The Complainant is Cebria, LLC, California, United States of America, represented by Jessany Garrett, United States of America (“USA”).
The Respondent is Content Creators India, India, represented by Jeffrey M. Furr, Esq., USA.
The disputed domain name <cebriareview.com> is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2014. On April 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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, the Complainant filed an amendment to the Complaint on April 29, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 19, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 17, 2014. 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.
As the name of the owner shown in the records for the trademark relied on by the Complainant differed from the Complainant’s name, the Panel issued Procedural Order No. 1 seeking clarification of the Complainant’s claim to have rights in a trademark on June 30, 2014. The Procedural Order allowed the Complainant until July 3, 2014 to make any supplemental filing in response to the Procedural Order and allowed the Respondent until July 11, 2014 if it wished to make a supplemental filing in response.
The Complainant filed a supplemental filing on July 3, 2014. No supplemental filing was received from the Respondent.
The Complainant is a Delaware corporation based in California, USA. Since at least January 2012, it has been marketing and distributing a dietary supplement for age-related memory loss under the trademark CEBRIA.
CEBRIA is a registered trademark in the USA: Trademark No. 4445976 in respect of nutritional supplements (filed on May 10, 2012 and registered on December 10, 2013). According to the printout included in Annexure 4 to the Complaint, the Trademark is registered to Ideal Living Holdings Limited, a corporation in Hong Kong SAR.
From the Complainant’s Supplemental Filing, it appears that Ideal Living Holdings Limited changed its name to Response Products Limited on June 25, 2012. Response Products Limited has granted an exclusive licence of the Trademark to Ultimate Quality Sourcing Limited. Ultimate Quality Sourcing Limited in turn has granted an exclusive licence of the Trademark to Therabotanics LLC and its wholly owned subsidiaries. The Complainant is a wholly owned subsidiary of Therabotanics LLC, having been formed in December 2011.
According to the Complaint, the Complainant began using the trademark CEBRIA as a trademark in respect of nutritional supplements in January 2012.
The Respondent registered the disputed domain name on July 3, 2012. Shortly before the Complaint was filed, the disputed domain name resolved to a website “Top Brain Supplement Reviews”.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
As indicated above, the Panel exercised his powers under paragraph 12 of the Rules to invite the Complainant to make a supplemental filing clarifying the basis of its claim to have trademark rights. The Complainant provided a supplemental filing on July 3, 2014. As it is in response to the Panel’s invitation, it will be admitted into the record in this proceeding.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The question of a licensee’s rights to bring a complaint under the Policy has proved of some difficulty in the past. See e.g. David Lindsay, International Domain Name Law: ICANN and the UDRP, Hart Publishing, Oxford and Portland, 2007, 233 – 238.
In the present case, the materials submitted in the Complainant’s Supplemental Filing demonstrate sufficiently clearly that the Complainant’s parent company, Therabotanics LLC, has an exclusive licence of the trademark registered in the USA (the “Trademark”) from the Trademark owner through Ultimate Quality Sourcing Limited. In its Supplemental Filing, the Complainant states that Therabotanics LLC has granted it exclusive rights to use the Trademark. The Limited Liability Company Operating Agreement submitted in support of the Complainant’s rights does not (at least in the heavily redacted form it was submitted) explicitly grant exclusive rights in the Trademark. The Panel notes, however, that Therabotanics LLC incorporated the Complainant under a name which includes the Trademark to carry on the business of distributing nutritional supplements under the brand name and infers from the circumstances that it granted the Complainant exclusive rights in the name and Trademark insofar as Therabotanics LLC itself had them. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.8 and 4.16.
The Panel notes, further, that the India, Nepal and Bangladesh are excluded from the territory in which exclusive rights have been granted to Therabotanics LLC (and so also the Complainant).
Although the Trademark was registered after the Respondent registered the disputed domain name, the application for its registration was filed earlier and, significantly, the Complainant began using the trademark in the USA in January 2012. That use, amongst other things, has included promotions on a number of television networks. In these circumstances, the courts and panels have found that complainants have protectable interests under the Policy. See for example the cases and decisions referred to in Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011-0200.
The Panel finds, therefore, that the Complainant has established sufficiently for the purposes of the Policy that it has rights in the trademark CEBRIA.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademark: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name consists of the Trademark plus the word “review” and the generic Top-Level Domain (“gTLD”) <.com>.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
The inclusion of the word “review” in the disputed domain name clearly indicates some sort of association or relationship to the Trademark. It reinforces rather than dispels the usual rule that the addition of a generic or descriptive term to the trademark is insufficient to avoid a finding of confusing similarity.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Respondent does not dispute these matters. Rather, it states that the disputed domain name is being used for a comparison between and review of a number of nutritional supplements. This it contends is a fair use under the Policy.
The Respondent’s website can be characterised in the way the Respondent describes it: a website featuring reviews of various nutritional supplements. Indeed, when one enters the disputed domain name into a web browser, a page opens headed “Top Brain Supplement Reviews”. The copyright notice in the footers states “© 2014 “Top Brain Supplement Reviews At Cebria. All Rights Reserved”.
The Panel accepts that a website directed to reviews and commentary on nutritional supplements can be a legitimate use of the Internet. The question under the Policy, however, is whether or not the use of the Complainant’s trademark in the disputed domain name is a legitimate noncommercial or fair use.
The difficulty here is that the disputed domain name suggests a website about CEBRIA supplements. The Respondent’s website, however, is not such a website, or not solely or even substantially such a website. As the banner or title on the landing page states, it provides reviews or information about a number of “supplements”. Moreover, the disputed domain name suggests an association or relationship with the CEBRIA trademark. That is reinforced by the statement in the copyright notice set out above.
A website of this kind which was offering for sale competing products would not qualify as a good faith use under the Policy. See e.g. WIPO Overview 2.0, paragraph 2.3.
In the Panel’s view, similar reasoning leads to the conclusion in the present case that the use of the disputed domain name is not a fair use for the purposes of the Policy. A browser arriving at the landing page of the website is not presented with reviews or information about CEBRIA supplements. He or she is presented with a number of articles or presentations which recommend or suggest the use of a number of other brands of supplements for various purposes. If there are reviews or articles about CEBRIA supplements, they need to be searched for by clicking through the website. Further, the website does not make clear what relationship, if any, it has with the persons having rights to use CEBRIA. An Internet browser landing at the website could well gain the impression that the products in the articles on the website are being recommended or endorsed in some way by the persons behind CEBRIA.
In these circumstances, the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the nature of the website to which the disputed domain name resolves and the Respondent’s asserted justification for the disputed domain name, it seems clear that the Respondent was aware of the trademark status of “Cebria” before the disputed domain name was registered.
Given that knowledge and as the Panel has rejected the asserted justification for the adoption and use of the disputed domain name in section 5.B. above, it follows that the Respondent has registered the disputed domain name in bad faith and is also using it in bad faith within the meaning of that expression under this limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cebriareview.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: July 19, 2014