WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2008-0443

1. The Parties

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

The Respondent is UrProxy Domains, Vista, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <xenadrine-rfa.org> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2008. On March 25, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 25, 2008, eNom 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”), 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 April 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2008.

The Center appointed Angela Fox as the sole panelist in this matter on May 2, 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

The Complainant manufactures and sells sports nutrition products and dietary supplements. In 1997, it launched a weight loss supplement under the brand name XENADRINE RFA-1. The Complainant has sold the XENADRINE RFA-1 product continuously in the United States and abroad for over 10 years.

The Complainant filed print-outs from the USPTO database showing that it owns the following United States federal trademark registrations for XENADRINE and marks incorporating XENADRINE for dietary weight loss supplements:

- No. 2329696, XENADRINE, filed on May 17, 1999 (first use, November 1, 1997)

- No. 3292639 XENADRINE & Design, filed on June 27, 2006 (first use, November 1997)

- No. 3296089 XENADRINE EFX & Design, filed on June 27, 2006 (first use February 2002)

- No. 3391199 XENADRINE EFX, filed on May 24, 2007 (first use, February 1, 2002)

The Respondent registered the disputed domain name <xenadrine-rfa.org> on December 17, 2003. It uses the domain name to link to a site bearing a top banner reading, “Xenadrine RFA: Xenadrine RFA – Buy Xenadrine RFA.” The text underneath contains two paragraphs describing the Complainant’s product, referred to as “Xenadrine RFA”. Underneath appear the words “XENADRINE APPETITE SUPPRESSANT” in large letters, followed by a table listing drugs available for purchase through the website, including competing weight loss supplements branded XENICAL, MERIDIA and PHENTERMINE, but not including the Complainant’s XENADRINE RFA-1 product.

The Complainant’s attorneys wrote to the Respondent on January 30, 2008, demanding the transfer of the disputed domain name. They received no response.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its registered XENADRINE trademark and to XENADRINE RFA-1, in which it claims to have acquired common law rights through substantial use over 10 years in the United States and abroad, including extensive advertising, marketing and other promotional efforts. The Complainant argues that the composite trademark XENADRINE RFA-1 has become famous and is recognized and relied upon by consumers to identify the Complainant’s products.

The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the Respondent to use its trademark. The Respondent registered the domain name six years after the Complainant began marketing the XENADRINE RFA-1 product, and the Complainant contends that the Respondent had actual and constructive notice of the Complainant’s rights. Moreover, the Respondent is using the disputed domain name to advertise and offer for sale competing products, which the Complainant argues is not a legitimate non-commercial or fair use.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent is a known cybersquatter and has been ordered to transfer domain names in another UDRP proceeding (<cheapest-xenical.org>, <lowest-cost-xenical.net>, <lowest-cost-xenical.org>, <xenical-diet-pill.net>, <xenical-online.info>, <xenical-prescription.net> and <xenical-prescription.org>, in Hoffman-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456). The Complainant further argues that the Respondent registered the disputed domain name for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the products sold and advertised for sale on it.

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

(ii) the 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 Complainant has proved that it owns federally registered trademark rights in XENADRINE.

In order to make out its additional claim to common law rights in XENADRINE RFA-1, the Complainant must establish that XENADRINE RFA-1 has come to denote the Complainant’s goods as a distinctive identifier (see inter alia Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 and Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575). Length and scale of use, extent of advertising and consumer recognition are all relevant factors in assessing whether a mark has acquired such secondary meaning. In this case, the Complainant claims to have made over 10 years of continuous and substantial use of the composite mark XENADRINE RFA-1 in the United States of America and abroad, including extensive advertising, marketing and other promotional efforts. The Respondent has not sought to rebut these assertions, and it is evident from the content of the Respondent’s website that the Respondent itself was aware of the Complainant’s use of a XENADRINE RFA-type mark in respect of a weight loss supplement.

These factors tend to support the Complainant’s claim to secondary meaning in the XENADRINE RFA-1 mark (and indeed, common law rights have already been found in that mark by another panelist in Nutraquest, Inc. f/k/a Cytodyne Technologies, Inc. v. Antigua Domains, WIPO Case No. D2008-0163). In these circumstances, the Panel is prepared to accept the Complainant’s claim to ownership of common law rights in XENADRINE RFA-1.

The disputed domain name <xenadrine-rfa.org> contains the whole of the Complainant’s registered XENADRINE trademark as well as a substantial part of XENADRINE RFA-1, omitting only the suffix “-1”. In the Panel’s view, the presence of the distinctive word “xenadrine” on its own is sufficient to give rise to confusing similarity with the Complainant’s strongly distinctive XENADRINE trademark, since the remaining elements “-rfa” and the generic domain name suffix “.org” do nothing to detract from the impression that the disputed domain name is in some way linked to the Complainant’s XENADRINE brand.

Indeed, the element “-rfa” in the disputed domain name reinforces the impression of a link with the Complainant since it brings the disputed domain name even closer to the XENADRINE RFA-1 mark, in which the Complainant has common law rights. The mere omission of the non-distinctive numeral “1” is, in the Panel’s view, unlikely to attract much attention and, if it is noted at all, is not sufficient to overcome the overwhelming similarity arising from the presence of the dual elements XENADRINE and RFA.

Other panelists have also found domain names incorporating abbreviated versions of complainants’ trademarks to be confusingly similar to those trademarks (see inter alia Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656 and Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381). In those cases, as in this one, the overall impression created by the domain name was, on the facts of the case, found likely to lead to confusion.

The Panel is satisfied that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the disputed domain name, nor has the Respondent made any effort to prove a right or legitimate interest in it.

The Panel may nonetheless find such a right or interest if there is evidence that, before notice of the dispute, the Respondent was using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.

In this case, it appears that before notice of the dispute the Respondent was indeed using the disputed domain name in connection with an offering of goods, namely weight loss supplements that competed with the Complainant’s XENADRINE RFA-1 product.

Such an offering is not, however, bona fide within the meaning of paragraph 4 (c)(1) of the Policy. In using a domain name that is confusingly similar to the Complainant’s trademarks to draw Internet users to a website offering competitors’ products for sale, the Respondent has sought to mislead and to profit from the confusion of Internet users, who would legitimately expect a website linked to such a domain name to be related to the Complainant and its XENADRINE RFA-1 product. There is no other plausible explanation for the Respondent’s prominent use of the designation “XENADRINE RFA” on the linked site, which does not offer the Complainant’s products at all. In the Panel’s view, such conduct cannot be regarded as a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy.

Other panelists have taken a similar approach where respondents have engaged in such “bait and switch” selling methods (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005, Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).

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

C. Registered and Used in Bad Faith

Under paragraph 4 (a) (iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraphs 4(b)(ii) and (iv):

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or …

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Respondent’s registration of the disputed domain name prima facie prevents the Complainant from reflecting its XENADRINE RFA-1 trademark in that form in a corresponding domain name.

There is evidence, moreover, that the Respondent has engaged in a pattern of such behavior. It was ordered to transfer 8 other domain names involving a trademark for a weight loss supplement in Hoffman-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2008-0237 and WIPO Case No. D2007-0456, involving <order-xenical.net>, <cheapest-xenical.org>, <lowest-cost.xenical.net>, <lowest-cost.xenical.org>, <xenical-diet-pill.net>, <xenical-online.info>, <xenical-prescription.net> and <xenical-prescription.org>.

All 8 of the above domain names were registered on December 19, 2003, just 2 days after the disputed domain name was registered. Registering a total of 9 domain names incorporating the trademarks of two competing weight loss supplement manufacturers is, in the Panel’s view, sufficient to establish a pattern of behavior under paragraph 4(b)(ii) of the Policy (see the similar approach adopted by the panel in Telstra Corporation Ltd. v. Ozurls, WIPO Case No. D2001-0046). The Panel considers that the Complainant has made out its case for bad faith registration and use under paragraph 4(b)(ii) of the Policy.

In addition, the Respondent has clearly used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the linked website and the products advertised and sold through it.

By the date on which the disputed domain name was registered, the Complainant had been using the XENADRINE RFA-1 mark for 6 years in respect of a nationally advertised range of weight loss supplements. That the Respondent was aware of the Complainant’s XENADRINE RFA-1 product is evident from the content of its website. By adopting the disputed domain name, the Respondent was making a conscious effort to lure Internet users to a site offering products that competed with those of the Complainant, by using a domain name that was inherently likely to confuse Internet users into believing they were entering a site that was in some way related to the Complainant or its products.

Such conduct has supported findings of bad faith registration and use under paragraph 4 (b) (iv) in other cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. The Panel considers that the Complainant has made out its case for bad faith registration and use under paragraph 4(b)(iv) of the Policy, as well.

The Panel is satisfied that the Respondent registered and has used the disputed domain name in bad faith.

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 <xenadrine-rfa.org> be transferred to the Complainant.

Angela Fox
Sole Panelist

Dated: May 14, 2008