite common law trade-mark, the fact that this word and these letters and numeral appear in the disputed domain name forces the conclusion that the domain name was the result of a conscious choice to copy the Complainant’s trade-marks. The most likely purpose for doing so would have been an attempt to attract for commercial gain Internet users to the Respondent’s website.

Printouts from this website produced by the Complainant show that in fact it is used to divert viewers who visit this website to Complainant’s competitors and their products.

This conduct of the Respondent appears to be consistent with its conduct reported in earlier cases which resulted in orders for the transfer of domain names which Respondent had registered, following findings that the Respondent’s domain names in issue in those cases had been registered and used in bad faith.

This Panel has no hesitation in concluding that the domain name in dispute in this case was registered and is being used in bad faith.

The third criterion for a successful challenge of the domain name registration 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, <xenadrinerfa-1.com>, be transferred to the Complainant.

Joan Clark
Sole Panelist

Dated: April 1, 2008