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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NBTY, Inc. v. LaPorte Holdings

Case No. D2005-0835

1. The Parties

The Complainant is NBTY, Inc., Bohemia, New York, United States of America, represented by Edwards & Angell, LLP, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <puritianpride.com> and <purtian.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2005. On August 4, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On August 6, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 August 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2005.

The Center appointed James A. Barker as the sole panelist in this matter on September 14, 2005. 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 following uncontested facts are taken largely from the Complaint.

The Complainant markets vitamins and mineral supplements in the United States and in other countries. Since at least 1948, the Complainant or its predecessors have been using the marks PURITAN and PURITAN’S PRIDE in connection with nutritional supplements. The Complainant has a global consumer market base.

The Complainant operates a website at “www.puritan.com”, which offers products for sale, largely under its PURITAN’S PRIDE mark. That mark has a first registration date of July 6, 1982. The Complainant’s mark PURITAN was first registered on May 28, 1957.

In the absence of a Response, no information is known about the Respondent, other than the information that is self-evident from the registration details for the disputed domain name. At the date of the decision, the disputed domain name reverted to websites that predominantly include lists of links to other sites, including to sites that appear to offer products competing with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The following contentions, each in relation to the elements in paragraph 4(a)(i)-(iii) of the Policy, are summarised from the Complaint.

Identical or Confusingly Similar

The Complainant is the owner of numerous trademark registrations (evidence of which was attached to the Complaint) that contain the term “puritan”, as follows:

(a) PURITAN, Reg. No. 646,001 covering “vitamins” in Int’l Class 5;

(b) PURITAN’S PRIDE, Reg. No. 1,200,112 covering “vitamins, minerals and nutritional supplements,” in Class 5.

(c) PURITAN’S PRIDE.COM, Reg. No. 2,416,470 covering “computerized online ordering services featuring nutritional supplements and cosmetics,” in Class 35;

(d) PURITAN’S PRIDE ONE, Reg. No. 1,280,476 covering “nutritional supplements containing vitamins,” in Class 5.

The disputed domain names are confusingly similar to the Complainant’s PURITAN and PURITAN’S PRIDE marks. The disputed domain names are slightly misspelled versions of the Complainant’s marks and thus confusingly similar to those marks.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent (i) does not own any trademark or service mark registrations encompassing the disputed domain names, nor any variations thereof; (ii) is not commonly known by the disputed domain names; and (iii) is not making a legitimate noncommercial or fair use of the disputed domain names.

Rather, the Respondent is using the disputed domain names for commercial gain, to misleadingly divert consumers from the Complainant’s goods offered under its marks.

It is apparent that the Respondent is engaging in the unlawful diversion of Complainant’s consumers to competitors for commercial gain. This violation tarnishes the Complainant’s goodwill in its marks.

Bad Faith

The disputed domain names were registered and are being used in bad faith by the Respondent. By using the disputed domain names, the Respondent is intentionally redirecting Internet users to websites that offer products which compete with those of the Complainant, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, or endorsement of the products on the Respondent’s website. This conduct directly disrupts the Complainant’s ability to conduct business. Consumers looking for the Complainant’s products may guess at the domain name, thinking it likely to be controlled by the Complainant, and will instead be diverted to the Respondent’s website. That website, and its related links, are in no way affiliated with or sponsored by the Complainant.

The Respondent’s registration of the disputed domain names in 2002, which are clear misspellings of the Complainant’s marks registered earlier, suggests that the Respondent knew of the Complainant’s use of its marks and that such misspellings were intentional. Courts have described this conduct as “typosquatting” and deemed it a “classic example of bad faith domain name registration.” (Shields v. Zuccarini, 254 F.3d 476, 3rd. Cir. 2001)

Furthermore, the Respondent has engaged in a pattern of bad faith conduct. The Respondent has been an unsuccessful Respondent in a number of recent WIPO proceedings, including Adorama, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0240; DaimlerChrysler Corporation, DaimlerChrysler Services North Amercia LLC v. LaPorte holdings, Inc., WIPO Case No. D2005-0143; Credit Industriel e Commercial S.A., Banque Scalbert Dupont S.A. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1110; Karl’s Sales and Services Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain names transferred to it, the Complainant must prove that:

- the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain names; and

- the domain names were registered and are being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

The Complainant provided evidence of its rights in the registered trademarks PURITAN and PURITAN’S PRIDE, and the Panel accordingly finds that it has those rights. The ownership of a registered trademark satisfies the threshold requirement of having trademark rights.  (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and the cases relevantly cited in that overview.) The Complainant’s marks are registered on the principal register of the US Patent and Trade Mark Office. Previous panel decisions have indicated that such registration establishes a presumption of validity in U.S. trademark law. (The Coryn Group, Inc., Apple Vacations West, Inc. v. John A. Meara aka Pat Cavanaugh, WIPO Case No. D2003-0690.) The Respondent has not submitted any evidence to rebut these presumptions of validity.

It is well-established that the gTLD extension “.com” is to be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark.

The disputed domain names are not identical to the Complainant’s marks. The disputed domain name <puritianpride.com> is different to the Complainant’s PURITAN’S PRIDE mark by insertion of an “i” and omission of the possessive. In some cases, minor differences of this kind might be sufficient to avoid confusing similarity, particularly where those differences create a different meaning, association or impression.

However the differences in this case are not of that kind. A number of cases have found that the addition or deletion of the plural “s” from a trademark is not sufficient to avoid confusing similarity. (See Weld Racing, Inc. v. Modern Internet Empire Limited, WIPO Case No. D2005-0205, and the cases cited in that one.) The situation here in relation to the use of the possessive “s” is directly comparable. A number of cases have also found that the meaningless insertion of a single vowel, as with the insertion of “i” in this case, does not avoid confusing similarity. (See for example, Adorama, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0240, referred to by the Complainant and involving the same respondent as in this case.) The overall impression of the disputed domain name <puritianpride.com> is therefore of confusing similarity with the Complainant’s PURITAN PRIDE mark.

The second disputed domain name <purtian.com> is only different to the Complainant’s PURITAN mark by the insertion of an “i”. For the same reasons set out above, in relation to the insertion of a single and meaningless vowel, the Panel finds that this second domain name is also confusingly similar to the Complainant’s PURITAN mark.

Taken in addition to the Panel’s findings below on paragraphs (4)(a)(ii) and (iii) of the Policy, it is clear that the Respondent has engaged in ‘typosquatting’. ‘Typosquatting’ is a practice in which a respondent registers domain names with slight misspellings of a complainant's mark to divert internet traffic. There are a substantial number of panel decisions which have found that such domain names are confusingly similar to the marks which they misspell (See e.g. Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707, which cites other panel decisions which have made similar findings. See also the cases cited by the Complainant referred to above).

B. Rights or Legitimate Interests

The Respondent did not contest statements by the Complainant: that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Complainant has registered rights in its marks.

Nothing in the apparent identity of the Respondent, as indicated in the registrar’s Whois details, suggests that there is any legitimate relationship between the Respondent and the disputed domain names. Further, the Complainant disclaims that it has any relationship with the Respondent that might give it relevant rights in its trademarks.

Paragraph 4(c) of the Policy sets out matters by which a respondent may demonstrate that it has rights or legitimate interests in a domain name. Panels have consistently found that the burden is on the respondent to provide evidence of its rights or legitimate interests under paragraph 4(c). (See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.) That burden arises once a complainant establishes a prima facie case against the respondent, which the Complainant has done in this case.

The Respondent made no response in this case, either to rebut the Complainant’s prima facie case, or otherwise. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv)

Paragraph 4(b)(iv) of the Policy relevantly provides that there is evidence of bad faith where:

“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site…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.”

Paragraph 4(b)(iv) has, in essence, three elements that must be satisfied for a finding in the Complainant’s favour: that there is an intentional attempt to attract Internet users; the intention was for commercial gain; and there is a creation of a likelihood of confusion. Each of those elements are satisfied in this case.

Firstly, the Panel finds on balance that the Respondent knew of the Complainant’s marks when it registered the disputed domain names. For the reasons set out above, the disputed domain names are confusingly similar to the Complainant’s marks. Taking into account the content of the Respondent’s site, it is unlikely that this confusing similarity was accidental. The websites to which the disputed domain names revert includes links to other sites, which advertise products that compete with the Complainant’s. It is clear from this that the Respondent is using the disputed domain names intentionally to attract Internet users to its website, by seeking to attract users that are looking for products in the same field as those offered by the Complainant.

Secondly, the Respondent’s website links to various websites advertising products and services. Those sites self-evidently operate for commercial gain. It is reasonable to infer from this that the Respondent intends to obtain some associated commercial gain, for example often obtained by ‘referral’ or ‘click-through’ commissions.

Thirdly, the disputed domain names are confusingly similar to the Complainant’s marks. The likelihood of confusion with the Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, is therefore obvious.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain names in bad faith, for the purpose of paragraph 4(b)(iv) of the Policy.

Paragraph 4(b)(ii)

Because of the Panel’s findings in relation to paragraph 4(b)(iv), it is unnecessary to go further. But for the sake of completeness, the Panel notes that the Respondent’s conduct also constitutes bad faith for the purpose of paragraph 4(b)(ii) of the Policy. Paragraph 4(b)(ii) provides that there is evidence of bad faith where a respondent registers a domain name in order to prevent the owner of the trademark or service mark from reflecting its mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.

The Complainant contends that the Respondent has engaged in “a pattern of bad faith conduct” because findings of bad faith registration against the Respondent have been made in previous decisions under the Policy. The Complainant cites a number of cases in this respect (see above). There are a number of other cases not cited by the Complainant, which might also be added. More recently, see e.g. Sociйtй BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342, and the other cases cited in that one. In that case, a finding was made against the Respondent under paragraph 4(b)(ii) of the Policy.

Prior panel decisions indicate that what comes within a “pattern of bad faith conduct” is previous conduct found to be in breach of the Policy by:

- the registration of a large number of domain names the subject of one complaint (See for example, Time Warner Entertainment Company, L.P. v. HarperStephens, WIPO Case No. D2000-1254, involving over 100 domain names ordered transferred to the Complainant), although there must be more than two domain names the subject of the same complaint (Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010); and / or

- the registration of domain names against multiple complainants. See for example, Sociйtй BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342, which cited four prior cases involving the Respondent.
(See section 3.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.)

In this case, it is not necessary to make any fine judgement about the number of cases or domain names at which a Respondent’s conduct will amount to a “pattern of conduct”. The Respondent in this case has clearly been involved in a large number. Four prior cases were found sufficient in Sociйtй BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 cited above. From that case, and the Complainant’s evidence in this one, it is evident that the Respondent has been an unsuccessful respondent in at least 10 prior cases under the Policy, involving a larger number of domain names.

Paragraph 4(b)(ii) also contains the initial requirement that the Respondent has registered a domain name “in order to prevent” the owner of the trademark or service mark from reflecting its mark in a “corresponding” domain name. The Respondent has registered domain names “corresponding” to the marks of the Complainant, for the reasons set out above in relation to paragraph 4(a)(i). The Panel’s view is that the word “corresponding” in paragraph 4(b)(ii) is a broad term, that encompasses a finding under paragraph 4(a)(i) that the disputed domain name is either identical or confusingly similar to the Complainant’s mark. Such a finding appears consistent with previous panel decisions in relation to paragraph 4(b)(ii).

The terms “in order to prevent” in paragraph 4(b)(ii) also suggest that the Respondent intentionally registered the domain name to prevent the owner reflecting its mark in the domain name. This Panel’s view is that the evidence of the Respondent’s intent is found in its pattern of conduct. It is unlikely that a pattern of conduct under paragraph 4(b)(ii) would ever arise by accident, in circumstances where there are findings against the Respondent under paragraphs 4(a)(i) and (ii).

Accordingly, and consistently with prior decisions against the Respondent, this Panel finds that the Respondent also engaged in bad faith under paragraph 4(b)(ii).

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 names <puritianpride.com> and <purtian.com> be transferred to the Complainant.

James A. Barker
Sole Panelist

Date: September 30, 2005