28th Jan 2008
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc.
Case No. D2007-1598
1. The Parties
Complainant is Liquid Nutrition Inc., Montreal, Quebec, Canada, represented by the law firm Stikeman Elliott, Canada.
Respondent is liquidnutrition.com/Vertical Axis Inc., Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <liquidnutrition.com> is registered with Nameview Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2007. On October 31, November 4, and November 8, 2007, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On November 8, 2007, Nameview Inc. transmitted by email to the Center its verification response confirming that Vertical Axis Inc. is listed as the registrant and providing the contact details. Based upon this response the Center notified Complainant that the listed registrant differed from Respondent named in the Complaint and invited an amendment to the Complaint to take account of this.
Complainant duly filed an amended Complaint on November 15, 2007. The Center verified that the amended Complaint1 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 November 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2007. The Response was filed with the Center on December 6, 2007.
Complainant requested a single-member panel. Exercising its right under paragraph 5(b)(iv) of the Rules, Respondent requested a three-member panel. The Center appointed Neil A. Brown, Richard G. Lyon, and David E. Sorkin as panelists in this matter on January 14, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his 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 facts in this proceeding are not in dispute.
Complainant is a Canadian health foods retailer that was established in 2004, and has since 2005 operated health food stores and juice bars, offering products such as health supplements, dietary supplements, sports-related supplements, nutritional supplements, and a product line Complainant calls “nutraceuticals.” In October 2005, Complainant applied to register the words LIQUID NUTRITION as a trademark and service mark with the Canadian Intellectual Property Office (CIPO), claiming a first use of the phrase in commerce of March 1, 2005. This application is currently pending in the CIPO.
Respondent registered the disputed domain name in May 2001, and has used it as the address for a website on which it has placed pay-per-click advertisements for liquid vitamins and other nutrition, diet, and health-related products.
5. Parties’ Contentions
Complainant contends as follows:
A. The disputed domain name is identical to a mark in which Complainant has rights.
Complainant has rights in the phrase LIQUID NUTRITION by reason of its continuous use since 2005 of the phrase in its corporate name and the names of its products. Complainant submits copies of numerous advertisements illustrating such use. The disputed domain name is identical to this phrase but for the addition of a top-level domain identifier, .com.
Respondent lacks rights or legitimate interest in the disputed domain name.
Respondent has no registered trademarks incorporating the phrase LIQUID NUTRITION, Respondent is not known by that phrase, and Respondent does not conduct business under this term. Respondent is not affiliated with Complainant and Complainant has never authorized or licensed Respondent to use its mark. Respondent’s pay-per-click activities on its website are not bona fide under the Policy because Respondent is using Complainant’s mark to promote products in direct competition with those of Complainant.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent’s bad faith is established by its failure to reply to “cease-and-desist” letters from Complainant, the facts and circumstances set forth in the preceding paragraph, Respondent’s use for click-through revenues, and Respondent’s first use of the disputed domain name for competitive products “just two days after the Complainant registered its <www.liquidnutrition.ca.> domain name.” Respondent has also been a party to a number of other proceedings under the Policy and has used various addresses around the world to avoid actions by mark owners. This is said to “reveal [a pattern of conduct] on the part of the Respondent to register domain names using other parties’ trademarks.”2
Respondent argues that Complainant has failed under each applicable paragraph of the Policy:
Complainant lacked any trademark rights in LIQUID NUTRITION at the time Respondent registered the disputed domain name.
Respondent registered the disputed domain name almost four years prior to Complainant’s first alleged use in commerce of the phrase LIQUID NUTRITION for which Complainant now seeks trademark registration. “To be enforceable under the Policy, a trademark must predate the registration date of the disputed domain name” (emphasis in original).
Complainant has rights and legitimate interests in the domain name.
Any person has the right to register descriptive terms as domain names, and that is all Respondent has done here. Because Respondent’s use of the disputed domain name for advertising links to products related to the descriptive term it has chosen this legitimate interest is “bolstered.”
Respondent did not register and has not used the disputed domain name in bad faith.
The fact that Respondent’s registration of the disputed domain name predates Complainant’s trademark rights by almost four years conclusively establishes that registration could not have been in bad faith under longstanding Policy precedent. A failure to reply to cease-and-desist letters is not evidence of bad faith.
6. Discussion and Findings
The requirements of paragraph 4(a) of the Policy are conjunctive. Complainant’s failure to establish any of them results in a denial of the Complaint. The Panel need not look beyond the Complaint in this proceeding to determine that Respondent could not possibly have registered the disputed domain name in bad faith, so the Complaint must be denied.
In its contentions under paragraph 4(a)(iii) of the Policy Complainant makes no distinction between use in bad faith and registration in bad faith. In arguing that the disputed domain name is identical to Complainant’s mark, Complainant does assert that: “The whois record for <liquidnutrition.com>, . . ., shows that the domain registration for the disputed site was first created on May 6, 2001, before the Complainant’s first use of the ‘LIQUID NUTRITION’ mark. However, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states on a consensus basis that ‘registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity.’“ (Citation omitted).
While this quotation from the WIPO Overview is accurate, it has nothing to do with proving registration in bad faith when a domain name is registered prior to a complainant’s acquisition of trademark rights. On that subject the WIPO Overview’s consensus view (paragraph 3.1) is also clear: “Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.” The only recognized exception is when a complainant can establish with credible evidence that the respondent had actual knowledge of complainant and its soon-to-be-available mark at the time it registered the disputed domain name.
Based solely upon the allegations in the Complaint, a finding of Respondent’s actual knowledge of Complainant in 2001 when Respondent registered the disputed domain name is obviously impossible, since Complainant and its mark did not come into existence for another three years. Respondent’s registration of the disputed domain name therefore was not made in bad faith and the Complaint must be denied.
Given these uncontested facts a majority of the Panel believes that the filing of the Complaint constitutes an attempt at Reverse Domain Name Hijacking. See Rules, paragraph 1: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” On the uncontested facts (all contained in the Complaint) there was no basis for Complainant’s counsel’s certification, required by paragraph 3(b)(xiv) of the Rules, that “the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Complainant and its counsel have not even sought to explain why the Panel should depart from settled Policy precedent on the determinative issue in this matter.
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Hon. Neil Anthony Brown, Q.C.
David E. Sorkin
Dated: January 28, 2008
OPINION DISSENTING FROM FINDING OF REVERSE DOMAIN NAME HIJACKING
I would not make a finding of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides inter alia:
“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.”
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
A useful statement of the test to be applied by panels in considering Reverse Domain Name Hijacking in cases such as the present is to be found in Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905, where a three person panel said:
“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, WIPO Case No. D2002-0535.”
In the present proceeding, Complainant’s case was in part that it registered its Canadian domain name <liquidnutrition.ca> on January 26, 2005 and that only two days later, on January 28, 2005, the Respondent started to display on its website at “www.liquidnutrition.com”, the website to which the disputed domain name resolved, several links to nutritional products in competition with Complainant and the slogan “The top NUTRITION resource on the net.”
Complainant was entitled to argue, as it did, that those facts brought Respondent’s conduct within paragraph 4(b)(iv) of the Policy and constituted evidence, as paragraph 4(b) itself provides, of both registration and use in bad faith.
That submission was optimistic as, to be accepted, it would have required a departure from several UDRP decisions to the effect that where the registration of a domain name preceded that establishment of a trademark, the domain name would not normally be regarded as having been registered in bad faith. But as the argument was based on the clear words of the Policy, it would be wrong to describe it as unjustified or as “using the Policy in bad faith.”
Nor is there any evidence in the detailed filings of both sides to justify a finding that Complainant has sought to harass Respondent or that bringing the Complaint was “brash and totally unjustifiable.”
Moreover, Respondent has not asked for a finding of Reverse Domain Name Hijacking (although such a finding may be made by a panel on its own motion) and consequently Complainant and its counsel have not had an opportunity to reply to any such submission.
Finally, as the majority opinion concludes that there was no basis for counsel’s certification of the contents of the Complaint, I should add that it is the responsibility of counsel to put every argument on behalf of the client that is reasonably open on the evidence, that in the present case the argument advanced by counsel was reasonably open and that accordingly the certification was appropriate.
Hon. Neil Anthony Brown, Q.C.
1 For convenience the Panel refers to the amended Complaint as the “Complaint.”
2 Complainant cites four cases to illustrate varying addresses for Respondent, and three cases (Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator, WIPO Case No. D2007-0856; Nursefinders, In. v. Vertical Axis, Inc /NURSEFINDERD.COM c/o Whois Identity Shield, WIPO Case No. D2007-0417; and SmarTours, Inc. v. Vertical Axis, Inc./ c/o Whois IDentity Shield, WIPO Case No. D2007-0964) in which Complainant asserts that Respondent “has had its credibility cast into doubt.” The complaint was sustained (one panel member dissenting) in only one of these three cases.