Complainant is L-Nutra, Inc., United States of America (“United States”), represented by Stradling Yocca Carlson & Rauth, P.C., United States.
Respondent is Douglas Kantner, United States, represented by Minx Law, United States.
The disputed domain name <longevitynutrition.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Response was filed with the Center April 13, 2019.
The Center appointed Georges Nahitchevansky, Carol Anne Been, and Frederick M. Abbott as panelists in this matter on May 15, 2019. 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, L-Nutra, Inc., is a corporation based in the State of California, United States that specializes in the field of nutrition related to longevity and health span. Complainant was founded by Dr. Valter Longo, the Director of the University of Southern California Longevity Institute. Complainant operates a website at “www.l-nutra.com”, which provides information about Complainant’s activities and products.
Complainant is the owner of two United States federal trademark registrations for the mark NUTRITION FOR LONGEVITY in connection with dietary supplements and dietary nutritional guidance (Registration No. 5,183,113, which issued to registration on April 11, 2017, and Registration No. 5,346,644, which issued to registration on November 28, 2017). Complainant also owns a registration for L-NUTRA NUTRITION FOR LONGEVITY & Design in connection with dietary and nutritional guidance (Registration No. 5,498,694, which issued to registration on June 19, 2018). Lastly, Complainant filed in the United States on February 8, 2019 an intent-to-use application for the mark LONGEVITY NUTRITION (Application No. 88/294,438).
Respondent, Douglas Kantner, is an individual with an address in the State of Ohio, United States. Respondent has been for over 30 years in the business of manufacturing, marketing, and distributing food and nutritional products. Respondent is connected to an entity by the name of AME Nutrition which is a supplier of plant and dairy ingredients to third parties. AME Nutrition operates a website at “www.amenutrition.com”.
On July 20, 2018, Respondent reserved the business name “Longevity Nutrition, LLC” with the Ohio Secretary of State. On or about August 6, 2018, Respondent acquired the disputed domain name1 , and on November 16, 2018 Respondent filed a Certificate of Formation for a limited liability company by the name of Longevity Nutrition, LLC in the State of Delaware, United States.
On or about December 4, 2018, Respondent posted a web page at the disputed domain name that advised that a website was coming soon. The web page featured “Longevity Nutrition” in connection with a stylized fork and knife logo and provided a telephone number and an email address to presumably contact the owner or operator of the web page. The web page also provided the ability to send a message directly to the operator of the web page. On February 12, 2019, Complainant’s attorneys sent Respondent a demand letter. Respondent apparently did not respond to that letter. Respondent’s web page has remained at the disputed domain name and is currently accessible.
Complainant maintains that it is the owner of all rights in the mark NUTRITION FOR LONGEVITY on the basis of its United States federal trademark registrations for the mark and through its use of NUTRITION FOR LONGEVITY since 2013. Complainant also contends that Respondent acquired the disputed domain name in or about August 6, 2018, a date after Complainant has established rights in the NUTRITION FOR LONGEVITY mark.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s NUTRITION FOR LONGEVITY mark as it is merely a transposition of the elements that compose the NUTRITION FOR LONGEVITY mark. Complainant also asserts that because Respondent is a provider of plant and dairy ingredients related to dieting, health, and nutrition, Respondent’s use of the disputed domain name for likely similar purposes creates a likelihood of confusion.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) acquired the disputed domain name after Complainant has established rights in the NUTRITION FOR LONGEVITY mark and did so with the intent of misleadingly diverting consumers from Complainant’s good and services under the NUTRITION FOR LONGEVITY mark to Respondent’s website for commercial gain, (ii) has not made any use of the disputed domain name in connection with a bona fide offering of goods and services, (iii) is not commonly known by the disputed domain name, and (iv) is likely to use the disputed domain name to market substantially identical goods and services as provided by Complainant.
Lastly, Complainant argues that Respondent has registered and used the disputed domain name in bad faith as Respondent acquired the disputed domain name well after Complainant had established rights in the NUTRITION FOR LONGEVITY mark. As such, Complainant contends that Respondent was on constructive notice of Complainant’s rights in the NUTRITION FOR LONGEVITY mark when it acquired the disputed domain name. Complainant further argues that Complainant has acted in bad faith as Respondent has begun constructing a website featuring the text “Longevity Nutrition” to presumably provide information and sell goods relating to diet, nutrition and health. Lastly, Complainant asserts that Respondent has acted in bad faith by failing to respond to Complainant’s February 12, 2019 demand letter and by thereafter continuing to use the disputed domain name with Respondent’s web page that features the “Longevity Nutrition” text in connection with a fork and knife design.
Respondent rejects Complainant’s contentions.
Respondent argues that Complainant has no rights in the unregistered mark LONGEVITY NUTRITION as Complainant has failed to submit any evidence to establish common law rights in LONGEVITY NUTRITION. Respondent maintains that Complainant has, in fact, made no use of LONGEVITY NUTRITION as Complainant filed an intent-to-use application to register the mark LONGEVITY NUTRITION in the United States some six months after Respondent had registered the disputed domain name.
Respondent contends that the disputed domain name is not identical or confusingly similar to Complainant’s claimed NUTRITION FOR LONGEVITY mark. Respondent asserts that a review of the parties’ respective websites establishes that confusion is unlikely, given that Respondent uses LONGEVITY NUTRITION as its primary mark and Complainant uses NUTRITION FOR LONGEVITY as a tagline in a very small font below its L-NUTRA house mark.
Respondent maintains that it has a legitimate interest in the disputed domain name that predates notice of the instant dispute. In that regard, Respondent asserts that he never received Complainant’s February 12, 2019 demand letter and only became aware of the dispute in late March 2019 when he received the Center’s Notification of Complaint and Commencement of Administrative Proceeding. Respondent further asserts that he took several good faith steps and made substantial business investments in preparation to use the disputed domain name before Respondent received notice of Complainant’s claims and before Respondent was even aware of Complainant and its business. In support of that contention, Respondent submits that he (i) reserved the company name “Longevity Nutrition, LLC” with the Ohio Secretary of State in July 2018, (ii) acquired the disputed domain name in August 2018, (iii) retained and began working in August 2018 with an outside marketing and branding consultant to create a website, graphics, and other promotional materials in connection with the disputed domain name, (iv) incorporated “Longevity Nutrition, LLC” with the Delaware Secretary of State in November 2018, (v) registered Longevity Nutrition, LLC as a foreign LLC with the Ohio Secretary of State in December 2018, and (vi) retained trademark counsel to perform a clearance search for LONGEVITY NUTRITION in January 2019.
Lastly, Respondent argues that he has not registered or used the disputed domain name in bad faith. Respondent contends that there is no evidence that Respondent registered the disputed domain name for the purpose of selling it to Complainant or to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent further argues that a review of the Parties’ respective websites shows that there is no underlying intent to exploit Complainant’s NUTRITION FOR LONGEVITY mark, particularly as the Parties’ websites have a completely different look and feel. Finally, Respondent argues that its actions prior to obtaining notice of the dispute, such as ordering a trademark clearance search, demonstrate that Respondent has acted in good faith.
Based on the foregoing, Respondent asserts that Complainant has acted in bad faith in trying to strong-arm Respondent in relinquishing the disputed domain name that Respondent rightfully registered prior to having any knowledge of Complainant and after making substantial business investments. Respondent asks the Panel to make a finding that Complainant has engaged in reverse domain name hijacking.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
This Panel must first determine whether the disputed domain name <longevitynutrition.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. Although Complainant only owns a pending intent-to-use trademark application for the mark LONGEVITY NUTRITION, Complainant has provided evidence that it owns trademark registrations for the mark NUTRITION FOR LONGEVITY in the United States that issued before Respondent acquired the disputed domain name.
The threshold for satisfying the first element of identical or confusing similarity acts as a standing test and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the dominant elements of Complainant’s NUTRITION FOR LONGEVITY mark are fully incorporated in the disputed domain name, which in essence is a transposition of these elements with the non-source identifying Top-Level Domain, “.com”.
The Panel therefore finds that for purposes of the first element only, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Complainant primarily argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent acquired the disputed domain after Complainant had secured rights in the NUTRITION FOR LONGEVITY mark and did so to create confusion and to mislead consumers away from Complainant’s goods and services to Respondent’s website for profit.2 Complainant’s submitted evidence in this regard is limited, at best. While Complainant has submitted copies of its United States trademark registrations for the NUTRITION FOR LONGEVITY mark, Complainant has failed to produce any evidence showing its use of the NUTRITION FOR LONGEVITY mark with any goods or services. The only evidence of use of the NUTRITION FOR LONGEVITY mark in the record has been provided by Respondent and shows that the use of the mark has been mostly as a small tagline below Complainant’s L-NUTRA & Design mark, as follows:
Notably, a review of Complainant’s website at “www.l-nutra.com” does not reveal any current use of the mark NUTRITION FOR LONGEVITY by Complainant. Moreover, Complainant has provided no evidence establishing the reputation of the NUTRITION FOR LONGEVITY mark and/or how the mark or goods or services under the mark have been promoted or marketed. Given that the mark has a descriptive connotation, namely, “nutrition for a longer life”, the failure of Complainant to provide evidence regarding the use and promotion of its mark suggests an acknowledgement that the NUTRITION FOR LONGEVITY mark is a relatively descriptive mark and subject to some overlapping potential third party use, notwithstanding that Complainant may have previously obtained trademark registrations for the mark.
Complicating matters for Complainant is the lack of evidence that Respondent has targeted Complainant by registering the disputed domain name. Respondent asserts in a sworn declaration that he was unaware of Complainant at the time he registered the disputed domain name in August 2018 and only became aware of Complainant and its claims in March 2019. Respondent also asserts that it took steps to build a legitimate business before becoming aware of Complainant. In support of that contention Respondent has submitted evidence that it reserved the name Longevity Nutrition, LLC in the State of Ohio for a proposed corporation in July 2018, acquired the disputed domain name in August 2018, hired a marketing company for his proposed business in August 2018, and incorporated Longevity Nutrition, LLC in the State of Delaware in November 2018. Respondent also claims that he purportedly retained trademark counsel to conduct a trademark search in January 2019, but no evidence (nor the particulars of any such advice) is provided to support that claim. In its totality, the evidence provided by Respondent, when viewed in the context of Complainant’s lack of evidence regarding its use of the NUTRITION FOR LONGEVITY mark, suggests that it is more likely than not that Respondent was unaware of Complainant’s NUTRITION FOR LONGEVITY mark when he registered the disputed domain name for his claimed business.
That being said, it is notable that Respondent does not provide any details as to what his planned business with the disputed domain name might be. This suggests to the Panel that the claimed business could conceivably compete with Complainant’s goods and services. However, by the same token Complainant asks the Panel to assume, without any evidence, that Respondent is using the disputed domain name to mislead consumers to his web page, and will likely be using the disputed domain name to sell competing goods and services. Complainant simply points to (i) a business that Respondent appears to be connected to, AME Nutrition, that offers plant and dairy based ingredients for sale to third party businesses (a business that does not look to be actually competing with Complainant and its products and services), and (ii) Respondent’s web page at the disputed domain name that shows the use of a fork and knife logo with the term “Longevity Nutrition”. Neither of these activities by Respondent establish without more that Respondent lacks rights or a legitimate interest in the disputed domain name and is in fact seeking to compete with Complainant or its goods and services under the NUTRITION FOR LONGEVITY mark.
In sum, the Panel concludes that Complainant has failed to establish that Respondent does not have a right or legitimate interest in the disputed domain name. In making this decision, the Panel notes that the evidence submitted by the Parties is limited and that the Parties’ submissions contain gaps as explained above. For this reason it may be possible that Respondent’s actual future use of the disputed domain name could cast a different light on the Panel’s assessement of Respondent’s claimed rights and legitimate business purpose. Conseqently, the Panel concludes that its ruling is without prejudice to Complainant potentially refiling a Complaint in the event that the use of the disputed domain name by Respondent turns out to be for a business that competes with Complainant and/or its NUTRITION FOR LONGEVITY goods and services. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 4.18.
Given that Complainant has not established the second element of lack of legitimate interest or bona fide use, the Panel does not need to address the issue of bad faith registration and use. That being said, though, the Panel notes that for many of same reasons as noted above, Complainant has not proven that Respondent has registered or used the disputed domain name in bad faith. Respondent’s declaration and evidence attests that Respondent was unaware of Complainant’s claimed NUTRITION FOR LONGEVITY mark when Respondent acquired the disputed domain name in August 2018 in furtherance of a business he had been developing, a point that the Panel finds plausible in light of the (limited) evidence provided. Complainant has not provided anything that shows otherwise. Consequently, on the balance of the probabilities, the Panel finds that there is insufficient evidence that Respondent registered and has used the disputed domain name in bad faith.
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking in this proceeding. Section 15(e) of the Rules give instruction to panels in this regard:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
As stated previously, Complainant owns trademark registrations for the mark NUTRITION FOR LONGEVITY that predate Respondent’s registration of the disputed domain name in August 2018. The Panel has found that the disputed domain name is essentially a transposition of the dominant elements of Complainant’s NUTRITION FOR LONGEVITY mark. Furthermore, given that Respondent is in the field of manufacturing, marketing and distributing food and nutritional products, it was not unreasonable for Complainant to initiate a proceeding that concerned a disputed domain name that on its face could be seen as based on the NUTRITION FOR LONGEVITY mark. Added to that is the fact that Respondent provided no details regarding its claimed business in connection with the disputed domain name, creating at least a question as to what Respondent’s ultimate plans might be. Accordingly, the Panel finds that Complainant did not initiate this UDRP proceeding in bad faith or primarily to harass Respondent.
The request for a finding of reverse domain name hijacking is denied.
For the foregoing reasons, the Complaint is denied.
Georges Nahitchevansky
Presiding Panelist
Carol Anne Been
Panelist
Frederick M. Abbott
Panelist
Date: May 29, 2019
1 The Panel notes that the disputed domain name was created on June 30, 2009 by a party unconnected to the Parties in this proceeding.
2 The panel notes that while Complainant recently filed an application to register the mark LONGEVITY NUTRITION such was filed on an intent-to-use basis and was done several months after Respondent had registered the disputed domain name and placed a web page at the disputed domain name. Consequently, that filing has no bearing on the analysis whether Respondent has rights or legitimate interests in the disputed domain name.