WIPO Domain Name Decision: D2008-0244

Complainant is Super Supplements, Inc., Seattle, Washington, United States of America, represented by Garvey, Schubert & Barer, United States of America.

Respondent is Vertical Axis, Inc, Christ Church, Barbados, represented by ESQwire.com PC, United States of America.

The disputed domain name <supersupplements.com> is registered with Nameview Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2008, naming Super Supplements.com, C/o Whois Identity Shield, as Respondent. On February 18, 2008, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On February 27, 2008, Nameview Inc. transmitted by email to the Center its verification response stating 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 March 5, 2008. The Center verified that the Amended 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 Respondent of the Complaint, and the proceedings commenced March 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response April 4, 2008. The Response was filed with the Center April 4, 2008, requesting the appointment of a three-member Panel.

The Center appointed Desmond J. Ryan, Richard W. Page and Diane Cabell as panelists in this matter on April 29, 2008. 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.

The domain name was created on August 13, 1998. It was first registered to Respondent in October 2005.

Complainant is a Washington corporation having offices in Seattle, Washington, USA. It was founded in 1994 and it currently operates 21 retail stores throughout north-western United States selling a range of health and fitness products and services through those outlets and by mail order. It operates a website at “www.supersup.com” which it registered on October 5, 1999. Complainant claims to have spent millions of dollars to promote its “Super Supplements” trademark and promote its stores through print, radio and television advertisements.

Complainant is the registered proprietor of US trademark 3,285,545 “Super Supplements”: and logo, filed May 13, 2005 and registered August 28, 2007. The registration covers a range of catalogues and publications relating to health and beauty preparations in International Class 16 and corresponding services in International Class 35. It claims first use in commerce in respect of the Class 35 services from January 11, 2003 and in respect of the Class 16 publications from January 1, 2005. The word “Supplements” is disclaimed.

On December 13, 2007, Complainant’s lawyers sent a letter of demand to Respondent asserting Complainant’s trademark rights and requesting transfer of the domain name.

Respondent has an address in Christchurch, Barbados, and appears to operate a business of providing Internet links through monetized domain names. It claims to have registered over 140 descriptive domain names incorporating the words “supplement”, “vitamin”, “nutrition” and/or “super”. The disputed domain name resolves to a portal providing links to a wide range of internet sites including sites reachable through tabs labeled, inter alia, “dating”, “cars”, “entertainment”, “finance”, “electronics”, “business”, “travel”.

Complainant claims rights in the trademark “Super Supplements” by virtue of its trademark registration and by virtue of continuous use in commerce for over 13 years. Complainant contends that its long use and extensive publicity has established its common law rights in the trademark from a time well before the registration of the disputed domain name. Complainant contends that the disputed domain name incorporates its “Super Supplements” mark in its entirety and is inherently confusingly similar thereto.

Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name and because Complainant has never authorized Respondent to use its mark Respondent has hidden its identity behind the identity shield and there is therefore no indication that Respondent is known under the disputed domain name.

Complainant also asserts that Respondent’s use of the domain name does not constitute a use in the bona fide offering of goods or services by reference to the domain name. Complainant cites three prior UDRP decisions in support of its contention that the provision of a click-through service does not constitute a bona fide offering. Complainant cites the decision in The Evening Store.com, Inc. v. Henry Chan, WIPO Case No. D2004-0305 as identifying four characteristics that show that the operation of a click-through site does not constitute a bona fide offering of goods or services namely that:

- there is no apparent connection between the domain name and respondent’s name;

- respondent was not using the domain name to sell its own goods or services; and

Complainant contends that the first three of these conditions are fulfilled in this case and says that it is unable to say whether the fourth condition satisfied because Respondent shelters behind an identity shield. Respondent cites Croatia Airlines d.d v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and establishing that where Complainant establishes a prima facie case, the burden reverts to Respondent.

Complainant contends that Respondent’s bad faith is evidenced by circumstances indicating that the domain name was registered primarily to disrupt the business of a competitor and is using the domain name intentionally to attract users for commercial gain by creating a likelihood of confusion. Complainant contends that as Respondent has no legitimate interest in the domain name, it can only have been registered for the purpose of implying, at Complainant’s expense, an affiliation with Complainant and profiting from Complainant’s expenditure of several million dollars in promoting its mark and providing high quality products and services.

Respondent contends that the domain name is not identical or confusingly similar with Complainant’s trademark. It says that Complainant’s mark consists of the combination of a distinctive logo and non-distinctive words Super Supplements and was only registered after extensive argument with the US Trademarks Office and the entry of a disclaimer of the word “Supplements”. Respondent points to extensive third party use of the expression “super supplements” and cites 28,300 hits in a search structured to exclude hits leading to Complainant’s “www.supersup.com” site. Respondent cites several prior UDRP decisions including Porto Chico Stores, Inc., v. Otavio Zambon, WIPO Case No. D2000-1270, and Tire Discounters, Inc. v. TireDiscounter.com, NAF Case No. 679485.

Respondent clearly admits that it registers domain names for the purpose of deriving advertising income by the use of the domain name as a click-through to third party commercial sites. It says that it registers descriptive or generic names and has a legitimate right to do so. It claims that among the descriptive names that it has registered, there are in excess of 140 including the words “supplement”, “vitamin”, “nutrition” and/or “super”. Respondent cites Roderick W. Accetta v. Domain Admin et al., NAF Case No. 826565, as authority for its contention that: “use of a domain name to operate a pay-per-click search engine is a bona fide offering of goods and services”. Respondent further cites other prior UDRP decisions including several in which it was the Respondent.

Respondent asserts that it did not register, and is not using the domain name in bad faith. It registered the domain name after its earlier registration had lapsed, and at the time of doing so, had no knowledge of Complainant; nor did it do so with the intent to sell the name to disrupt Complainant’s business, to cause confusion, or to prevent Complainant from owning the domain name. Further assertions are made on oath by Respondent’s manager who also declares that the links to which its domain names are directed, are provided by Yahoo Search Marketing and Respondent receives a share of the revenue generated from those links. Respondent states that it has prevailed in 15 out of 24 cases which have been brought against it under the Policy. It says that the use and identity shield is not in itself evidence of bad faith and cites the decision in one of its earlier cases Jet Marques v. Vertical Axis, Inc., WIPO Case No. D2006-0250.

Respondent further contends the fact that it has been involved in many prior disputes is not evidence of bad faith and refers to the decision in Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc., WIPO Case No. D2007-0795.

In order to succeed in these proceedings, Complainant must establish each of the following circumstances:

(i) that the domain name is identical or confusingly similar to a name, trade mark 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

Complainant clearly has rights in its registered trademark comprising the words “Super Supplements” in combination with a distinctive logo. Complainant contends that the domain name comprising the words “Super Supplements” is confusingly similar to that mark. Respondent on the other hand, contends that since the words “Super Supplements” are descriptive and the word “Supplements” is disclaimed the trademark registration gives no rights in those words and accordingly the domain name is not confusingly similar to the mark. Prior panel decisions have been divided over this issue. For example, the Panel in Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211 took the view that as the mark “The Medicine Shoppe” was a “weak” mark in a crowded field the domain name <canadamedicineshop> could co-exist with it. On the other hand, the Panel in The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven, WIPO Case No. DAU2003-0001 stated that:

“Likewise, the Panel in the GlobalCenter case held that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases”.

The majority in this Panel prefers the objective approach and finds that the domain name is confusingly similar to Complainant’s registered trademark. This point is, however, moot in the light of the Panel’s finding under paragraph 4(a)(ii).

Respondent uses the domain name as one of the many domain names through which it operates a “click-through” business and receives remuneration from its clients based on the number of hits which are clicked through the domain name to the client’s website. It registered the domain name in October 2005 and has used it in that way since then. Respondent claims that it registered the domain name after it had been allowed to lapse by its previous owner, and says that it did not, at the time of registration, know of Complainant or its trademark and first became aware of Complainant and its claim to rights in the trademark on receipt of Complainant’s counsel’s letter of demand in December 2007.

Complainant’s trademark application was filed in May 2005, but was not registered until August 2007. Complainant claims first use of its mark in commerce in 2003. Having regard to the relevant dates and the fact that Complainant’s business appears to be concentrated in north western United States, there is no obvious reason why Respondent should have been aware of Complainant or its claim to trademark rights in two descriptive words when Respondent registered the domain name in 2005. Accordingly, there is no reason to disbelieve Respondent’s assertion, supported by the sworn statement of its general manager.

Complainant contends that the operation of a click-through site is not a bona fide offering of goods and services and cites three prior panel decisions. Each of those decisions were however, undefended. In two of them there is no suggestion that the words concerned were in any way descriptive or generic. In the third, The Evening Store.com, Inc. v. Henry Chan, WIPO Case No. D2004-0305, the panel did not consider the descriptive nature of the words comprising the mark, and did not apparently consider the extent to which, in 2004, the provision of click-through services was an established business practice. On the other hand, in many cases, including cases in which the present Respondent has been a respondent, panels have found that the provision of such click-through services do constitute a bona fide offering of the service unless the bona fides of the offering is tainted by evidence of bad faith, see for example, Williams, Babbitt & Weisman, Inc, v. Ultimate Search, NAF Case No. 98813 and Nursefinders, Inc. v. Vertical Axis, WIPO Case No. D2007-0417. In the opinion of the majority of the Panel such services are now a common business practice and there is no evidence of bad faith in Respondent’s adoption and use of the disputed domain name in providing such a service.

The Panel therefore finds that the domain name is one in which Respondent has rights or legitimate interests.

In the light of the Panel’s finding under paragraph 4(a)(ii) of the Policy the Complaint must fail and it is accordingly unnecessary to consider for the purpose of paragraph 4(a)(iii), whether or not registration and use in bad faith has been shown. However, in view of the fact that Respondent has requested a finding of reverse domain name high jacking the majority of the Panel expresses the view that Complainant has failed under this ground also.

For the reasons set out above in relation to Respondent’s legitimate rights or interest, the majority of the Panel concludes that there is no evidence of bad faith on the part of Respondent. Respondent’s taking up of a lapsed domain name consisting of descriptive words in circumstances where it did not know, and could not reasonably be expected to know, of Complainant’s claim to trademark rights, cannot constitute bad faith registration. It may have been opportunistic, but it was not improper. Likewise, in the opinion of the majority, there was nothing improper about Respondent’s subsequent use of the domain name to earn revenue for a click-through service. Complainant’s claim that Respondent’s use of an identity shield cannot, without more, evidence bad faith. Identity shields are provided by registrars for clients at large and whilst they may sometimes be used for illegitimate purposes, their use per se cannot be characterized as improper.

The Panel therefore finds, by a majority, that the domain name was not registered and is not being used in bad faith.

Although Complainant has failed in this Complaint, it cannot be said, on the facts presented, that Complainant’s case is completely lacking in substance. Complainant’s counsel produced reasoned argument based on each of the necessary elements, and in each case discharged its duty to present Complainant’s case as best it could. The Panel therefore finds that there is no basis upon which it could be said that the Complaint was brought in bad faith.

The Panel therefore declines to find Complainant guilty of reverse domain name high-jacking.

Desmond J. Ryan AM
Presiding Panelist

Richard W. Page
Panelist (Dissenting)

Diane Cabell
Panelist

The Panel in this proceeding has found that Complainant has enforceable trademark rights in “Super Supplements” and that the Disputed Domain Name is confusingly similar to Complainant’s trademark. The Panel admittedly applied an objective test.

However, the Panel then concluded that because of the descriptive nature of the mark and the established business practice of paying click-through fees, Respondent has established legitimate rights or interest in the Disputed Domain Name. There is no objective analysis of paragraphs 4(c)(i)-(iii) of the Policy.

The Panel goes on to find that no bad faith exists for the same reasons that the mark is descriptive and the practice of paying click-through fees is now established. The Panel engages in no objective analysis of paragraphs 4(b)(i)-(iv).

The Panel has made a subjective determination regarding Respondent’s legitimate rights or interest and regarding Respondent’s bad faith intent without any analysis of the objective criteria under paragraphs 4(c)(i)-(iii) (legitimate interests or interest) or of paragraphs 4(b)(i)-(iv)(bad faith).

There is no provision under paragraphs 4(c)(i)-(iii) or paragraphs 4(b)(i)-(iv) to diminish the “enforceable” trademark rights which have been found to exist in this proceeding, because certain of the panelists feel that the trademark right is descriptive. Nor is there any provision that click-through fees are necessarily legitimate, obviating the need for any objective analysis under the criteria defined in the Policy.

I do not believe that the panelists in a UDRP proceeding can ignore the objective criteria of paragraphs 4(c)(i)-(iii) and paragraphs 4(b)(i)-(iv) and substitute their subjective determination that a claimed mark is descriptive and that click-through fees are of necessity legitimate, then proceed to deny relief to Complainant.